Archives for posts with tag: ninja turtles

This is a 2005 case of school bullies picking on an effeminate teenager, and the student sued the school district for deliberate indifference to the same-sex gender harassment. He claims he is not gay but basically he sued for being called gay. The student won at trial and this opinion upholds the judgment, a major win for anti-bullying and gay rights.

DYLAN J. THENO, Plaintiff,
v.
TONGANOXIE UNIFIED SCHOOL DISTRICT NO. 464, et al., Defendants.

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS
394 F. Supp. 2d 1299

Decided, October 18, 2005, opinion by Judge John Lungstrum:

This case arises from same-sex student-on-student harassment of plaintiff Dylan J. Theno while he was a junior high and high school student in defendant Tonganoxie Unified School District No. 464. The jury returned a $ 250,000 verdict against the school district on plaintiff’s claim that the school district violated Title IX of the Education Amendments Act of 1972 (Title IX), 20 U.S.C. §§ 1681 et seq., by being deliberately indifferent to the harassment. This matter is presently before the court on the school district’s renewed Motion for Judgment as a Matter of Law (Doc. 148) pursuant to Fed. R. Civ. P. 50(b).

One of the claims of the school district’s motion is “that the evidence at trial was insufficient to prove that plaintiff was harassed based on his gender”

The Court explains:

The school district argues that there was no evidence plaintiff’s harassers were motivated by perceptions that he was effeminate or homosexual. Rather, they simply picked on him and teased him by using sexually charged words and themes as a crude topic for teenage banter. According to the school district, for example, “the masturbation jokes were motivated by the harassers’ desire to be funny, or to provoke or embarrass plaintiff using a socially awkward subject.” The school district argues that plaintiff tried to fashion a gender-based harassment claim “by showing that he was not a typical boy’ because he had an unusual hairstyle, enjoyed Tae Kwan Do, and wore an earring,”

Therefore,

The school district contends that, viewing the evidence in the light most favorable to plaintiff, the harassment was motivated by his failure to meet social stereotypes, not gender stereotypes, inasmuch as his individual style and interests were considered “uncool” by his peer group. Thus, the school district argues that the harassment was akin to plaintiff having been called “geek,” “weirdo,” or “spaz.”

Plaintiff testified to being called “pussy”, “flamer”, “faggot”, and “queer”. So the Court disagrees with the school:

Certainly, this [the school’s argument] is one permissible view of the evidence and if the court were to view the evidence in the light most favorable to the school district, the jury could have properly found for the school district rather than plaintiff on this element. But of course the court must view the evidence in the light most favorable to plaintiff at this procedural juncture. Viewed in such a light,the court concludes after careful consideration of this issue that the evidence was sufficient for the jury to find that plaintiff’s harassers were motivated by his failure to conform to stereotypical gender expectations.

Specifically, the Court notes that

Plaintiff testified at trial that his childhood interest in the Teenage Mutant Ninja Turtles sparked his interest in Tae Kwan Do. He began doing Tae Kwan Do when he was seven years old and continued through his high school years, and he was apparently quite good at it.

And there they are again. The Ninja Turtles brought up in a Federal Court opinion for no particularly necessary reason. Here they justify the plaintiff’s interest in Tae Kwon Do as an ordinary boyhood interest, but also they appear here again serving as a symbol of multicultural values. Recall that the Ninja Turtles were cited in connection with the Burger King Kids Club because they represented a prior multi-ethnic cartoon. Recall also the similarities between the BK Kids Club and the modern television show “Glee”. Further note that the story of this Dylan Theno case, that of (gay) bullying is a familiar plot on the show.

dylan thenoglee curt
glee slushy

Dylan Theno’s story has received substantial attention. Here are a few links for some more information:

A fellow wordpress blog called “Dylan Theno Fights the System” explains a lot.

ABC news covered the story in August 2005 when Theno first won the jury trial: “School Ordered to Pay $250,000 to Bullied Teen”

And a December 2005 article (two months after the case decision above) explains that a settlement was ultimately reached “Student reaches $440,000 settlement in sex harassment case”

A video posted in 2011 has Theno discussing the bullying.

