Warner Bros. v. AVELA (AVELA Brief)

8/6/2019 Warner Bros. v. AVELA (AVELA Brief)

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No. 10-1743UN ITED STATES COURT OF APPEALSFOR THE EIGHTH CIRCUIT

WARNER BROS. ENTERTAINMENT, WARNER BROS. CONSUMERPRODUCTS, INC., and TURNER ENTERTA INMENT CO .,Plaintiffs/Appellees,

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DAVE GRO SSMAN CREA TIONS, INC.,GIFT OF SOUND LLC , X ONE X PROD UCTIONS d/b/a X ONE X MOV IEARCH IVES, INC., A.V.E.L.A., INC. d/b/a ART & VINTAG EENTERTAINMENT LICENSING AGENCY and ART-NOSTALGIA.COM,INC.,

Defendants/Appellants.

Appeal from United States District Court for the Eastern District ofMissouri-St. LouisHonorable Henry E. Autrey (Case No. 4:06-cv-00546)

A PPE L L A N T S O PE N I N G B R IE FTHE BALL LAW FIRM, LLPDOUGLA S D. WINTER1086 6 W ilshire Blvd., Suite 14 00Los Angeles, CA 90024Telephone: (310) 446 -6148

P A U L E , C A MA ZIN E & BL U ME N T HA LMICHAEL E. BUB165 N. Merame c Ave., Suite 110St. Louis, MO 631 05Telephone: (314) 727-2266

Attorneys for Defendants-Appellants

Appellate Case: 10-1743 Page: 1 Date Filed: 07/23/2010 Entry ID: 3686762


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SUMMARY OF THE CASE AN D REQUEST FOR ORAL ARGUM EN TThis is a civil case for copyright infringement and other intellectual prope rty

claims. The District Court granted sum m ary judgme nt for plaintiff Warner Bros.on its copyright claim and issued a p erm anent injunction based thereon.Defendants AVELA, Inc., et al. appe al the injunction and the p redicate su m m aryjudgment order.

Warner Bros. claims cop yright ownership through ch ain of title of the 1 939film s "The Wizard of Oz," "Gone With Th e W ind," and cartoons featuring "Tomand Jerry." AVELA has o btained and restored publicity materials relating to thefilms, including mov ie pos ters, photo stills and theatre lobby cards, and haslicensed images and artwork from the p ublicity m aterials to third parties for use onm erchandise. The publicity materials used by AVELA are in the p ublic domain,and are not protected by copyright.

The D istrict Court determ ined that AVELAs u se of the p ublicity m aterialviolated Warner Bros. copyright in the films, and found that Warner Bros. hadsufficiently prov ed ow nership of the copyrights through chain of t it le. AVELAsubm its that the District Courts order is unsupported as a m atter of law.

AVELA requ ests 20 minutes for oral argum ent, as the issue s presentedunder the 190 9 Copyright Act are com plex and subtle. AVELA subm its that oralargume nt would be of assistance to the Court in dealing with the issues.



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CORP ORA TE DISCLOSURE STATEMENTAppellants X One X Movie Archives, Inc., A.V.E.L.A., Inc. d/b/a Art &

Vintage Entertainment Licensing Agency, and Art-Nostalgia.corn, Inc. herebycertify pursu ant to Fed. R. App . P. 26.1 that each h as no parent corporation and nopublicly held corporation owns 10 % or m ore of i ts stock.



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TABLE OF CONTENTSJURISDICTIONAL STATEMENT ...................................................... 1STATEMENT OF THE ISSUES PR~ESENTED FOR REVIEW .................... 2STATEMENT OF THE CASE ........................................................... 3STATEMENT OF FACTS AND PROCEDURAL HISTORY ...................... 5A. Relevant Facts ..................................................................... 5

1. Copyrights in the Motion Pictures and Cartoons andWarner Bros Chain of Title ...................................... 5

2. AVELAs Business and Use of Publicity Materials ........... 73. AVELAs Use of Publicity Materials Relating to "The Wizard

of Oz," Gone With The Wind" and "Tom and Jerry" .......... 8B. Relevant Procedural History ................................................ 11

1. Warner Bros. Complaint .......................................... 112. Summary Judgment Motions and District Court Orders ...... 12

STANDARD OF REVIEW .............................................................. 13SUMMARY OF ARGUMENT ......................................................... 15ARGUMENT .............................................................................. 17I. THE DISTRICT COURT ERRED IN DETERMINING THAT AVELASCOPYING OF THE PUBLICITY MATERIALS CONSTITUTESINFRINGEM ENT OF COPYRIGHTS IN THE MO TION PICTURES ANDERRED IN DETERMINING THAT WARNER BROS. PROVED

COPYRIGHT OWNERSHIP .................................................... 17A. Copyright Protection and the 1909 Copyright Act ..................... 17B. Infringement ................................................................ 19C. All of the Publicity Materials Used by AVELA are in the PublicDomain ...................................................................... 20



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D. Substantial Similarity Betw een the Licensed Products and theFilms IsIrrelevant. The Publicity Materials are not DerivativeWorks ........................................................................ 24E. Copyright Protection in the Characters In the Films Is

Inconsequ ential, Because AVELA Uses O nly the PublicDomain Materials ..........................................................26F. The Cop yright Act Does Not Lim it Use of Public

Domain Materials ..........................................................29G. Warner Bros. Has Failed to Establish Copy right Owne rshipof the Films ..................................................................30

II. THE DISTRICT COURT ERRED IN ISSUING A PERMANEN TINJUNCTION BECAUSE IT WAS BASED ON THE ERRON EOUSCOPYRIGHT ORDER ...........................................................34

CONCLUSION ...........................................................................36CERTIFICATE OF COMPLIANCE ...................................................37ADDENDUM ..............................................................................38



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T A B L E O F A U T H O R I T I E SCASES PageCable V ision, Incv. KUT V,, Inc.,335 F.2d, 350 (gth Cir. 1964) (quoting Compco Corp., 376 U.S. at 237 ) ......... 19Dastar Corp . v. Twentieth Century Fox Film C orp.,539 U.S. 23, 33 (2003) ................................................................... 29F.D.I. C. v. Bell,106 F.3d 258, 262-63 (8th Cir. 1997) ................................................... 14

Fogie v. THOR N Am ericas, Inc.,95 F.3d 645,649 (8th C ir . 1996), cert. denied, 520 U.S. 1166 (1997) ............ 14Idaho Watersheds Project v. Hahn,307 F.3d 815,824 (9th Cir. 2002) ...................................................... 13Lam b v. Starks,949 F.Supp. 753,755 (N.D. Cal. 1996) ................................................ 25Maljack Productions, Inc. v. Goodtim es Hom e Video Corp.96 4 F.Su pp . 1 41 6, 14 20 (C.D . Cal. 1 997 ) ............................................................ 19Mayview C orp. v. Rodstein,480 F.2d 714, 719 (9th Cir. 1973) ....................................................... 17Metro-Goldwyn-Mayer, Inc. v. Am . Honda Motor C orp.,900 F.Supp 1287, 1296-97 (C.D. Cal. 1995) ....................................... 5, 26Milton H. Greene A rchives, Inc. v. BPI C om m unications, Inc.,378 F.Supp.2d 1189, 1197-1200 (C.D. Cal. 2005) .................... 2, 21, 22, 23, 24Mu leahy v. Cheetah Learning LLC ,386 F.3d 849, 850 (8th Cir. 2004) ................................................ 3, 13, 35Pannonia Farm s, Inc. v. USA C able,2004 WL 1276842 (S.D.N.Y. 2004) ................................. ....... 2, 27, 29, 30



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Randolph v. Rodgers,170 F.3d 850 (8th Cir. 1999) ................................................... 1, 3, 13, 14

Religious Technology Ctr. v. Netcom On-Line Com m . Servs, Inc.,923 F.Supp. 1231, 1241 (N.D. Cal. 1995) ...................................... 3, 30, 34Rice v. Fox Broadcasting Co.,330 F. 3d 1170, 1175-76 (9th Cir. 2003) ............................................... 26Rifl~n v. McDonnell Douglas Corp.,78 F.3d 1277, 1280 (8th Cir. 1996) ...................................................... 14Russell v. Price,612 F.2d 1123, 1128 (9th Cir. 1979) ................................................... 25Self-Realization Fellowship Chu rch v. Anan da C hurch of Self-Realization,206 F.3d 1322, 1325 (9th Cir. 2000) .................................................... 17Siegel v. War ner Bro s. Entm t, supr a,542 F.Supp.2d 1098 ............................................................ 2, 17, 18, 24Sierra Club v. Robertson,28 F.3d 753,760 (8th Cir. 1994) ......................................................... 14Silverm an v. CB S, Inc.,870 F.2d 40, 50 (2d Cir. 1989) ................................................ 27, 29, 30Stewart v. Abend,495 U.S. 207, 233 (1990) ............................................................ 18, 29Taylor Corp . v. Four Seasons Greetings, LLC,403 F.3d 958, 962-63 (8th Cir. 2005) ............................................... 19, 30Twin B ooks v. Walt Disney,83 F.3d 1162, 1165 (9th Cir. 1996) ................................................ 2, 18United States v. Shum way,199 F.3d 1093 (9th Cir. 1999) ......................................................... 3,33



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STATUTES15 U.S.C. 1114 ............................................................................. 115 U.S.C. 1125(a) .......................................................................... 115 U.S.C. 1125(c) .......................................................................... 117 U.S.C. 1, et seq. (1909 Copyright Act (superseded 1976)) ..................... 1717 U.S.C. 106 ............................................................................ 171 7 u . s .c . 204(a) ......................................................................... 3017 U.S.C. 501 ......................................................................... 1, 1917 U.S.C. 501(a) .......................................................................... 1928 U.S.C. 1292 (a)(1) ............................ .................................... 1, 1328 U.S.C. 1367 ............................................................................ 1

R U L E SFed. R. Civ. P. 56(e)(1) ................................................................ 3, 30Fed. R. Evid. 602 ................................................................... 3, 16, 33



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JURISDICTIONAL STATEMENTOriginal jurisdiction in the District Court was properly premised on 28

U.S.C. 1331 and 1338 because the complaint alleges copyright infringement (17U.S.C. 50 l(a)) and infringement of both registered and unregistered trademarks(15 U.S.C. 1114, 1125 (a) and 1125(c)). Jurisdiction of the state law claimsarises under the District Courts supplemental jurisdiction. 28 U:S.C. 1367.

