The John C. Lifland American Inn of Court
Idol Worship
This year's fact pattern is based on a copyright dispute over a tattoo.
Asbury Ink
Asbury Ink, Inc. is a tattoo shop in Asbury Park, NJ. It has been in business for over 20 years. It has a single location, right on the Boardwalk. It's owner, Tom Wilcox, has been interested in Native American and Pacific Islander artwork, and specializes in tribal tattoos. One of his favorite tattoos, was designed after a trip to the Easter Islands. Tom was fascinated by the swirls in the petroglyphs and the deep blank eyes of the large heads. He designed a tattoo combining an eye, a long swirl, and an arrow:
"Arrow Eye" Tattoo
1489076_1.doc On advice by Tom's brother-in-law (a cracker-jack patent attorney), each year Tom collects his new tattoos and sends them down to the Copyright Office as a "compilation." In 1992, Tom did this for 20 works, one of which was the above "Arrow Eye" Tattoo. The Copyright Office registered the compilation as VA-7875-032.
Guitar Joey
A few years ago, an aspiring young musician, Joey Mansfield, stumbled into the Asbury Ink store after having a few too many beers on the Boardwalk. Joey had just turned 18, and announced that he wanted a tattoo. He pointed at the Arrow Eye and said "Dat one!" Noticing that the kid had one-too-many, Tom told him he should probably sleep on it, but Joey insisted. Joey did ask that Tom change one thing on the tattoo, and make the arrow shape into a guitar handle.
Tom asked, "What kind of guitar do you want?" Joey sketched out the shape of a guitar head on the wax-paper sheet of the tattoo chair. Tom agreed to make that change, and sketched out the following tattoo in pen on Joey's arm:
"Guitar Eye" Tattoo
Joey looked at his arm and said, "this is exactly what I want." He then signed the standard tattoo release form and chugged the remaining beer he was holding. (Exhibit A.) Tom proceeded to "ink" Joey.
A few years passed and Joey had the opportunity to audition for American Idol (a New York company, owned by Fox Entertainment). At the audition, Joey signed the standard 19-page Talent Release form for Idol contestants. (Exhibit B.) Miraculously, Joey made it to the finals, more on his boyish charm than his guitar playing. His repeated flashing of the Guitar Eye Tattoo didn't hurt either. In fact, his fans became so enamored by the tattoo, that they started to draw the tattoo on their own arms.
Over the course of the season, Guitar Eye became something of a fad. Joey's fans started a Facebook page @GuitarEyeGuy and downloaded YouTube videos each time Joey was on. American Idol saw an opportunity to extend its brand and decided to sell stick-on tattoos, which they dubbed "The American Idol Guitar Eye." American Idol contracted with a Chinese sticker manufacture, Stick-On-You, Inc. to make the tattoos. The stick-ons cost $1.00 to make and sold for $9.99, plus $2.00 shipping and handling. The stick-ons sold like proverbial hotcakes. In the first month, American Idol sold 250,000 units.1
The Fun Begins
On this Labor Day, Tom Wilcox was walking down the Asbury Park Boardwalk in front of his store when he saw two 13 year old girls with tattoos that looked like his Arrow Eye tattoo. Tom knew he could not have done them himself because he would never tattoo children. It violated his code of tattooing conduct. (And, it is illegal in New Jersey to tattoo children without parental consents.) So, Tom walked over to the girls and asked where they got the tattoos. The girls looked at him and laughed. "These are not tattoos," they said, "they are stick-ons from American Idol!" Tom immediately ran to his store, went to the American Idol site, and saw his tattoo advertised on the first page of the merchandise section.
Tom called his friend at the Asbury Park Press, Jane Edelman, and asked if she would like to run the story. She said it would be a great human interest piece, and the tale of the Guitar Eye Tattoo ran the next day.
1 American Idol has a policy of checking for clearance of intellectual property issues prior to the show airing. For example, American Idol does not allow contestants to wear shirts with team logos, nor shirts with brand identification such as the Izod alligator or the Nike swoosh. On one occasion, a contestant who did not get through the preliminary competition, had a tattoo on his arm that said "Fitch." One of the Idol handlers asked him to put a bandage over the tattoo because he thought "Fitch" referred to Abercrombie and Fitch. Although the contestant put a bandage over the tattoo, Fitch was actually a departed pet of the contestant.