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The 1999 district court opinion is by Judge Gregory M. Sleet about a partnership in bankruptcy. The Court has to determine whether certain payments were preferential and to be reclaimed by the company’s debtors. Here we see another unnecessary reference to Teenage Mutant Ninja Turtles, again likening them to Power Rangers and this time also to Barney.

In re: COLLEGEVILLE/IMAGINEERING, L.P., Debtor. COLLEGEVILLE/IMAGINEERING, L.P., Plaintiff, v. L.J. LIFF AND ASSOCIATES, LIMITED, Defendant. COLLEGEVILLE/IMAGINEERING, L.P., Plaintiff, v. LAWRENCE J. LIFF, Defendant.

Chapter 11, Civil Action No. 97-413-GMS and Civil Action No. 97-414-GMS
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
1999 U.S. Dist. LEXIS 23622
October 5, 1999, Decided

In explaining how the company’s business went bad:

this new Partnership was fairly successful. Like its predecessor and namesake, the Partnership would build up a large inventory of non-licensed costumes (e.g., ghosts, goblins, witches, skeletons, etc.) early in the year and, then, secure the crucial licenses for the more popular characters (such as the Teenage Mutant Ninja Turtles or Barney) a few months before Halloween. As a result, the Partnership enjoyed a competitive advantage over other costume manufacturers since stores typically buy all of their Halloween products from one vendor. Because of its historical success in this area, the Partnership was able to fund its activities by borrowing heavily from its lender, Meridian Bank, during the year and then paying off its line of credit with the proceeds from its Halloween sales after the season had ended. For the most part, the Partnership’s loans were unsecured.

However, in the Summer of 1994, the Partnership learned that it would not able to obtain a license for the most popular characters of the season—the “Power Rangers.” Consequently, its sales suffered terribly and, by the end of the year, the Partnership had incurred a $10 to $12 million shortfall and was thus in default with respect to its obligations to Meridian.

Previous NinjaLaw cases about Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng et.al. – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

Ninja Turtles again, this time with FASA’s BattleTech, ExoSquad, RoboTech and Playmates
Fasa v. Playmates – June 19, 1995
(WITH POWER RANGERS)

Spam vs Spa’am with Splinter from TMNT and Pumbaa from Lion King
Hormel Foods v. Jim Henson Productions – September 22, 1995

Ring Pops not utilitarian so trademark protects after patent expired
Topps Company v. Verburg – December 12, 1996

Ninja Turtles as euphemism for Prison Response Team
Clark v. Westchester County – April 30, 1998

Statue of a Ninja Turtle – heroin in it
Reyes v. Miller – June 23, 1999

Alejandro Reyes was convicted of drug related offenses and filed petition for habeas relief alleging that evidence of statements made to police were admitted without proper notice and in violation of Miranda rights. The Court held that statements of pedigree information (“such as the defendant’s name, address, height, weight, age, eye color, and date of birth”) do not require notice or Miranda protections.

ALEJANDRO REYES, Petitioner,
v. DAVID MILLER, Superintendent, Respondent.
98-CV-199H
UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NEW YORK
1999 U.S. Dist. LEXIS 12157

Decided – June 23, 1999

Opinion by Judge Carol Heckman:

Detective Grisanti searched another bedroom that was located on the left hand side of a dining room. Inside the bedroom was a statute of a ninja turtle. Detective Grisanti opened the top of the ninja turtle and found sixty-seven bags of heroin. The bags of heroin were wrapped in ten packages. Detective Grisanti testified that the heroin was packaged for sale. He also testified that the street value of the heroin was twenty dollars per bag.

For you math whizzes that’s about $1340 worth of heroin stuffed into a “statue of a ninja turtle”.

Plus “Approximately twenty-two ounces of crack cocaine were found in the bedroom” and “a loaded .38 caliber revolver inside a pocket of a coat that was hanging in the closet”.