On March 20, 2009, the District Court granted summary judgment in favorof Plaintiffs-Appellees Warner Bros. Entertainment, Inc., Warner Bros. ConsumerProducts, Inc. and Turner Entertainment Co. (collectively, "Warner Bros.") on thecopyright infringement claim. On March 4, 2010, the District Court issued anorder entering a permanent injunction against Defendants-Appellants X One XMovie Archives, Inc., A.V.E.L.A., Inc. d/b/a Art & Vintage EntertainmentLicensing Agency, Art-Nostalgia.com, Inc. and Leo Valencia (collectively,"AVELA") based on the copyright order. AVELA timely appealed the permanentinjunction order on April 1, 2010. This Court has jurisdiction under. 28 U.S.C. 1292(a)(1).

Because the District Courts order granting summary judgment in favor ofWarner Bros. on its copyright infringement claim is the predicate for thepermanent injunction, this Court has jurisdiction to review the copyright order. 28U.S.C. 1292(a)(1); Randolph v. Rodgers, 170 F.3d 850, 855-56 (8 th Cir. 1999).

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STATEMENT OF THE ISSUES P RESENTED F OR REVIEW1. The District Court erred as a matter of law in determining that AVELAs

use of the publicity materials constituted infringement of Warner Bros.copyrights in "The Wizard of Oz," "Gone With The Wind" and "Tomand Jerry," because the publicity materials are all in the public domain.Even if the characters in the respective films are protectable undercopyright, AVELA is entitled to copy and use images of the characterswhich fell into the public domain.Twin Bo oks v. Walt Disney, 83 F.3d 1162 (9th Cir. 1996).Siegel v. Warner Bros. Entre t, 542 F.Supp .2d 1098 (C .D. Cal. 2008 ).Milton H. Greene A rchives, Inc. v. BP I Com m unications, Inc., 378F.Supp.2d 1189 (C.D. Cal. 2005),Pannonia Farms, Inc. v. USA Cable, 2004 W L 127684 2 (S.D.N.Y. 2004)1909 Cop yright Act, 17 U.S.C. 191909 Copyright Act, 17 U.S.C. 24

2. The District Court erred in determining that Warner Bros. proved itsownership of copyrights in and to "The Wizard of Oz," "Gone With TheWind" and "Tom and Jerry" because Warner Bros. failed to presentadmissible evidence to establish a chain of title from the originalcopyright claimant.

2Appellate Case: 10-1743 Page: 10 Date Filed: 07/23/2010 Entry ID: 3686762


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Religious Technology Ctr. v. Netcom On-Line Com m . Servs, Inc., 923F.Supp . 123 1 (N.D. Cal. 1995).17 U.S.C. 204(a)United States v. Shumway, 199 F.3d 1093 (9th Cir. 1999).Fed. R. Civ. P. 56(e)(1 ).Fed. R. Evid. 602

3. The District Court erred as a matter of law in issuing a permanentinjunction because the injunction is premised and dependent upon theDistrict Courts erroneous order granting summary judgment on thecopyright infringement claim.Muleahy v. Cheetah Learning LLC , 386 F.3d 849 (8th Cir. 2004)Randolph v. Rodgers, 170 F.3d 850 (8 th Cir. 1999).

STATEMENT OF THE CASEWarner Bros. initiated this action on March 31, 2006, contending that

AVELA infringed its copyright in the motion pictures "The Wizard of Oz" and"Gone With The Wind" and its copyrights in and to various "Tom and Jerry"cartoon films. Warner Bros. also brought claims for trademark infringement andstate law claims for violation of rights of publicity and unfair competition.(Appendix ("App.") 64-98.) AVELA filed counterclaims for libel, declaratory



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relief, interference w ith econom ic and contractual relations and for unlawfulrestraint of trade. (App. 16 , 61.)

In March, 2008, Warner Bros. and AVELA filed cross-motions for summ aryjudgme nt on Warner Bros. claims and Warner Bros. also sough t sum m aryjudgment as to AVELAs counterclaims. (App. 99-106; 115-1 18.) On March 20,2009, the District Court, the H onorable He nry E. Autrey, issued an order grantingWarner Bros. motion for summ ary judgment as to its copyright claim only,denying the rem ainder of Warner Bro s. m otion and denying AVEL As m otion("Copyright Order"). (Part 1 of Addendum .)

On March 4, 2010 , the District Court granted Warner Bros. motion forperm anent injunction based on the cop yright order ("Injunction Order"). (Part 2 ofAddendum.)

AVELA ap pealed the pe rm anent injunction order on April 1, 2010. (App .1092.)//1111//11



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STATEMENT OF FACTS AND PROCEDURAL HISTORYA. Relevant Facts

1. Copyrights in the M ot ion Pic tures and Cartoons and W arnerBros Chain of Title

Warner Bros. is not the creator or author of the relevant m otion pictures oranimated films, and therefore alleges legal and/or beneficial copyright ownersh ipof copyright in the w orks through ch ain of title. (App. 65, 107 -109, 111-1 12.)

The m otion picture "TheW izard of Oz," which prem iered on Augu st 12,1939, was released by Metro Goldwyn-Mayer ("MGM") and was based upon L.Frank Baums 19 00 book "Th e Wo nderful Wizard of Oz" and the characterstherein. (App . 652-653 ,662-674 , 194-215 .)

Copyright for "TheW izard of Oz" was registered on Augu st 7, 1939 byLoew s Incorporated ("Loews") with the U.S. Copyright Office ("CopyrightOffice") as Original Registration No. L90 39. (App . 107 .) A renew al registrationfor "The Wizard of Oz" was filed in the Cop yright Office on August 8, 1966 byMetro Goldwyn-M ayer ("MGM") as Renewal Certificate No. R3904 74. (App .108.)

The m otion picture "Gone With the Wind" was released in 193 9 by MGM,and was based upon Margaret Mitchells 1936 bes t selling novel of the sam e title,which also won a Pulitzer Prize. (App. 636, 125.)



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Copyright for the motion picture was registered on Decem ber 31, 1939 bySelznick International Pictures, Inc. ("Selznick") with the Copyright Office asOriginal Registration No. L9390. (Ap p. 10 9.) A renew al registration for "GoneWith The Wind" was filed in the Copyright Office on January 3, 1967 by MGM asRenew al Certificate No. R399224. (App. 109.)

As to the "Tom and Jerry" film cartoons, Warner Bros. claims that Loewsregistered copyrights in more th an 100 of the cartoons prior to 1960, and thatWarner Bros. is the copyright holder for each of the approxim ate 255 animatedshorts and pictures in wh ich Tom and Jerry have appeared. (App. 110-1 11.)

According to stateme nts of Warner Bros. Senior Litigation Counse l, thechain of title leading to W arner Bros. is as follows: Loe ws ch anged its name toMGM in 1960. In 1980, MG M assigned all of its interest in the subject m otionpicture cop yrights to MGM Film Co. ("Film co"). In 1982, Filmco c hanged itsname to M GM/UA Entertainment Co. ("MGM /UA"). In 1986, MGM iUA changedi ts nam e to MG M Entertainm ent Co., wh ich m erged into TBS Entertainment Co.("TBS Entertainment"). TBS Entertainm ent changed its nam e to TurnerEntertainme nt Co. (Plaintiff-App ellee he rein) ("TEC"), and as of Au gust 5 , 1986 ,TEC w as the ow ner of all intellectual property rights in and to the subject m otionpictures . In 199 4, Turner Entertainm ent Group ("TEG ") became a subsidiary ofTurner Broadcasting System, Inc. ("TBS"), and all shares of TEC were transferred



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from TBS to TEG. In 1996, Time W arner, Inc. ("Time Warner") acquired TBSand, therefore, TEG and TEC, and all copyrights associated w ith the subjectm otion pictures. (App. 111 -112.)

TEC is wholly-owned by W TTA Incorporated, which is wholly-owned byPlaintiff-Appellee Warner Bros. Entertainme nt, Inc. (App. 6 6-67 .)

2. AVELAs Business and Use of Publicity MaterialsAVELA is in the bus iness of finding, buying, restoring, licensing and selling

publicity works. (App . 136.) Spe cifically, AVELA identifies public domainpu blicity materials, such as vintage m ovie and theater posters, lobby display cardand other publicity works u sed in the past to advertise plays, theatrical productionsand motion picture s, and hires artists to carefully restore them , add new colors,pigm ents and creative exp ressions, and also to incorporate the old im ages into newand original works . (App. 136 -137 .) AVELA also acquires others originalrestorations of old p ublic dom ain materials. Id.

