The Anchor Plate : Intellectual Property Lawyers & Attorneys : BrickHouse Law Group : Open-Price Lawyering, Hourly Billing : St. Louis, Missouri

The two main ways in which IP law protects characters are copyright and trademark.

• Each of the works in which Kermit is depicted is protected by copyright. And, when a character is sufficiently defined, courts have recognized that copyright law may protect a character from unauthorized copying.
• A character may also be protected trademark. If a character is sufficiently distinct, it may serve as a symbol to designate the source or origin of goods or services. This happens most often, but not exclusively in the context of merchandising.

As a trademark, Kermit became a symbol designating Jim Henson and his companies as the source for all things Kermit related. At first, it was for Kermit puppets. It grew to include all merchandising emblazoned with Kermit. And eventually, Kermit's fame outstripped that of his creator such that Kermit became the trademark for all things Henson. 

With Jim Henson's death, Kermit and Henson's other intellectual property passed to his family. They sold Kermit, bought him back, and sold him again. As Sharon Armstrong pointed out in a post on the Duets Blog, Kermit is now owned by The Muppets Studio, LLC which is a wholly owned subsidiary of The Walt Disney Company. 

With an established and valuable character, it becomes a challenge to protect the character. Trademark infringement or dilution actions are one possible way to do this. But, the most successful characters become so famous that, like celebrities, They are natural targets for social commentary.

Such is the case with Kermit the Frog. In 2007, Sad Kermit became an Internet phenomenon. In his music video debut, Sad Kermit covers the Nine Inch Nails's song Hurt in the style of Johnny Cash. The normally family friendly Kermit takes viewers into a dark, destructive spiral of self-abuse. 

Initially, the "Hurt" video was taken down from YouTube because of a copyright claim from the Jim Henson Company, but it is back. Although the creators of Sad Kermit abandoned their federal trademark application, the character endures and he has his own website with additional songs and videos.

Keeping the focus on trademark for the time being, Mattel v. MCA Records provides the analytical framework that most courts would apply to this situation. What is notable, and what Pete pointed out in his post on the The North Face/The South Butt dispute, is that - like with real celebrities and the right of publicity - there is no clearly defined parody defense to trademark infringement. Changes to the federal anti-dilution statute in 2006 (codified at 15 USCA 1125) identified a number of defenses that recognize First Amendment rights to use another person's mark in certain circumstances. Specifically:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

If The Muppets Studios/Disney took legal action against the operators of the Sad Kermit website, Sad Kermit's creator's might ave a difficult time arguing that using Sad Kermit as the title for the website was any use "other than as a designation of source for the person's own goods or services." Still, under Judge Kozinski's analysis in Mattel, The Muppet Studios might have a difficult time establishing that Sad Kermit was "commercial."

It appears that Sad Kermit's creators, by abandoning their application for a federal trademark registration, and The Muppet Studios, by not filing suit, have decided to follow Judge Kozinski's last bit of advice to the Mattel litigants, "to chill." 

Perhaps The Muppet Studios recognize that Jim Henson's Kermit oversaw an extremely popular show on which music video parodies of celebrities were a mainstay. Maybe Kermit simply told them not to sue. Regardless, with the introduction of a new series of Muppet music videos, The Muppet Studios appear willing to let the public decide whose Muppet is more loved by the public. You be the judge. The Muppets perform Bohemian Rhapsody here.

Unlike copyright, which protects particular expressions of ideas (artistic works), the right of publicity protects a celebrity's right to control the fame that they build in their name and likeness (identity). A right of publicity claim exists for:

• use a person's identity,
• without the person's consent,
• with an intent to obtain a commercial advantage.

While Heavy Ink may have had a good argument that it did not intend to obtain a commercial advantage because it did not know who Ms. Munn was, that argument is slipping away with the increasing number of posts on its site that proclaim what a great marketing opportunity has been created by Heavy Ink's public response.

Regardless, that was not the reason for its strongly worded response. Heavy Ink refused because:

"it is clear that [Ms. Munn] is a public figure. As a public figure, the use of her likeness meets the tests for the parody copyright exception set forth in both Campbell v. Acuff -Rose Music, Inc. and the more recent Suntrust v. Houghton Mifflin."

While these two cases do address parody defenses to copyright infringement claims Campbell - 2 Live Crew's "cover" of Roy Orbison's Pretty Woman, and Suntrust - Alice Randall's The Wind Done Gone perspective shift on Margaret Mitchell's Gone With The Wind), they do not create parody defenses to right of publicity claims.

There is no absolute defense to a right of publicity claim based upon parody. Instead, parody is part of the general defense based upon First Amendment free-speech rights. And,even though the First Amendment is part of the U.S. Constitution, the First Amendment defense to right of publicity claims is analyzed in at least four different ways depending upon where the suit is brought.

• the "transformative use" test, e.g., Winter v. DC Comics (over the Winter brothers' complaints about the Jonah Hex comic
• the "relatedness" test, e.g., Parks v. La Face Records (for Outkast's song titled Rosa Parks)
• the "actual malice" test, e.g., Hoffman v. Capital Cities/ABC (when Hoffman's Tootsie character appeared in a Los Angeles Magazine fashion spread)
• the "predominant purpose" test, e.g., Doe v. TCI Cablevision (or Tony Twist v. Todd McFarlane disputing a character's name in Spawn)

It should also be noted that it is not clear that Celebrity Showdown would be considered a parody. As the Heavy Ink website describes the comic:

Olivia Munn conquers the world in this hilarious spoof! Hollywood's hottest geek girl, Olivia Munn, hosts G4's Attack of the Show, but while at comic con, she is attacked by a swarm of fans. Unable to escape, her gamma-irradiated cells explode and unleash the fury of The 50-Foot Womunn. It's the showdown of the century! Geeks vs Munn! Let's get ready to rumble!!

We'll have to wait for the comic's April release to see if it offers any commentary about Ms. Munn, or simply places her in a fantasy setting. In Dr. Seuss Enterprises v. Penguin Books USA, the Ninth Circuit held that The Cat NOT in the Hat was not a parody and infringed Seuss copyrights and trademarks because the Seuss-like stanzas about the O.J. Simpson case ("One knife?/Two knife?/Red knife/Dead wife") "have no critical bearing on the substance or style of The Cat in the Hat. [the author and publisher] merely use the Cat’s stove-pipe hat, the narrator (Dr. Juice), and the title (The Cat NOT in the Hat!) to get attention or maybe even to avoid the drudgery in working up something fresh." 

Still, in most states the First Amendment would protect a comic-book creator in the right of publicity context based upon the First Amendment if the work itself is sufficiently transformative.

Not so in Missouri. A crafty, plaintiff's attorney would purchase the comic on-line and have it shipped to a St. Louis address to obtain jurisdiction and take advantage of the "predominant purpose" test that lets a jury weigh the commercial value of a celebrity's name against the artistic value. At the same time, a wise purveyor of comics would block its website's sales into Missouri.

Perhaps more interesting is why Ms. Munn's attorneys would be going after this particular comic when a plaintiff's attorney would find a treasure trove of other opportunities in publications from Sinful Comics (absolutely NSFW, may find offensive). In particular, you would think that instead of going after the more mainstream publication by Antarctic Press, Ms. Munn would be more concerned about her depiction and sale in this adult oriented comic (partial image below, full image definitely NSFW). That is unless Ms. Munn has a licensing agreement with Sinful Comics.

Regardless, this will be a very interesting situation to watch develop.