The Court denies the petition finding no constitutional violations. But note, two defendants were arrested at the scene and they were tried together but only one was convicted. Is it because of the one’s statement admitting that he lived there? Was he then convicted based largely on his pedigree information while the other defendant was merely found at the scene.

This case joins a growing list of “Ninja Turtle” cases but the first that involves drugs. Previously I had been making a distinction between cases actually about involving Teenage Mutant characters and cases where they seem to be mentioned for no real reason. The case seems more like the latter because the Court did not need to mention the type of statue container. Courts seem to just like to mention the Ninja Turtles whenever possible.

Previous NinjaLaw cases about Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng et.al. – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

Ninja Turtles again, this time with FASA’s BattleTech, ExoSquad, RoboTech and Playmates
Fasa v. Playmates – June 19, 1995
(WITH POWER RANGERS)

Spam vs Spa’am with Splinter from TMNT and Pumbaa from Lion King
Hormel Foods v. Jim Henson Productions – September 22, 1995

Ring Pops not utilitarian so trademark protects after patent expired
Topps Company v. Verburg – December 12, 1996

Ninja Turtles as euphemism for Prison Response Team
Clark v. Westchester County – April 30, 1998

KENNETH CLARK, Plaintiff, -v- WESTCHESTER COUNTY, WESTCHESTER COUNTY DEPARTMENT OF CORRECTION, WESTCHESTER COUNTY DEPARTMENT OF CORRECTION MEDICAL DEPARTMENT, OFFICER WILLIS, SERGEANT SIMMONS, # 107, T.A.C. TEAM, aka “Ninja Turtles”, and JOHN DOES # 1 THROUGH # 4, Defendants.

96 CIV. 8381 (DLC)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1998 U.S. Dist. LEXIS 6086

Decided – April 30, 1998

Opinion written by District Judge Denise Cote:

On November 7, 1996, Kenneth Clark (“Clark”) commenced this action as a consequence of the brutal mistreatment that he alleges he received while a pretrial detainee at the Westchester County Jail in Valhalla, New York, during two incidents on November 12, 1995 and February 3, 1996. Clark’s original complaint named two individual defendants, Officer Peter Willis (“Willis”) and Sergeant Ronnie Simmons (“Simmons”), as well as Westchester County, the Westchester County Department of Corrections, and the Westchester County Department of Corrections Medical Department. The initial pleading also listed four John Doe defendants who were part of a prison response team Clark identified as the “Ninja Turtles.” Two matters are before the Court at this time: first, in a motion to amend dated January 6, 1998, Clark seeks to add as individual defendants those John Does he has now identified by name; second, the defendants have moved for summary judgment and have opposed the motion to dismiss. For the following reasons, the motion for summary judgment is granted in part and in part denied, and the motion to amend is denied.

And:

At a March 7, 1997 conference, the parties agreed to, and the Court set, a discovery cut-off of October 17, 1997. Through his First Request for Production of Documents, Clark asked for documents that would identify the so-called “Ninja Turtles” by March 28, 1997. Pursuant to this Court’s direction, the defendants supplied — in a May 31 Response that plaintiff’s counsel says he received at latest in mid June — the names of those officers working on the “S.S.T.” team during the relevant shifts.

Of course, this is not the first Federal Court case to mention the Ninja Turtles but I think it is the first time we see “ninja turtles” as a reference to excessive force by a prison response teams. This is similar to previous cases about DEA agents in ninja outfits and masked police accused of excessive force. But here the “ninja turtle” reference applies not only to black attire but also to the riot gear padding and hard helmets of Correctional Emergency Response Teams.

ninja turtles

Previous NinjaLaw cases about Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng et.al. – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

Ninja Turtles again, this time with FASA’s BattleTech, ExoSquad, RoboTech and Playmates
Fasa v. Playmates – June 19, 1995
(WITH POWER RANGERS)

Spam vs Spa’am with Splinter from TMNT and Pumbaa from Lion King
Hormel Foods v. Jim Henson Productions – September 22, 1995

Ring Pops not utilitarian so trademark protects after patent expired
Topps Company v Verburg – December 12, 1996

This case was brought by the Hormel Foods, makers of SPAM processed meat product, against Jim Henson Productions, producers of the Muppets based on allegations of infringement by the character Spa’am, a pig puppet.