AVELA takes careful steps to ensu re that it does not infringe other cop yrightholders rights by conducting extensive cop yright searches to verify that theprinted works, p osters, photographs and other materials have in fact fallen into thepublic domain. (App . 137-13 8.) Before restoring the v intage works and beforeacquiring and using the restored w orks, AVELA confirms that the m aterials are inthe public domain. (App . 138.) A number of AVELA res torations have been

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registered as derivative w orks, for wh ich copyrights have been claimed by X OneX. (App. 138, 760-789, 679-71 9.)

AVELA e nters into licensing agreeme nts for the u se of its works w ith thirdparties. The restored images taken from the p ublicity materials are licensed tothird parties who affix them to consum er products, such as T-shirts, tin signs, waterglobes and figurines. (App . 142, 144 -145 .)

3. AVEL As Use of Publicity Materials Relating to "The W izard ofOz," Gone W ith The Wind" and "Tom and Jerry"

The artwork and images at issue are derived from publicity materials,including m ovie posters, photographs of actors or scenes, campaign or press books,and theater lobby displays and cards that were w idely distributed to prom ote andadvertise the upcom ing 1939 releases of"The W izard of Oz" and "Gone With TheWind." (App. 141-14 6, 154-160, 16 3,181,188, 301-303,340, 996-999, 1004-100 5, 1007, 790-7 99, 833-87 3,251-299, 874-88 6, 629-632, 722.) In addition,m ovie pos ters used to prom ote trailers for "Tom and Jerry" cartoons as early as1940 are also the su bject of this m atter. (App. 146-148 , 955-972, 170-171.)

AVELA has not published, copied or displayed any film clips, trailers orimages app earing in the m otion picture, "The W izard of Oz." (App . 146, 152.)Instead, AVELA h as used images from pre-p roduction or publicity pho tographs orstills that were p roduced prior to comp letion of post-p roduction of the release of

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the motion picture and before the deposit date of copyright in the film was affixed.(App. 153.) These photo stills are each numbered with the prefix "1060," which isthe number assigned via the studios internal identification system reflecting thatthey were publicity stills relating to "The Wizard of Oz." (App. 834-873, 143,1002-1003.) Although Loews received 287 copyright registrations in 1939 forstill photographs taken on the set of"The Wizard of Oz," none of the registrationswas renewed with the Copyright Office. (App. 800-820,143, 153.)

AVELA has also used images from movie posters related to "The Wizard ofOz," which were published, issued and sold without any copyright notice beingaffixed or included. (App. 875-879, 153.)

AVELA has also used images from movie lobby cards which were createdfrom "W izard of Oz" production stills produced p rior to com pletion of post-production of the motion picture. (App. 880-886, 153, 144.) The lobby cards wereissued and sold without any copyright notice being affixed or included. (App. 153,144.)

AVELA h as licensed the restored im ages taken from the p ublicity m aterialsdescribed above relating to the "W izard of Oz" to third parties wh o affix them toconsum er products s uch as T-Sh irts, tin signs, water globes and figurines. (App .144-14 5.) Examples of the p roducts are found at App. 1035-1063 , 144-145, andcharts depicting each p roduct and the corresp onding "Wizard of Oz" p ublicity

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material on which it is based is at App. 887-918, 1070. (See also App. 194-215,629-632.)

AVELA has similarly not used or copied any portion of the motion picture"Gone With The Wind." (App. 143, 154.) AVELA has instead used stillphotographs taken on the movie set during the production of "Gone With TheWind" and photo stills taken of the actors in costume that were used by MGM inpublicity works. (App. 790-799, 154, 163, 181,188, 996-999, 1004-1007.) Thesestills were not deposited with the Copyright Office, and in fact were issued anddistributed without any copyright notice being affixed or included. (App. 800-820,141,154.)

AVELA has used images from promotional movie posters for "Gone WithThe Wind." (App. 141-142, 1111-1117.) The movie posters were issued and soldwithout any copyright notice being affixed or included. (App. 141, 154, 800-820.)

AVELA has licensed to third parties the restored images taken from thepublicity materials described above relating to "Gone With The Wind," and theimages and artwork are affixed to products such as T-Shirts, tin signs, water globesand figurines. (App. 142.) Examples of the products are found at App. 1022-1033,and a chart depicting each product and the corresponding "Gone With The Wind"publicity material on which it is based is at App. 821-832, 633-646, 142-143.

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AVELA has not used or cop ied any scene or port ion of any "Tom and Jerry"animated cartoon film. (App. 147, 154, 170-171.) Instead, AVELA has usedimages from MGM animation posters which were distributed by MGM to promoteits "Tom and Jerry" trailers and which were either published and distributedwithout copyright notice being affixed or included or were published anddistributed with a written copyright notice but with no deposit or renewal (the"Tom and Jerry Posters"). (App. 146-147, 301-339, 340-358, 955-972, 919-935.)

AVELA restored the Tom and Jerry Posters, and has licensed a number ofthem to third parties. (App. 936-954, 146.) AVELAs licensees have createdproducts using some of the images from the Tom and Jerry Posters, including T-Shirts and figurines, examples of which are depicted at App. 973-984. A chartillustrating how the licensed images are used to create these products is found atApp. 985-991,148.B. Relevant Procedura l History

1. Warner Bros. ComplaintWarner Bros. alleges ownership of copyright registrations for the "Wizard

of OZ" and "Gone With The Wind" motion pictures and for 255 "Tom and Jerry"cartoon films and that AVELA has infringed such copyrights. (App. 69, 78.)Warner Bros. does not allege ownership of any copyrights in and to any of thepublicity materials relating to the above works. (Id.)



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2. Summary Judgment Motions and District Court OrdersOn March 24, 2008, Warner Bros. and AVELA filed cross-motions for

sum m ary judgment. Each requ ested oral argum ent pursuant to Eastern DistrictLocal Rule 4.02(B). On March 20, 2009, the D istrict Court issued its Op inion,Mem orandum and Order on the p arties respective m otions withou t any oralargum ent, a copy of w hich is attached h ereto purs uant to Eighth Cir. R. 28A(b).The District Court granted Warner Bros. motion for sum m ary judgment on thecopyright infringement claim, and otherwise denied all other m otions by theparties.

On June 22, 2009, Warner Bros. filed a motion for p ermanent injunctionbased on the order granting sum m ary judgment on the copyright claim . AVELAfiled its opposition to the m otion on July 6, 2009. On March 4 , 2010, the DistrictCourt issued its Opinion, Mem orandum and Order granting the m otion, a copy ofwh ich is attached here to pursu ant to Eighth Cir. R. 28A(b) (the "InjunctionOrder"). The injunction was issued by the District Court based upon its entry ofsum m ary judgment in favor of W arner Bros. on the copyright infringem ent claim.(See Injunction Order attached as part of Addendu m , pp. 1-5). The InjunctionOrder restrains AVELA from licensing or using im ages from the m otion picturesand images of the ch aracters therein and also from using the publicity materials in

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any manner that displays less than the full publicity material. (Injunction Order, pp.6-7.)

AVELA filed its Notice of Appeal of the Injunction Order on April 1, 2010.(App . 1092.)

S T A N D A R D O F R E V I E WThis Courts jurisdiction under 28 U.S.C. 1292 (a)(1) to review the

Injunction Order also extends to the copyright summary judgment order becausethe validity of the injunction is dependent upon the copyright ruling. Randolph v.Rodgers, supra, at 855-56. Although summary judgment that determines onlyliability or that disposes of less than all claims is not a final appealable order,jurisdiction under 28 U.S.C. 1292 (a)(1) extends to all matters inextricably boundup with the injunctive order from which the appeal is taken. In Mulcahy v.Cheetah Learning LLC , 386 F.3d 849, 850 (Sth Cir. 2004), the district courtgranted partial summary judgment and issued a permanent injunction on plaintiffscopyright infringement claim. The court reviewed the propriety of the copyrightsummary judgment ruling, expressly recognizing that "[i]f summary judgment wasimprovidently granted on Mulcahys claim of copyright infringement, thepermanent injunction must be vacated." Mulcahy, 386 F.3d at 852. See, also,Idaho Water sheds Project v. Hahn, 307 F.3d 815, 824 (gth Cir. 2002) (court has

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jurisdiction to review partial summ ary judgment w here ruling is necessarypredicate for later grant of injunctive relief).

There fore, if the District Court erred in granting sum m ary judgment on thecopyright claim, both the cop yright order and the injunction must be v acated.

The District Courts sum m ary judgm ent decision is reviewe d de novo.Randolph, supra , 170 F.3d at 856 (8th C ir. 1997). Sum m ary judgm ent isapprop riate only whe n there is no genuine issue of m aterial fact and the m ovingparty is entitled to judgm ent as a m atter of law. See Fed.R.Civ.P. 56(c); Rijkin v.McDonnell Douglas Corp., 78 F.3d 1277, 1280 (8th Cir. 1996). Using the sam estandards that apply to the district courts consideration of a motion for sum m aryjudgme nt, the review ing court mu st decide whe ther the record, wh en viewed in thelight most favorable to the nonm oving party, show s that there is no genuine issueof m aterial fact and that the m oving party is entitled to judgm ent as a m atter oflaw. Sierra Club v. Robertson, 28 F.3d 753,760 (8th Cir. 1994 ).