3 Exhibit A Exhibit B
19 Group “American Idol” Contestant Agreement
The following are excerpts from a 14-page contract for "American Idol" contestants. This contract, with producer Simon Fuller’s 19 Group and affiliated companies, was presented to a prospective contestant on a take-it-or-leave-it basis who was given a few hours to sign or decline.1
1. I hereby consent to Producer's filming, taping and/or recording of me for use in and in connection with the Series ... I acknowledge and agree that Producer will be the sole and exclusive owner of all rights and material filmed, taped, and/or recorded pursuant to this Agreement.
... I hereby grant to Producer the unconditional right throughout the universe in perpetuity to use, simulate or portray (and to authorize others to do so) or to refrain from using, simulating or portraying, my name, likeness (whether photographic or otherwise), voice, singing voice, personality, personal identification or personal experiences, my life story, biographical data, incidents, situations and events which heretofore occurred or hereafter occur, including without limitation the right to use, or to authorize others to use any of the foregoing in or in connection with the Series ...
... I understand that, in and in connection with the Series, I may reveal and/or relate, and other parties ... may reveal and/or relate information about me of a personal, private, intimate, surprising, defamatory, disparaging, embarrassing or unfavorable nature, that may be factual and/or fictional.
[Producer’s recordings of any and all behavior of the contestant "in and in connection with the series" and the contestant's likeness, voice and any or all biographical material may be exploited by 19 Group forever and "throughout the universe."]
2. Confidentiality/Disclosures: Any and all information disclosed to or obtained by me concerning or relating to the Series, the contestants, the events contained in the Series, the outcome of the Series and/or contest, Producer, the Network and the terms and conditions of this Agreement shall be strictly confidential.
... I acknowledge that any disclosure of such information will constitute a material breach of this Agreement and will cause Producer and the Network substantial and irreparable Injury and will cause substantial damages in excess of Five Million Dollars ($5,000,000), entitling Producer (and/or the Network, as a third party beneficiary of this provision) to, among other things: (a) injunctive or other equitable relief, without posting any bond, to prevent and/or cure any breach or threatened breach of this paragraph by me; (b) recovery or disgorgement of the monies and other consideration, if any, I received in connection with such disclosure; (c) forfeiture of any and all cash and prizes that I may have been entitled to for participating in the Series; and (d) recovery of the Producer's and/or the Network's damages, including but not limited to, lost profits and other consequential damages, to the extent permitted by law, and attorneys' fees and court costs incurred to enforce this paragraph.
1 This document is based on information published on Slate.com.
Page 1 of 2 Exhibit B
5. Future Agreements: Notwithstanding the other provisions of this Section C, I understand and agree that in the event I am one of the final ten (10) contestants in the Competition, I will be required to enter into the following agreements: (a) an agreement with 19 Recordings Ltd. (or an affiliated company) for my exclusive services as a recording artist; (b) an agreement with 19 Merchandising Ltd. for the use of my name, likeness biography in connection with advertising, endorsement, merchandising and sponsorship; and (c) an agreement with 19 Management Ltd. for the management of my career as an artist. I understand and agree that, unless I am the individual selected as the winner of the Competition, such agreements shall become fully effective only at the election of 19 Recordings Ltd., 19 Merchandising Ltd. and/or 19 Management Ltd.
[All the American Idol finalists were required to enter into exclusive options agreements as follows: a record contract with 19 Recordings Ltd.; a contract for advertising, endorsements, sponsorships and merchandising with 19 Merchandising Ltd.; and a management contract with 19 Management Ltd. These contracts become operative and binding for the winner of the “American Idol” contest. For each of the other nine “American Idol” finalists, the contracts become operative if the 19 companies elect to exercise their options.]
6. 'World Idol': I acknowledge and agree that, should I win the Competition and subject to my availability at the time of the Producer's request, I shall participate in a 'World Idol' program where winners/contestants from the 'Pop Idol' and/or 'American Idol' competition in other countries or other versions of the Series shall compete against each other and, provided that I appear on the 'World Idol' program, I agree to accept a total fee of One Thousand Four Hundred Dollars ($1,400.00) in full and final consideration for my appearance in such program and the grant of all rights in relation thereto on the same terms and conditions set out hereunder.
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