HORMEL FOODS CORPORATION, Plaintiff, -against- JIM HENSON PRODUCTIONS, INC., Defendant.
95 Civ. 5473 (KMW)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
36 U.S.P.Q.2D (BNA) 1812

Decided – September 22, 1995

Spam:

Spa’am:

The Court opinion states:

This lawsuit is sparked by the prospective appearance of a new Muppet who joins Kermit, Miss Piggy and others in the movie “Muppet Treasure Island,” due to be released in about four months. The creators of the Muppets, Jim Henson Productions, Inc. (“Henson”), hope to provoke laughter by naming the new Muppet (an exotic, wild boar) “Spa’am”; they believe that the association between the exotic, wild boar and the tame, familiar luncheon meat, SPAM, will cause viewers to laugh. Hormel Foods Corporation (“Hormel”) which manufactures SPAM, finds nothing humorous in the association, and fears that the use of the Spa’am character will cause a drop off in the consumption of SPAM, and a drop off in the consumption of SPAM tee-shirts and other SPAM-related merchandise. Although Henson has urged Hormel, effectively, to “lighten up,” and to see the parody as a positive development for Hormel (especially in light of the fact that SPAM is regularly subjected to much more negative portrayals, Hormel insists on its right to a legal determination of whether Henson’s use of the Spa’am character and name are lawful.

Specifically, Hormel alleges that Henson’s proposed use of the Spa’am character and name in the motion picture and on related merchandise constitutes trademark infringement and false advertising in violation of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a) (1988). Additionally, Hormel raises state law claims of common law unfair competition, trademark dilution, N.Y. Gen. Bus. Law § 368-d (McKinney 1984), and deceptive practices, N.Y. Gen. Bus. Law § 349 (McKinney 1988). For the reasons stated below, Hormel’s claims are all denied.

FOOTNOTE #1
Two of the dozens of examples of negative jokes involving SPAM submitted by Henson are noted below.

1) An article from the Austin American-Statesman describing “Spampers, one of the entries in Spamarama (an annual contest among cooks where the dishes must include SPAM), which “involved a mother and her 3-month old baby girl, a diaper pail and a SPAM [pate].” According to Spamarama’s founder, “A lot of the judges became ill.” (Def. Ex. W10, Austin American-Statesman, Mar. 30, 1995, at 61.)

2) An excerpt from the television cartoon “Duckman,” in which Duckman uncovers “the secret ingredient to SPAM.” What the secret ingredient may be is left to the viewer’s imagination as Duckman is shown at “Murray’s Incontinent Camel Farm” observing camels in diapers on a conveyor belt heading into what is, presumably, the SPAM factory. (Def. Ex. W5.)

FOOTNOTE #2
As Henson notes, there are three issues before the court: (1) the use of Spa’am in the motion picture; (2) the use of the Spa’am likeness on merchandise; (3) the use of the Spa’am name on merchandise. With respect to the third issue, Henson has stated that it has shelved its past plans to use the Spa’am name on merchandise, pending a decision by this court as to their lawfulness. It has introduced several examples of how it would like to use the Spa’am name in the future. Hormel has objected to the court’s ruling on the third issue because Henson has stated that it has no current plans to use the Spa’am name on merchandise, absent court approval. Thus, Hormel argues, if the court were to reach the issue, it would be issuing an advisory opinion in violation of the “cases or controversies” clause of the Constitution. U.S. Const. art III, § 2, cl. 1. Because the alternative to opining now is to place the parties in the position of reacting hastily to last-minute decisions by Henson, I believe that the parties’ interests are served by the court’s considering the proffered, hypothetical plans. The court’s view will, of course, be dictum.