The District Courts order granting a perm anent injunction is review ed forabuse of discretion. F.D.LC . v. Bell, 106 F.3d 258, 262-63 (8th Cir. 1997). "Abuseof discretion occurs if the district court reaches its conclusion by applyingerroneous legal principles or relying on clearly erroneou s factual findings." Fogiev. THORNAr nericas, Inc., 95 F.3d 645,649 (8th Cir. 1996), cert. denied, 520 U.S.1166 (1997).

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S U M M A R Y O F A R G U M E N TThe District Court erred in granting summary judgment and injunctive relief

in favor of Warner Bros. on its. copyright infringement claim. The evidenceestablishes that (1) AVELA uses only publicity materials which were published inadvance of the subject motion pictures "The Wizard of Oz," "Gone With TheWind" and "Tom and Jerry;" and (2) such publicity materials were injected into thepublic domain when they lost copyright protection under the 1909 Copyright Act.The law recognizes, and in fact encourages, free copying of such material becauseit belongs to the public.

The District Court correctly recognized that AVELA copies and otherwiseuses only such public domain materials. However, the District Courts analysisthen went seriously off-track. Focusing on the copyright protection of the filmcharacters, which the District Court found became copyrightable through thedevelopment of character "idiosyncracies" in the subject films, the District Courtconcluded that AVELAs use of images of the characters constituted infringement.However, the evidence is that AVELA uses only the photos and images of thecharacters from the public domain materials, which it is freely entitled to do. Theimages used by AVELA do not embody any character traits or "idiosyncracies"which are developed in the films which are not already part of the public domainimages. The District Court erred as a matter of law in concluding that AVELAs

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use of the pu blic dom ain material constituted infringem ent of any copyrightsowned by Warner Bros.

The D istrict Court further erred in finding that Warner Bros. provedownersh ip of the cop yrights in the s ubject film s. Since W arner Bros. did not createthe films and was not the original copyright registrant, it has the burden toestablish, through the introduction of admissible ev idence, its ch ain of title ofownersh ip of the cop yright beginning with the original claimant. Warner Bros.failed to do so. Warner Bros. failed to present a single docum ent establishingtransfer(s) of copy right interests (even thou gh cop yright transfers are invalid unlessin writing), and instead relied solely on the stateme nts of its in-house cou nselattesting to copyright assignme nts and corporate restructuring covering a p eriod ofapproxim ately 60 years. The "evidence" relied upon by Warner Bros. to prove itschain of title was clearly inadmissible u nder Fed. R. Evid. 602, and Warner Bros.failure of proof is fatal to its infringem ent claim.

Finally, the Injunction Order m ust be v acated because it is entirelydepe ndent upon the erroneous finding of copy right infringem ent. Once thecopy right order is reverse d, there is no basis for injunctive relief.



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ARGUMENTI. THE DISTRICT COUR T ERRED IN DETERM INING THATAVELAS COPYING OF THE PUBLICITY MATERIALSCON STITUTES INFRINGEM ENT OF CO PYRIGHTS IN THEMOT ION PICTURES AND ERR ED IN DETERMINING THATWARN ER BROS. PROVED COPYRI GHT OW N ERSHIP

A. Copyright Protection and the 1909 Copyright ActA copyright holder has certain exclusive rights to the copyrighted w ork,

including the right to reproduc e all or any part of the co pyrighted w ork. 17 U.S.C. 106. It is well-settled, howe ver, that a work m ay be copied unless it is coveredby a valid patent or copyright. Mayview Corp . v. Rodstein, 480 F.2d 714, 719 (gthCir.. 1973 ).

The determ ination of when a copyright in a work is secu red is when them aterial was protected by statute, m eaning when the cop yright in such a worksecured protection under the copyright laws. Siegel v. Warner Bros. Entre t, 542F.Supp.2d 1098, 11 19 (C.D. Cal. 2008). The validity of a copyright in a w orkdistributed before 197 8 is determ ined by the 190 9 Copyright Act. Self-Realization Fellowship Chur ch v. ~4na nda C hurch o f Self-Realization, 206 F.3d1322, 1325 (gth Cir. 2000). Here, the relevant works w ere all distributed wellbefore 1978 , and the 1 909 Cop yright Act, 17 U .S.C. 1, et seq. (superseded1976 ) ("1909 Act") therefore applies.

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Under the 1909 Act, an unpu blished w ork was protected by state com m onlaw copy right from the m ome nt of creation until it was either pu blished or until itreceived protect ion under the federal copyright schem e. Twin Books v. WaltDisney, 83 F.3d 116 2, 1165 (9th Cir. 1996). When a work w as published for thefirst tim e, it lost state comm on law p rotection, but the ow ner could obtain federalprotection by complying with the 1909 Act requirem ents. Id. "If the owner failedto satisfy the 1909 Act requirem ents, the pu blished work w as interjectedirrevocably into the p ublic domain precluding any subsequ ent protection of thework under the 190 9 Act." Id. "Section 10 of the 1 909 A ct provided that [a]nyperson ... m ay secure co pyright for his work by p ublication thereof with the noticeof cop yright requ ired by this title." Id .

"Section 19 of the 190 9 Act delineated what constituted proper notice: Thenotice of copyright required by se ction 10 of this title shall consist of either thewo rd Copyright, the abbrev iation Copr., or the sym bol , accom panied by thename of the copyright p roprietor, and if the work be a printed literary, musical, ordramatic work, the notice shall include also the year in which the copyright w assecured by publication." Siegel, 542 F.Supp .2d at 111 9. A pu blication w ithoutthis required statutory notice of copyright caused the work to fall into the pu blicdomain, precluding forever any su bsequent copyright protect ion of the work. T w i nBooks, 83 F.3d at 116 6; Stewart v. Abend, 495 U.S. 207, 233 (1990).

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Section 24 of the 1909 Act provided authors an initial 28-year term ofcopyright protection and a 28-year renewal term. If the initial copyright termexpired without renewal, the work entered the public domain. MaljackProductions, Inc. v . Goodtimes H om e Video Corp . 964 F.Supp. 1416, 1420 (C.D.Cal. 1997).

The law permits and encourages imitation and copying of works that are inthe public domain. See Com pco C orp. v. Day-Brite Lighting, Inc., 376 U.S. 234,237-38 (1964). "In Compco, the court em phasized that the federal policy found inArt. I, 8, cl. 8 of the Constitution and in implementing federal statutes is to allow*** free access to copy whatever the federal patent and copyright laws leave inthe public domain." Cable Vision, Incv. KUTV, Inc., 335 F.2d, 350 (9th Cir . 1964)(quoting Com pco Corp., 376 U.S. at 237).B. Infringement

Copyright infringement occurs when one of the exclusive rights to a workheld by a copyright owner is violated, giving the owner the right to sue forinfringement. 17 U.S.C. 501. To establish copyright infringement, a plaintiffmust prove ownership of a valid copyright and that the defendant copied originalelements of plaintiffs copyrighted work. Taylor Corp. v. Four Seasons Greetings,LLC, 403 F.3d 958, 962-63 (8th Cir. 2005).

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Here, Warner Bros. cannot establish cop yright protection for the p ublicitym aterials used by A VELA, because all of the m aterials are in the pu blic domain.As su ch, Warner Bros. copyright claim fails as a matter of law. Warner Bros.alleged ownersh ip of copyrights to the motion picture s is irrelevant, becauseAVELA has not copied them or any port ions from them . In any event, WarnerBros. has not established through admissible evidence its ownersh ip of the m otionpictures, as discussed infra in section G. For this sep arate and additional reason,Warner Bros. copyright claim is w ithout me rit.C. All of the Public ity Materials Used by A VELA are in the Pu blic Dom ain

AVELA h as licensed certain images derived from p hoto stills that weretaken prior to, or during the filming of"The Wizard of Oz," some of wh ich, asreferenced above, are num bered with the prefix "1060." (App. 834 -873 .)Although cop yrights were registered for 287 of these im ages in 1939 (prior to therelease and registration of the film), none w as renewe d. (App. 800-8 20, 143 , 153.)Under the 19 09 Act, the initial copyright term for each expired in 1967 , and all ofthe ph otos fell into the public domain.

AVELA h as also used and licensed images derived from m ovie posters,lobby cards, advertisements and still photos w hich w ere pu blished before therelease of"The Wizard of Oz" and "Gone With The Wind" and witho ut therequisite copyright notice under the 1909 Act. (App . 152-1 56, 141,143 ,875-87 9,



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800-820.) Images from "Tom and Jerrry" animation posters have also beenlicensed by AVELA, and these posters were either published without copyrightnotice or were not renewed. (App. 919-935, 170-171,146-147.)

Warner Bros. argued at summary judgment that these publicity materialsmay still be protected under the 1909 Act because their distribution without therequisite copyright notice only constituted a "limited publication." Warner Bros. iswrong. A limited publication occurs when a particular work is distributed to aselect group of individuals, such as a restricted showing of a film to a limitednumber of critics, or shopping a manuscript to a limited number of potentialpublishers. In sharp contrast, the publicity materials in this case were used topublicize the upcoming films to the general public, and there were no limits placedon their distribution. Hence, upon their publication without the required noticeunder Section 19 of the 1909 Act, the materials were injected irretrievably into thepublic domain.

This precise issue was considered in Milton H . Greene Archives, Inc. v. BP ICom m unications, Inc., 378 F.Supp.2d 1189, 1197-1200 (C.D. Cal. 2005), wherethe court addressed whether the distribution of publicity materials used to promotea film constituted a limited or general publication. The court set forth theapplicable standard, mandating that all three of the following elements must be metbefore a court may consider a publication to be limited: "A publication is limited

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only where the work was distributed (1) to a definitely selected group, and (2) for alimited purpose, (3) without the right of further reproduction, distribution or sale.(citations) All three of the enumerated elements [must] exist or else thedistribution may not be deemed limited and the copyright will not be valid." Id. at1198. (internal quotes and citations omitted.)

In Milton H. Greene Archives, the distribution of the publicity materialswere found to constitute a general, and not limited publication because, as here, thematerials were used to promote the films and were included in campaign books,which were sent to the theaters, newspapers and magazines. Milton H. GreeneArchives, 378 F.Supp.2d at 1198-99. (See App. 154-160, 251-299, 301-302, 303-339, 340-508, 554-632.) As an example, "The Wizard of Oz" publicity materialsreflect that distribution reached audiences as high as 91 million people - "91,912,853 -ACTUAL PUBLICATION CIRCULATION." (App. 1079.) Copies of thematerials used by AVELA were distributed to the general public in the form oflobby cards, and other materials were freely posted in other public areas. (App.153-158, 163, 181,188, 996-999, 1004-1007, 301-303,340.) Warner Bros.cannot meet the first required element to establish a limited publication.

Neither can Warner Bros. establish the third required element, because thepublicity materials were concededly distributed so that they could be sent to

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newspapers, magazines and other publications to promote the films. (App. 301-303,996-997, 252-299, 157-158.) As reported by the Library of Congress:

As part of its $250,000 promotional campaign, MGM ran full-page,color advertisements in the Sunday comic section of newspapers togenerate excitement in advance of the opening of The Wizard of Oz ...By placing the ads in an estimated twenty-nine newspapers in twenty-one large cities in August 1939, publicists reached an audience in themillions. In addition to the newspaper campaign, MGM placedadvertisements in large-circulation national magazines. (App. 722.)

No copyright protection was placed on these materials because the studioswanted them to be readily distributed to the public. (App. 301-303,340.) Further,the studios did not use actual images from the films, because such distributionwithout notice would effect the loss of copyright protection for those portions ofthe films.

Warner Bros. has further argued that under certain language in an NSSagreement (National Screen Agreement), the publication is rendered limitedbecause some of the materials were to be distributed to the theaters for lease onlyand then returned. This exact argument was rejected by the court in Milton H.Greene Ar chives, in which the following language appeared on the distributedmaterials: "Licensed for display only in connection with the exhibition of thispicture at your theatre. Must be returned immediately thereafter." Milton H.Greene Archives, 378 F.Supp.2d at 1199. The court determined that a generalpublication occurred "even if restrictions are placed upon the use of the work." Id.



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at n. 10. (emp hasis in original). The forfeiture resulting from p ublication occurs asa m atter of law regardless of the authors intent in distributing the work. Id .

The case of Siegel v. Warner B ros. Entrn t, sup ra, 542 F.Supp.2d 1098,wh ich was decided during the p arties respective sum m ary judgment briefing, isdirectly on point. In Siegel, the court noted that a publicity p oster for a Superm ancom ic book that was distributed prior to the release of the actual comic book wouldhave fallen into the p ublic domain if it was released withou t the requisite copyrightnotice: If published w ithout copyrigh t notice "then any of the cop yrightablem aterial in the w orks (including the prom otional announcem ents) was neversecu red ... but instead was injected into the pu blic domain." Id. at 1119.D. Substan tial Similarity Between the Licensed Prod ucts and the Films IsIrrelevant. The Publicity Materials are not Derivative Work s.

Warner Bros. has argued that there is copyright infringem ent because theworks created by AVELA and its licensees are substantially similar to the m otionpictures and scenes therein. This argument m isses the p oint. The p ublici tym aterials were c reated and published p rior to the resp ective films. AVELA, andthe rest of the pu blic, are free to copy the p ublicity materials because they are inthe pu blic domain. Because the p roducts were c reated from public domainpu blicity m aterials, the sim ilari ties w ith the fi lms are irrelevant. Milton H. GreeneArchives, 378 F.Supp.2d at 1197.

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In a futile effort to avoid the public domain status of the publicity materialsused by AVELA, Warner Bros. argued to the District Court that the publicitymaterials are somehow derivative works of the films, and that therefore only thenew matter contained in the publicity material would have fallen into the publicdomain. It is true that if a derivative work enters the public domain, the mattercontained therein which derives from a work still covered by statutory copyright isnot dedicated to the public. Russell v. Price, 612 F.2d 1123, 1128 (9th Cir. 1979).Here, of course, the publicity materials were published months before thecompletion and release of the films, and were separately published by the studiosfor the express purpose of promoting the films. They are not derivative of thefilms.

The case of Lamb v. Starks, 949 F.Supp. 753,755 (N.D. Cal. 1996), cited byWarner Bros. in support of its contention that the publicity materials are derivativeworks, actually further demonstrates that the materials are not derivative works. InLamb, the court determined that a movie trailer was a derivative work of theunderlying film because the trailer contained actual scenes from the film and thefilm was published before the trailer. Lam b v. Starks, 949 F.Supp. at 755-56.Here, not a single scene from the film was ever used in the publicity materials, andthe publicity materials were published months before the completion and release ofthe films.

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In any ev ent, the extent to which the ch aracters are entitled to copyrightprotection is irrelevant because AVELA did nothing more th an copy the p ublicdomain m aterials. Even thou gh the District Court reaches an erroneousconclusion, the District Court illustrates the distinction between cop ying thepu blicity materials and using the "idiosyncracies" of protectable character traits:

[AVELAs ] argume nt that, even if the characters would beentitled to cop yright protection, the characters are no longerprotected because of the publication of the ch aracters in thepublic domain materials caused them to become p ublic domainmaterial as well, is unavailing. The p ublicity materials withpictures of the actors in costum e are just that- pictures ofactors. It is necessarily through the films that the charactersbecom e copyrigh table. But for the films, these ch aracterswou ld remain literary figures withou t the particularidiosyncracies that have established each c haracter as a uniqueicon in Am erican culture ... ... Notw ithstanding [AVEL A]ha[s] copied only the pu blicity materials, such actions violatethe com ponent parts of [Warner Bros.] copyrights in thefilms.

(Copyright Order, pp. 18-19) (emphasis in original)As exp ressly recognized by the District Court, the evidence is that AVELA

copied only the publicity materials, not from the films. As discussed at lengthabove, copying public domain material is perfectly lawful. The images used byAVELA do not embody the "idiosyncracies in the portrayal of the characters" orany other traits which according to the District Court constitute the copyrightablefeatures of the film characters which do not exist in the publicity materialsthemselves. AVELAs works are, to use the District Courts language, "just ...

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develop this work in new ways. This is because anyone may use material found inthe public domain." Pannonia Farms, 2004 WL 1 27684 2, at *9 (cit ing Silverman,870 F.2d at 50) (emphasis in original).

AVELA is not limited to making posters from the publicity materials. Thelaw recognizes that AVELA is free to develop the public domain materials in newways, and AVELA has done exactly that.G. Wa rner Bros . Has Fai led to Establ ish Cop yr ight Ownership of theFilms

As set for th above, Warner Bros. must p rove ow nership of copyrightto prevail on its infringement claim. Taylor Corp . 403 F.3d at 962-63.Warner Bros. claims ownership of the relevant copyrights in and to the filmsby "chain of title." Since it is neither the author nor creator of the films, it isWarner Bros. burden to prove its chain of title through the original copyrightclaimant. Religious Technology Ctr. v. Neteom On-Line Com m . Servs, Inc., 923F.Supp. 1231, 1241 (N.D. Cal. 1995).

Copyright transfers are invalid unless they are in writing. 17 U.S.C. 204(a) ("A transfer of copyright ownership, other than by operation of law, is notvalid unless an instrument of conveyance, or a note or memorandum of thetransfer, is in writing and signed by the owner of the rights conveyed or suchowners duly authorized agent.") It is well-settled, of course, that the evidencepresented on summary judgment must be admissible. Fed. R. Civ. P. 56(e)(1).

3OAppellate Case: 10-1743 Page: 38 Date Filed: 07/23/2010 Entry ID: 3686762


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Warner Bros. "evidence" in support of its chain of title theory is entirelybased on the statements of its legal counsel, Katherine Chilton ("Ms. Chilton").Warner Bros. presented no written copyright assignments or any otherdocumentary evidence on summary judgment to support its chain of title theory.Warner Bros. failed to present admissible evidence establishing its ownership ofthe copyrights.

Ms. Chilton states that Loews registered "The Wizard of Oz" copyright in1939, and that MGM renewed the copyright in 1966. (App. 107.) For "Gone WithThe Wind," Ms. Chilton avers that Selznick purchased the rights from MargaretMitchell, that Selznick recognized in a 1938 agreement that it and Loews werejointly granted the copyright to the film, and that Selznick registered the copyrightin 1939. According to Ms. Chilton, Selznick thereafter assigned its copyright toLoews and itself. In 1961, Mitchells beneficiaries and MGM entered into anagreement recognizing MGMs copyright ownership in the film, and in 1967MGM renewed the copyright. Yet another agreement referenced by Ms. Chiltonfrom 1990 purportedly confirms TECs ownership of certain rights to Mitchellsnovel. (App. 108-109.)

According to Ms. Chilton, Loews changed its name to MGM in 1960, andin 1980, MGM assigned its copyrights in the film to Filmco. Thereafter, accordingto Ms. Chilton, several more name changes and/or mergers involving corporate

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restructuring occurred, culminating w ith TECs purported ownership of the films.(App. 111-11 2.)