Evidence included expert testimony about consumer behavior and children’s literature:

Dr. Laura A. Peracchio, an expert in consumer behavior, states in her report that Spa’am is unappealing and will lead to negative associations on the part of consumers because he has small eyes, protruding teeth, warts, a skull on his headdress, is generally untidy, and speaks in a deep voice with poor grammar and diction. I am, however, persuaded by the report and testimony of Anne Devereaux Jordan, an expert in children’s literature, who notes that children (and adults) often have positive associations with characters that may not appear classically handsome. Among other examples, Ms. Jordan points to “Pumbaa,” the good-natured warthog in Walt Disney’s film The Lion King, and “Splinter,” the aging rat who acts as teacher and father-figure to the “Teenage Mutant Ninja Turtles.” Furthermore, a boar sharing some of the characteristics that Dr. Peracchio relies on has been used successfully as the image of meat products. See Def. Ex. VV (label from “Boar’s Head Brand” beef frankfurters showing boar with small eyes and protruding tusks). I agree with Ms. Jordan that a narrow focus on Spa’am’s physical appearance is insufficient to determine whether consumers, of any age, will have positive or negative associations with Spa’am.

Master Splinter from Teenage Mutant Ninja Turtles:

Pumbaa from Lion King:

Spa’am – Pig Chief – muppets action figure:

And so again we have a Federal Court mentioning the Teenage Mutant Ninja Turtles in a case that doesn’t really involve the Turtles, and dismisses claims of intellectual property.

Previous NinjaLaw cases about the Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng et.al. – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

This is a case series from the mid to late 1990s involving Fasa’s Battletech characters and toy products based on those characters made by toy company Playmates, as relates to other toy products based they made for the ExoSquad characters.

battletech

FASA CORPORATION and VIRTUAL WORLD ENTERTAINMENT, Plaintiffs, v. PLAYMATES TOYS, INC., Defendant.
No. 93 C 2445
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
892 F. Supp. 1061; 1995 U.S. Dist. LEXIS 8741; 35 U.S.P.Q.2D (BNA) 1766
Decided – June 19, 1995

Beginning on June 19, 1995, the Court began the first phase of a potential four phase bench trial in this matter which involves an intellectual property dispute involving futuristic robot-like battle toys

Previously an opinion of the Court in FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N.D. Ill. 1994), explained:

The present lawsuit centers on Playmates’ alleged infringement of FASA’s intellectual property and proprietary rights in BATTLETECH by designing and marketing the EXOSQUAD toy line

And explaining (footnotes omitted):

BATTLETECH – created by FASA in 1984 and originally sold as a role-playing game – is a fictional universe set in the 31st century. The BATTLETECH universe is comprised of empires such as the Star League, an empire consisting of five cosmic houses each of which encompasses hundreds of interstellar worlds. Each house seeks control of the galaxy. The battles between worlds are dominated by BattleMechs (also called Mechs), massive man-shaped, robot-like tanks of various shapes and designs which are piloted by human soldiers called MechWarriors. Pls.’ Admis. P 2. Among the MechWarriors’ adversaries are the Clan Elementals, “men and women bred to be foot soldiers.” FASA CORP., BATTLETECH THE RETURN OF KERENSKY TECHNICAL READOUT: 3050 (1990) at 8.

The EXOSQUAD story line is set in the 22nd Century and involves confrontations between the conquering, genetically engineered, Neosapien race and an enslaved human race living on Earth, Venus and Mars. The Neosapiens and humans battle each other, encased in large robotic fighting machines known as “ExoFrames” or “E-Frames.” Segal Decl. P 5 Playmates markets a toy line – consisting of six toys – featuring characters and vehicles from the EXOSQUAD cartoon series. Pls.’ Facts PP 7, 9.

exosquad

There were complicated issues about licensing agreements and waivers, but in terms of intellectual property and analysis of substantial similarity:

Even the most cursory visual comparison of the EXOSQUAD and BATTLETECH materials reveals that there are marked similarities between the two. In particular, we note that the EXOSQUAD Heavy Attack E-Frame appears to be a virtual replica of the BATTLETECH MAD CAT. Because the court cannot conclude that no reasonable trier of fact could find substantial similarity, Playmates’ motion for summary judgment on this basis must be denied.

mad catassault mech

And so with summary judgment granted in part but denied in part, the case went forward.