Warner Bros. failed to attach or submit any of the documents referenced byMs. Chilton, including any of the purported assignments of copyright interests.Instead, Ms. Chilton simply stated in her declaration that she was the VicePresident and Senior Litigation Counsel for Warner Bros., and that the informationforming the basis of her statements "is derived from corporate documents, andother materials that I have reviewed ..." (App. 107.)

Naturally, AVELA objected to this "evidence" as purportedly establishingthe requisite chain of title. In this regard, AVELA stated:

"[Warner Bros.] relies on the Declaration of its present day inhouse lawyer Ms. Chilton who does not attach any documentsor authenticate any documents to support her factualallegations. Ms. Chilton does not have personal knowledge ofthe facts to which she purports to attest. Local Rule 7-4.01 (E)requires citation to the record for each asserted uncontestedfact. [Warner Bros] has the burden of proving it has holds (sic)rights to these properties and these bald accusations areinsufficient to meet this standard. The chain of title has notbeen established by [Warner Bros]."

(App. 1106, 1107-1109.)The D istrict Court dispensed w ith the ch ain of title issues in a footnote in its

Copyright O rder, concluding that, inter alia, since Ms. Chilton stated she hadpersonal knowledge of th e facts, they are true and accurate:

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relies upon several assignments of copyright interests, which are invalid unless inwriting. Nevertheless, Warner Bros. failed present a single written assignment onsummary judgment.

The District Courts statement that AVELA failed to present evidencecontroverting Ms. Chiltons statements reflects an improper shifting of the burdenof proof. Warner Bros., as the party claiming ownership of copyright, has theburden to establish ownership through chain of title. Religious Technology Ctr.,923 F. Supp at 1241. AVELA has no burden to disprove Warner Bros.ownership. AVELA may controvert Warner Bros. proof if and when WarnerBros. presents admissible evidence purporting to establish ownership. WarnerBros. failed to meet its burden.

Warner Bros. failed to submit admissible evidence demonstrating itsownership in and to the relevant film copyrights. This failure independentlywarrants dismissal of the copyright infringement claim in this case.II. THE DISTRICT COURT ERRED IN ISSUING A P ERM ANENT

INJUNCTION BECAUSE IT WAS BASED ON THE ERRON EOUSCOP YRIGHT ORDERThe District Courts Injunction Order was based entirely on the Copyright

Order - that is, because the District Court determined that AVELA had infringedWarner Bros. copyrights in the films, Warner Bros. was entitled to an injunctionrestraining AVELA from future infringement.

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The D istrict Court recited its Copyright Order granting sum m ary judgmenton the copyright c laim , cited statutory and case law recognizing that injunctionsregularly and/or presum ptively issue pu rsuant to the Cop yright Act, anddetermined that W arner Bros. was entitled to injunctive relief. (Injunction Order,pp. 1-5.)

As dem onstrated above, the District Court plainly erred in granting summ aryjudgm ent on the cop yright claim . AV ELAs use of the publicity materials does notconstitute infringem ent as a matter of law. Further, Warner Bros. has notestablished ow nership of copyrights in the su bject film s. Since sum m ary judgm enton the copyright claim w as imp roperly granted, the injunction based thereon m ustbe vacated. Mulcahy, 386 F.3d at 850 (8th Cir. 2004).////////////////

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CONCLUSIONFor all the foregoing reasons, the District Courts order granting summary

judgment on Warner Bros. copyright infringement claim must be reversed, and theCourt should direct summary judgment for AVELA. The District Courts ordergranting a permanent injunction based on the copyright order should be vacated.Respectfully submitted,Dated: July 21, 2010 THE BALL LAW FIRM, LLP

By: /s / Doug las D. WinterDOUGLAS D. WINTERAttomeys for Ap pellants



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CERTIFICATE OF COM PLIANCEThe u ndersigned attorney for App ellants certifies as required by Rule

32(a)(7)(C) that Appe llants Opening Brief comp lies with the w ord limitationscontained in Rule 32 (a)(7)(B)(i). The num ber of words u sed in the Ope ning Briefattached here to is shown to be 8,059 by the word count of the w ord processingsystem used in prep aring the O pening Brief. In accordance w ith Eighth Cir. Rule28A(c), the Opening Brief was p repared using Microsoft Word, version 2007 , witha Times New Rom an font in 14 p oint size.Dated: July 21, 2010 THE BALL LAW FIRM, LLP

By: /s / Doug las D. WinterDOUGLAS D. WINTERAttorneys for App ellants



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A D D E N D U MPart 1 - March 20, 2009 Opinion, Memorandum and Order (Copyright Order)Part 2 -March 4, 2010 Opinion, Memorandum and Order (Injunction)



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Case 4:06-cv-00546-HEA Document 249 Filed 03/20/09 Page 1 of 38

UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MISSOURIEASTERN DIVISIONWARNER BROS. ENTERTAINMENT, )INC., et al., ))Plaintiffs, ))vs . ) Case No. 4:06CV546 HEA)DAVE GROSSM AN CREATIONS, INC., )et al., )

)Defendants. ))OPINION, MEMORANDUM AND ORDER

This m atter is before the Court on Plaintiffs Motion for Summ ary Judgme nt,[Doc. No. 183 ] and Defe ndants A.V.E.LA., Inc. d/b/a Art & Vintage Entertainm entLicensing Agency, Art-Nostalgia.corn, Inc., Leo Valencia, and X One X MovieArchive s, Inc.s Motion for Sum m ary Judgm ent, [Doc. 211], and Plaintiffs Motionto Strike Exhibits, to Supp leme nt Motions for Sanctions and for Conference and forApp ointment of Special Master. Opp ositions to the respec tive motions for sum m aryjudgm ent have be en filed. For the re asons set forth below, Plaintiffs Motion forSum m ary Judgm ent is granted in part and denied in part. Defendants Motion forSum mary Judgme nt is denied and Plaintiffs Motion to Strike Exhibits, toSupp leme nt Motions for Sanctions and for Conference and for App ointment of



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Special Master is denied.Facts and Background

Plaintiffs brought this action alleging they are the legal and/or beneficialowners of all copyrights, trademarks, commercial use and merchandising rights,publicity rights and related rights associated with the motion pictures "Gone Withthe Wind" and "Wizard of Oz" and multiple Tom & Jerry animated motionpictures.1 Plaintiffs further allege Defendants have infringed their copyright andtrademark rights, have engaged in unfair competition, and are trading on thegoodwill of Plaintiffs. Defendants counterclaim, alleging libel, injurious falsehood,tortious interference with contract, unfair competition, unlawful restraint of trade,and unlawful tying and exclusive dealing arrangements. Both Plaintiffs andDefendants seek declaratory relief seeking findings that they are, respectively,entitled to copyright and trademark protection.

Both Plaintiffs and Defendants have moved for summary judgment onPlaintiffs claims. Plaintiffs also argue that they are entitled to summary dismissal ofDefendants counterclaims.

Copyrights and Chain of Title

~ For ease of reference, the Court will refer to Wizard of Oz, Gone With The W ind andthe Tom and Jerry films as "the subject films" or the subject motion pictures," unless contextrequires specifically naming them individually.-2-



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Plaintiffs are the ow ners of the cop yrights in the subject films, as establishedthrough the following:2

Turner Entertainment Co.,TEC, is wh olly-owned by W TTA Incorporated,WTTA, w hich is wh olly-owned by Warner Bros. Entertainment, Inc., WBEI.

On Augu st 7, 1939, Loews Incorporated registered its copyright in theWizard of Oz, with the U .S. Copy right Office. The original certificate ofregistration was num bered L9039. On February 25, 1960, Loews changed its nameto MGM . On August 8, 1966 , Metro-Goldwyn-Mayer, Inc., successor in interest toLowe s, renew ed the cop yright in the Wizard of Oz with the Copy right Office. Thatrenewal certificate of copyright registration was numbered R3 9047 4.

On Ju ly 30 , 1936 , Selznick International Pictures, Inc., (Selznick), andMargaret Mitchell Marsh, (Mitchell), entered into an agreement, whereby Selznickpurchased the motion picture rights to Mitchells novel, Gone With The Wind. OnAugust 25, 1938 , Loews and Selznick entered into an agreement w hereby Loew sagreed to loan Clark Gables services to Selznick, provide financing and distribute

2 Defendants argue that Plaintiffs have failed to sufficiently delineate through admissibleevidence the chain of title to the subject films. Plaintiffs have submitted the affidavit of KatherineChilton, Vice President and Senior Litigation Counsel for Warner Bros. Entertainment, Inc., inwhich Ms. Chilton avers that she has personal knowledge of the facts set forth in her affidavit.This personal knowledge was obtained through corporate documents and other materials whichshe reviewed, and which have been produced to Defendants through discovery. Defendants havefailed to present any evidence to controvert the averments contained in the affidavit. The Court,therefore concludes that the facts set forth above are true and accurate.

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Case 4:06-cv-00546-HEA Document 249 Filed 03/20/09 Page4 of 38

the film, in exchange, Selznick agreed to share its rev enue s and pay a distributionfee. The agreem ent also provided that Loews was to copyright Gone With TheWind jointly in its own name and in the nam e of Selznick.

On Decem ber 31, 1939, Selznick registered its copyright for the m otionpicture , Gone With The W ind, with the Cop yright Office. The original certificate ofregistration was numbered L93 90.

On January 31, 1940, Loews requested Selznick com ply with theagreeme nt. Shortly thereat~er, Selznick assigned its copyrigh t in the m otion picture,Gone W ith The W ind, to Loews and itself.

On Decem ber 4, 1961, the Stephens M itchell Trust and MGM, entered intoan agreement,, whereby M itchells beneficiaries confnmed that MG M ownedpicture righ ts to Mitchells novel, Gone W ith The W ind, including all copyrightsand renewals of any such copyrights, as well as m erchandising rights and certainother rights in the nove l itself.

On January 3, 1967 , MGM renew ed the copyright in the m otion picture,Gone W ith The Wind, with the Cop yright Office. The renewal certificate ofcopyright registration was num bered R399224.

On July 1, 1990 , the Stephe ns Mitchell Trust and TEC entered into anotheragreement, whereby the p arties once again confirmed TECs ownership in certain

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rights associated with the novel, Gone With Th e Wind, the similarly titled motionpicture, and all merch andising rights related thereto.

William H anna and Joseph Barbera were em ployed by Loews and MGMfrom May 19,1937 and August 11, 1937, respectively through 1957. Wh ileem ployed by Loe ws and MG M, and on their behalf, Hanna and Barbera created thecharacters, Tom and Jerry and the vast m ajority of the animated m otion pictures inwh ich Tom and Jerry appeared.

Tom and Jerry have appe ared in at least 255 animated shorts and motionpictures. Warner Bros. is the registered copyright holder for each of these films.

On Febru ary 29, 1980 , MGM assigned all of its right, title and interest in itsm otion picture copyrights to Metro-Goldwyn-M ayer Film Co. Film Co. changed itsname to M GM/UA Entertainment Co. on April 12, 1982. On March 25, 1986,MGM /UA changed its name to MG M Entertainme nt Co.

On Augu st 4, 1986, MGM Entertainment m erged into TBS Entertainment Co.TBS Entertainm ent changed its name to TEC on Augus t 8, 1986 . Effective Augu st5, 1986, it was the ow ner of all MGM s mo tion picture library, including allcopyrights and other intellectual property rights associated with the m otion pictures,Wizard of Oz, Gone With The W ind and the entire Tom and Jerry animated motionpicture series.

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On May 1 3, 1994 , Turner Entertainment Grou p, Inc., TEG, was incorporatedas a w holly-owned direct subsidiary of Turner Broadcasting System, Inc., TBS. OnAugu st 1, 1994, all shares of TEC were transferred from TBS to TEG.

Time Warner, Inc acquired TBS, and therefore TEG and TEC in October,1996 . Since 1996 , Tim e Warner and its wholly ow ned and direct and indirectsubsidiaries, including TEC have owned M GMs classic m otion picture library,including all cop yrights, trademarks, other intellectual Prope rty rights, pu blicityrights, and me rchandising rights associated with the m otion pictures at issue here in.

Trademark an d U nfair Com petition ClaimsPlaintiffs have registered num erous w ords and phrases from the s ubject

m otion pictures w ith the U.S. Patent and Trademark O ffice. The first of theregistrations occurred in 1995 and various different registrations continued through2005.

Rights of Publicity ContractsWarner Bros., by contracts dated Septem ber 27, 1935 and June 12, 1939,

owns, holds, and or controls the exclus ive pu blicity rights--the right to use the name,voice, signature photograph, or likeness--to Frances Gum m, professionally knownas Judy Garland in her character as Dorothy from Wizard of Oz.

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Case4:06-cv-00546-HEA Document 249 Filed 03/20/09 Page 7 of 38

Warner Bros., by contracts dated April 11, 193 6, June 4, 193 7, January 3,1938 , March 17 , 1938, and June 12, 193 9, owns, holds, and or controls theexclusive p ublicity rights--the right to use the nam e, voice, signature photograph , orlikeness-- to Ray Bolger in his ch aracter as Scarecrow from Wizard of Oz.

Warner Bros., by contracts dated Novem ber 4, 1938 and June 3 0, 1939,owns, holds, and or controls the exclus ive pu blicity rights--the right to use the name,voice, signature p hotograph, or likeness--to Jack Haley in his character as Tin Manfrom W izard of Oz.

Warner Bros., by contracts dated Septem ber 9, 1939 and May 17 , 1939,owns, holds, and or controls the exclus ive pu blicity rights--the right to use the name,voice, signature p hotograph, or likeness--Bert Lahr in his character as Cow ardlyLion from W izard of Oz.

Warner Bro s., by contracts dated January 16, 193 9, owns, holds, and orcontrols the exclusive p ublicity rights--the right to use the nam e, voice, signatureph otograph, or likeness--to Vivien Leigh in her ch aracter as Scarlett OHara fromGone With The W ind.

Warner Bros., by contracts dated Novem ber 1, 1991 , owns, holds, and orcontrols the exclusive p ublicity rights--the right to use the nam e, voice, signaturephotograph , or likeness--to Clark Gable in his character as Rhett Butler from Gone

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With The Wind. Further, Warner Bros., by contract dated Novem ber 1, 1991 alsoowns, holds and/or controls the exclusive publicity rights--the right to u se the name,voice, signature photograph, or likeness--to Clark Gable the artist.

Defendan ts Acqu isit ion of Movie ItemsDefendant Leo V alencia, (Valencia) is the Pres ident, CEO and sole

shareholder of Defendants A.V.E.L.A., d/b/a Art & Vintage EntertainmentLicensing Agency, (AV ELA), Art-Nostalgia.Com, Inc. (Art Nostalgia) and X OneX, d!b/a X One X Mov ie Archive s, Inc. (X One X).

Since at least 1985, Defendants have be en collecting artwork andphotograph s related to classic movies, television programs, mu sical performancesand other areas of entertainment. Defendants operate a m ultime dia licensing andme rchandising agency. Defendants derive their im ages, which they su bsequentlylicense to others, fiom p ublicity materials3 they contend have fallen into the publicdom ain. They h ave filed copyright registrations in the restored m ovie pu blicityartwork, although there is no ev idence that any Defendant is aware of wh atrestorations have taken place. Defendants sell license rights in their restore dpublicity artwork w hich pe rmits the licensees to use all or part of the artwork.

3 The publicity materials include movie posters, theater lobby displays and card, pre-written press stories, newspaper and magazine advertisements with photographs of actors orscenes, press book s, souvenirs to be sold to mov ie goers and news bulletins.8



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compete with Plaintiffs and are trading on the goodwill of Plaintiffs. Plaintiffs seekdamages and injunctive relief, and seek declaratory relief in the form of acancellation of Defendants registered copyrights. Plaintiffs also seek dismissal of

Defendants seek summary judgment in theirhe cou nter-claims filed by Defendants.favor on Plaintiffs claims.

DiscussionSummary Judgment Standard

The standards for summary judgment are well settled. In determining whethersummary judgment should issue, the Court must view the facts and inferences fromthe facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus.Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Woods v.Daim lerChrysler Corp., 409 F.3d 984, 990 (8th Cir. 2005); Littrell v. City ofKansas City, Mo., 459 F.3d 918, 921 (Sth Cir. 2006). The moving party has theburden to establish both the absence of a genuine issue of material fact and that it isentitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. LibertyLobby, Inc., 477 U.S. 242, 247 (1986); Celotex Corp. v. C atrett , 477 U.S. 317 , 322(1986); Enterprise Bank v. Magna Bank, 92 F.3d 743,747 (8th Cir. 1996). Oncethe moving party has met this burden, the nonmoving party may not rest on theallegations in his pleadings but by affidavit or other evidence must set forth specific

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facts showing that a genuine issue of material fact exists. Fed.R.Civ.P. 56(e);Anderson 477 U.S. at 256; Littrell, 459 F.3d at 921. "The party opposing summaryjudgm ent may not res t on the allegations in its pleadings; it must set forth sp ecificfacts show ing that there is a genuine issu e for trial." United of Omaha Life Ins. Co.v. Honea, 458 F.3d 7 88, 791 (8th Cir.2006) (qu oting Fed.R.Civ.P. 56(e)); "Onlydisputes ov er facts that might affect the ou tcome o f the suit under the gov erning lawwill properly preclude the entry of summ ary judgm ent. Anderson v. Liberty Lobby,Inc., 477 U.S. 242, 248 (1986 )." Hitt v. Harsco Corp., 356 F.3d 920, 923 (8th Cir.200 4). An issue of fact is genuine wh en "a reasonable jury cou ld return a verdict forthe nonm oving party" on the qu estion. Anderson, 477 U.S. at 248; Woods, 409 F.3dat 990. To survive a m otion for sum mary judgm ent, the "nonmoving party m ustsubstantiate his allegations with sufficient probative evidence [that] wou ld perm it afinding in [his] favor based on more than me re sp eculation, conjecture, or fantasy.Wilson v. Intl Bus. M achs. Corp., 62 F.3d 237, 241 (8th Cir. 1995)(quotationomitted)." Putm an v. Unity Health System, 348 F.3d 732, 733 -34 (8th Cir. 2003).A party m ay not merely p oint to unsup ported self-serving allegations, but mu stsubstantiate allegations with sufficient probative evidence that wou ld perm it a findingin the plaintiffs favor. Wilson v. Intl Bu s. Math. Corp., 62 F.3d 237, 241 (8thCir. 1995). "The m ere existence of a scintilla of evidence in sup port of the [party s]

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position will be insufficient; there m ust be evidence on w hich the jury cou ldreasonably fred for the plaintiff." Anderson, 477 U.S. 242 at 252; Davidson &Associates v. Jung 422 F.3d 630, 63 8 (8th Cir. 2005). Summ ary Judgment will begranted w hen, viewing the evidence in the l ight m ost favorable to the nonm ovingparty and giving the nonm oving party the benefit of all reasonable inferences, thereare no genuine issues of material fact and the m oving party is entitled to judgme nt asa matter of law. Sam uels v. Kansas City Mo. Sch. Dist., 437 F.3d 797, 801 (8thCir.2006). "Mere allegations, unsupp orted by spec ific facts or evidence bey ond thenonmoving p artys own conclusions, are insufficient to w ithstand a m otion forsumm ary judgment." Thom as v. Corwin, 483 F.3d 516, 526-7(8th Cir. 2007 ).