Among the findings of fact listed in the 1995 opinion:

Playmates is a distributor of toys supplied by a related company, Playmates Toys (Hong Kong) Ltd. (“Playmates HK”), including TEENAGE MUTANT NINJA TURTLES, * TREK, ADDAMS FAMILY and various Disney characters, and also participates in the development of toys pursuant to an agreement with Playmates HK.

And so again, as we’ve already seen already in many NinjaLaw posts, the Federal Courts mentions TMNT for no particularly necessary reason.

The 1995 opinion concludes:

For all of the reasons set forth herein the Court finds that Playmates’ New Product Form is legally unenforceable under the facts and circumstances of this case. The Court therefore finds that defendant Playmates has not met its burden of establishing its affirmative defense of waiver. The trial will therefore proceed to Phase II on June 20, 1995 at 9:45 a.m.

And so the case continued again. In fact there are seven Federal Court opinions decided between 1994 and 1998 in relation to these parties’ dispute. The first two are those opinions mentioned above. The third was in the same court (US District Court for Northern District of Illinois, Eastern Division) and by the same Judge Ruben Castillo, 912 F. Supp. 1124 decided January 22, 1996.

Judge Castillo concludes (despite what he wrote above) that the two character sets are not substantially similar, and/or independently created, and/or there are “Specific, Non-Trivial Design Features Distinguish EXO-SQUAD From BATTLETECH” and the Judge also cites a study introduced to evidence by Playmates:

The study found no probative evidence of any consumer confusion–98.6% of the persons interviewed after seeing display packages of both products, did not confuse the trade dress of EXO-SQUAD with that of BATTLETECH.

Therefore, Castillo writes:

The bottom line in this case is that Playmates made a conscious business decision that it could proceed with the development of its EXO-SQUAD toy line after it had been given access to the BATTLETECH designs without the necessity or cost of obtaining a license from FASA. After extensive and undoubtedly costly litigation this business decision has been found by this Court not to violate FASA’s legal rights. Nevertheless, this Court believes that the facts of this case do not warrant the imposition of any costs upon FASA for seeking to vindicate its legally protectible rights. This case is dismissed with prejudice with both sides to bear their own costs.

Judge Castillo also found the opportunity to again mention the Teenage Mutant Ninja Turtles and in the findings of fact writes:

On May 11, 1992, Sallis called Allen to discuss whether there was a possibility of putting together an animated cartoon show about BATTLETECH because Playmates’ preference was to produce its new robotic action figure toy line with a corresponding television series. (Sallis Tr. 1592-93). Many successful toy lines, such as the Ninja Turtles and Power Rangers have been promoted in this fashion. (Johnson Tr. 2219). Sallis also discussed potential royalties and budgets with Allen.

ninja turtles power rangers

On appeal at the Seventh Circuit, Judge Diane Wood summarized the above three cases:

The underlying dispute between FASA and Playmates dealt with the question whether Playmates had impermissibly copied FASA’s Battletech line of toys, violating both its copyright and trademark rights (among others) in the process. In a thorough opinion issued after a bench trial (and an opinion of exceptional interest for science fiction aficionados), Judge Castillo ruled that, while the original features of FASA’s robots were entitled to copyright protection, and FASA had protectable trade dress rights in its robot designs, Playmates’ Exo-Squad line of toys were not substantially similar to FASA’s toys based on the Battletech universe, the evidence did not show a likelihood of confusion between the two for purposes of the trade dress complaint, and Playmates had not engaged in unfair competition. FASA Corp. v. Playmates Toys, Inc., 912 F. Supp. 1124 (N.D. Ill. 1996) (FASA III). Earlier, he had granted Playmates’ motion for partial summary judgment on FASA’s claims of common law unfair competition, dilution, and tortious interference with prospective business advantage. FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N.D. Ill. 1994) (FASA I), and somewhat later, he had denied Playmates’ affirmative defense of waiver. FASA Corp. v. Playmates Toys, Inc., 892 F. Supp. 1061 (N.D. Ill. 1995) (FASA II).

Judge Wood then continues:

Playmates, which reports to this court that it spent in excess of $ 2.5 million defending itself against FASA’s accusations, argues that the district court’s remarks explaining why he was denying attorneys’ fees reveal a mistake of law on the standard to be applied.

Wood concludes

In its briefs, FASA has made a Herculean effort to parse the judge’s comments, … Rather than attempting further to read between the lines of the judge’s oral remarks, we prefer to send the fee question back to him to rule again on the petition under the applicable legal standards. We emphasize in this connection that Fogerty says that “attorney’s fees are to be awarded to prevailing parties only as a matter of the court’s discretion.” 510 U.S. at 534.

And so vacated and remanded, the case again falls before Judge Castillo, who again decides (with a bit of a benchslap to Playmates attorneys) not to award any attorney’s fees. So concluding April 1, 1998:

The proper exercise of this Court’s discretion herein requires the Court to once again reject an award of fees. It is unfortunate that this litigation was prolonged by this attorneys’ fees dispute. The Court recognizes that it bears great responsibility by not clearly enunciating the specific basis of its prior denial of attorneys’ fees. Perhaps the Court mistakenly sought to avoid writing a fourth opinion in this hotly disputed litigation. Yet, the Court expressly notes that, rather than seek easy clarification from this Court, Playmates’ counsel merely thanked the Court at the conclusion of the February 13, 1996 proceeding and proceeded to the appellate court.

Today, almost two years later, this Court corrects its prior mistake and issues its fourth opinion which, in no uncertain terms, indicates that an evaluation of all the legal and equitable factors at the Court’s disposal pursuant to its post-Fogerty discretion compels this Court to deny Playmates any attorneys’ fees in this matter. Playmates pushed the extreme outer limits of non-liability in this case to reap great economic benefits. Simply put, an award of attorneys’ fees to Playmates would not advance any creative purpose sought to be advanced in the Copyright Act. Now Playmates wants to have its close legal victory as its cake and its attorneys’ fees as its icing. Playmates instead should be satisfied with the economic profits it reaped from its EXO-SQUAD toys and the fact that its vast attorneys’ fees are still currently tax deductible as reasonable corporate business expenses without any clear limitation. This Court cannot and will not give Playmates its cake and icing too because Playmates has simply not convinced this Court that a fee award would equitably advance any creative purpose protected by the Copyright Act.

Meanwhile, if it weren’t already confusing enough, in two other opinions decided in the same district court around the same time, but by different judges, Playmates is a co-plaintiff against FASA, where the other co-plaintiff is Harmony Gold USA Inc., owners of the Macross and RoboTech character licenses. See Harmony Gold U.S.A. v. FASA Corp., 169 F.R.D. 113 (November 6, 1996, Decided) and 40 U.S.P.Q.2D (BNA) 1057 (June 12, 1996, Decided) and eventually settled out of court.

This is a complicated set of similar characters with crossed licensing agreements and arguable but specific differences. Judge Castillo considers it all part of the cost of doing business – the merchandise driven TV cartoon business. The Ninja Turtles serve to explain similar contemporary cartoon-toy businesses. There is no clear reason for the Court to have focused on that particularly comparison.

A Robotech fansite, terrania.us, has a great organized list of all seven Fasa v Playmates cases with link to the full opinions.

NinjaLaw has already posted about three prior mentions of the Teenage Mutant Ninja Turtles in Federal Court opinions but it was in 1994 that for the first time, a Federal Court opinion was actually involving them as intellectual property in dispute.

MIRAGE STUDIOS, a Massachusetts general partnership, Plaintiff, v. WENG C. YONG, MERRY M. YONG, DENNIS C.M. LOW and DOES 1-5 inclusive, dba TAI FUNG TRADING; et al., Defendants.
No. C-93-2684-VRW
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
1994 U.S. Dist. LEXIS 5618

The opinion is by Judge Vaughn R. Walker. You may recall he is also the judge who recently ruled that California’a Proposition 22 was unconstitutional in case Perry v. Schwarzenegger about gay marriage case.