Copyright ClaimsA copyright holder has certain exclusive rights to the copy righted work,

including the righ t to reproduce all or any part of the cop yrighted work. 17 U.S.C. 106. One infringes a copyright when h e or sh e violates one of the exclusive rights toa work he ld by a copyright owner, and the ow ner has the right to sue forinfringeme nt. See 17 U .S.C. 501 . To establish its claim for cop yrightinfringement, Plaintiffs are requ ired to prove "owne rship of a valid copy right andcopying of original elements." Taylor Corp. v. Four Seasons Greetings, LLC, 403

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not within the area of the p rotection afforded by the cop yright." Warner Bros.Pictures, Inc. v. Colum bia Broad. Sys., Inc., 216 F.2d 945, 950 (9th Cir.1954),Warner Bros. held that a character could only be granted cop yright pro tection if it"constituted the s tory being told." Id. This is because literary characters are difficultto delineate and m ay be based on nothing more than an unprotected idea that theprotection is to be limited. Id.; see WaltDisney Prods. v. Air Pirates, 581 F.2d 751,755 (9th Cir, 1978 ). Air Pirates, howev er, distinguished c artoon ch aracters fromliterary characters, based on the reasoning that comic book characters have "physicalas well as concep tual qualities, [and are] more likely to contain some uniqueelem ents of expression." Id., 581 F.2d at 755.

Similarly, copyright protection for ch aracters that are esp ecially distinctive,has been rec ognized. See Olson v. Natl Broad. Co., 855 F.2d 1446, 145 2 (9thCir. 1988 ). Olson noted, consistent with Air Pirates, that copyright protection "maybe afforded to characters visually dep icted in a television series or a m ovie;" Olson,855 F.2d at 1452 (citing Silverman v. CB S, Inc., 632 F.Supp. 1344, 1355(S.D.N.Y. 1986)). "Characters that have receive d copyright p rotection havedisplayed consistent, widely identifiable traits." Rice v. Fox Broad. Co., 330 F.3d117 0, 1175 (9th Cir.2003 ) (citing Toho Co., Ltd. v. William M orrow & Co., Inc., 33F. Supp.2d 120 6, 1215 -16 (C.D. Cal. 1998) (recognizing copyright protection for

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Godzilla)); Metro-Goldwyn-Mayer, Inc. v. Am. Honda M otor Corp ., 900 F.Supp.1287 , 1296-97 (C.D.Cal. 1995) (recognizing copyright p rotection for James Bond);Anderson v. Stallone, No. 87-0592, 198 9 WL 206 431 , *7 (C.D.Cal. Apr.25, 1989)(recognizing copyright protection for Rocky Balboa).

With resp ect to the cartoon characters Tom and Jerry, the above analysis endsinquiry. Tom and Jerry h ave p hysical as we ll as conceptual qualities, and containunique elem ents of expression such that they are entitled to copyright protection.

The rem aining characters, i.e., Judy Garland as Dorothy Gale, Ray Bolger asScarecrow, Jack Haley as Tin Man, and Bert Lahr as Cow ardly Lion in Wizard of Ozand Vivian Leigh as Scarlett OHara and Clark Gable as Rhett Butler in Gone W iththe W ind, can be seen as m ore akin to a com ic book character than a literarycharacter based on their distinct characteristics and idiosyncracies in their portrayal ofthe ch aracter. Each character has w idely identifiable traits and is espe cially distinctive. Each h as been extensively developed through the films. Be it Dorothysinherent wisdom coupled with h er M idwestern farm girl innocence, Scarlett OHarasseem ingly ruthless will coupled with he r beauty and charm , Rhett Butlers strengthand endurance and "un-flappability," coupled with his inexplicable devotion toScarlett, or the apparent inconsistencies of Scarecrow , (without a brain vs. wisdomand leader), Tin Man (without a he art vs. comp assion and tendeme ss) and Cowardly

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Lion, (withou t courage vs. bravery and chivalrousness), they are es pec iallydistinctive; they consistently display w idely identifiable traits throughou t the m ovies;they are like no o thers; and they are "th e stor[ies] being told." See Rice, 330 F.3d at1175; Olson, 855 F.2d at 1452. Thus, these ch aracters are entitled to copyrightprotection because of their "ph ysical as well as conce ptual qualities [and] ... uniqueelem ents of expression" Air Pirates, 581 F.2d at 755; Halicki Film s, LLC v.Sanderson Sales and Marketing 547 F.3d 1213 , 1224 -1225 (9th Cir. 2008).

Defendants argument that, even if the ch aracters w ould be e ntitled tocopyright p rotection, the ch aracters are no longer protected because th e pu blication ofthe characters in the p ublic domain materials caused them to become p ublic domainmaterial as well, is unavailing. The pu blicity materials with picture s of the actors incostum e are just that--pictures of actors. It is necessarily through th e films that thecharacters become copyrightable. But for the films, these ch aracters would rem ainliterary figures w ithout the particular idiosyncracies that have e stablished eachcharacter as a unique icon in American culture.

Defe ndants adm ittedly copy the p ublicity materials. Plaintiffs have stated thatthey w ould have no quarrel, except w ith respect to their state law right of publicityclaims, w ith the m ere copy ing of the mov ie artwork. However, Defendants do notme rely copy the m ovie artwork, rather, they plu ck from these pages im ages of

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Plaintiffs copy righted characters such that Defendants im ages are no longerinnocently copied p ublicity ads, but are indeed the characters themse lves, to beem bossed onto any num ber of trinkets, clothing and other collectibles, withinDefendants catalogs. Notwithstanding Defendants have copied only the pu blicitymaterials, such actions violate the com ponent p arts of Plaintiffs copyrights in thefilms.

Trademark an d U nfair Com petition ClaimsDefendants contend that because they only copy those im ages in the public

dom ain Plaintiffs have no trademark pro tection, relying on Dastar Corp. v. TwentiethCentury Fox Film Corp., 539 U.S. 23 (2003). The Suprem e Court held in Dastar,that Section 43(a) [of the Lanham Act] applies o nly to the produce r of tangible goodsthat were offered for sale, not the author of any idea, concept, or com mu nicationembodied in those goods. Id., at 37. The Cou rt further held that once a copyright hasexpired, the right to copy the w ork passes to the public and trademark protection doesnot, in essence, resurrect copying rights.

The righ t to copy, and to copy w ithout attribution, once acopy right has expired, like "the right to make [an article wh osepatent has exp ired]-including the right to make it in precisely theshape it carried when patented-passes to the p ublic." Sears, Roebuck& Co. v. Stiffel Co., 376 U .S. 225,230, 84 S.Ct. 784, 11 L.Ed.2d 661(1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111,121-1 22, 59 S.Ct. 109, 83 L.Ed. 73 (193 8). "In general, unless an

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intellectual prope rty right such as a p atent or copyright protects ani tem, it will be subject to cop ying." TrafFix Devices, Inc. v.Marketing Displays, Inc., 532 U .S. 23, 29, 121 S.Ct. 1255, 149L.Ed.2d 164 (20 01). The rights of a patentee or copy right holder arepart of a "carefully crafted bargain," Bonito Boats, Inc. v. ThunderCraft Boats, Inc., 489 U .S. 141 ,150-15 1,109 S.Ct. 971 , 103 L.Ed.2d118 (1989), under which, once the patent or copyright monopoly hasexpired, the p ublic m ay use the invention or work at will and withoutattribution.

Id. at 33-34 . Defendants reliance, howev er, is m isplaced by virtue of the existingcopyrights in the film s and the com ponent parts thereof, as set forth above.Moreov er, Plaintiffs are see king to enforce their trademarks on tangible goodswh ich em body the characters and scenes from th e films, not the ideas, concepts, orcommunications of films themselves.

Plaintiffs have brou ght this action seeking recovery under the Lanham Act, 15U.S.C. 1114, 11 25(a), 1125(c).4 Plaintiffs urge.sum m ary judgrnent based on

4 These sections provide, in pertinent part:1114. Remedies; infringement; innocent int~ingement by printers and publishers(1) Any person who shall, without the consent of the registrant--

2. (a) use in commerce any reproduction, counterfeit, copy, or colorable imitationof a registered mark in connection with the sale, offering for sale, distribution, oradvertising of any goods or services on or in connection with which such use islikely to cause confusion, or to cause mistake, or to deceive; or(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and applysuch reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints,packages, wrappers, receptacles or advertisements intended to be used in

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commerce upon or in connection with the sale, offering for sale, distribution, oradvertising of goods or services on or in connection with which such use is likelyto cause confusion, or to cause m istake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Undersubsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless theacts have been committed with knowledge that such imitation is intended to be used to causeconfusion, or to cause mistake, or to deceive .As used in this paragraph, the term "any person" includes the United

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