Written April 29, 1994:

On July 15, 1993, Mirage Studios (“Mirage”) filed this action for copyright and trademark infringement against a group of thirty-four retailers, distributors and manufacturers, alleging that each of the named defendants has infringed and threatens to further infringe upon Mirage’s copyrighted and trademarked “Teenage Mutant Ninja Turtles.”

I presume this was mostly for infringing tee-shirts. And as is typical, the copyright holder asked for maximum damages, in this case $10,000 but Judge Walker found no evidence of any such actual damages and ordered only $500 per defendant (34×500 is $17,000). Also the Judge ordered attorney’s fees of “$780 in attorney fees and $40 in service costs per defendant” – that $780 is the attorney’s bill of “5.2 hours (at $150 per hour)”.

The Court also chides the defendants who did not answer the complaints suggesting that they could have more easily settled the case in advance, but I wonder because attorney fees to answer could only have increased costs.

So this is the first time TMNT is actually directly involved in a Federal Court opinion. But recall the previous NinjaLaw posts about the prior tangential mentions the characters:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

Don’t worry, there’s more to come too.

In 1992, El Cajon Cinemas sued AMC (American Multi-Cinema) alleging unfair trade practices preventing it from competing in the first-run movie business. “El Cajon alleges that it was injured by several different forms of defendants’ anticompetitive conduct.” Including: “Horizontal conspiracy, Circuit-Wide Deals, Leverages, Clearances and other Discriminatory allocations”

EL CAJON CINEMAS, INC., a California corporation, Plaintiff, v. AMERICAN MULTI-CINEMA, INC.
No. 90 0710 IEG (POR), 90 1408 IEG (POR), 92 0012 IEG (POR) (Consolidated)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA
1992 U.S. Dist. LEXIS 19290; 1992-2 Trade Cas. (CCH) P70,038
Decided – October 23, 1992

Explaining the allegations of Circuit-Wide Deals, Judge Gonzales writes:

El Cajon alleges that AMC and Pacific abused the buying power of their large circuits by persuading distributors to license to their theatres nationally rather than on a film by film or theatre by theatre basis in each geographic market. El Cajon cites the Court to the deposition of its film buyer who states that all of the films by all distributors are really licensed in this manner. El Cajon also references another section in its film buyer’s deposition in which the film buyer says that, although he is not sure, he thinks that NINJA TURTLES and WILD AT HEART were distributed on a circuit-wide basis. This alone is not enough to withstand a motion for summary judgment. At the request of El Cajon, the Court will review other evidence submitted by El Cajon relating to alleged circuit-wide deals between Pacific and Orion, and will take this matter under advisement.


Wild at Heart was a 1990 movie by director David Lynch starring Nicolas Cage, Laura Dern and Willem Dafoe. The original Teenage Mutant Ninja Turtle movie was also a 1990 release.

But the Court refused El Cajon’s arguments:

While the Unfair Practices Act makes it unlawful for any person engaged in the production, manufacture, distribution or sale of any article or product for general use or consumption to perform certain acts which the state has determined are anticompetitive, Section 17024 of the Unfair Practices Act provides that the motion picture films when licensed for exhibition to motion picture houses are not articles or products under this chapter. As a matter of law, none of the defendants can be held in violation of the Unfair Practices Act for engaging in the alleged conduct.

El Cajon failed again on a motion for reconsideration decided in 1993. And right now on the internet (google), I can’t find any “El Cajon Cinemas” chain in existence.

Finally, note a recent article, Jan 3, 2012, posted in the Atlantic by Derek Thompson, entitled “Why Do All Movie Tickets Cost the Same?” about movie price fixing. It’s not exactly the same issue as El Cajon faced (Thompson is referring to each movie having the same admit cost, whereas El Cajon was fighting being forced to buy who sets of the distributor’s movies in order to get access to the hot new movies), but it’s all related to the big business takeover of independent cinema in the early 1990’s.

Ninja again being coincidentally(?) being a character of big business racketeering style takeovers. It is humorous to see the ninja turles involvement in this early media war and again recall their involvement in the cola wars.