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Drag Queen Dolls and Scenes a Faire

By Senior Copyright Counsel, Google Inc.

Judge Susan Illston, from the Northern District of California, recently issued an opinion in a case involving alleged infringement of drag queen dolls, Montwillo v. Tull, 2008 WL 2264574 (N.D. Cal. June 2, 2008)(Docket No. No. C 07-3947 SI.). The parties cross-moved for summary judgment; both motions were denied, so this is not the last we have heard of the matter.

Judge Illston gives the following background, which I have severely edited to include only the most relevant information:

This case arises out of a failed business venture between plaintiff Paul Montwillo and defendant William Tull to create and distribute dolls designed by Montwillo. As background, several years prior to the business venture, Montwillo made several ?drag queen? and ?Trailer Trash Barbie? dolls by dressing Barbie dolls in wigs, applying make-up, and changing their outfits. In 1996, Montwillo began selling his dolls at a store owned by Tull in San Francisco, In-Jean-ious Active. Soon thereafter, Mattel, Inc., the producer of Barbie Doll, sued Montwillo and In-Jean-ious Active for trademark and copyright infringement. Montwillo and In-Jean-ious Active settled the lawsuit with Mattel, Inc. by agreeing, inter alia, to refrain from selling any dolls based on Mattel's Barbie line; imitating or copying or using the Barbie line packaging; imitating or copying the body shape or facial features of ?Barbie? and ?Ken.?

In July 1997, Tull and Montwillo entered into a partnership to create and distribute dolls that did not violate the terms of the Mattel settlement. ? The Partnership Agreement, signed July 16, 1997, states that Tull ?will be primarily responsible for the financial investment of startup costs, and upkeep until the business shows a profit. Mr. Tull is also responsible for bookkeeping, sales, and distribution.? With respect to Montwillo, the Partnership Agreement provides that he ?will be primarily responsible for Art Direction, Design, and Advertising of the product line. This would include such things as: corporate identification, product design, package design, web site design and maintenance, and print advertising.?

In the fall of 1998, Tull and Montwillo converted the partnership into a limited liability company, and registered it with the State of California as Arsenic & Apple Pie, L.L.C. (?AAP?).

During the years of the Arsenic and Apple Pie Partnership and later during the Arsenic and Apple Pie LLC,FN2 Montwillo designed, developed and helped market the first three Trailer Trash Doll models: ?Trailer Trash Doll,? ?Blonde Drag Queen,? and ?Redhead Drag Queen.? FN3 Montwillo also developed a pre-production prototype of the ?Talking Pregnant Trailer Trash Doll.? It is undisputed that all dolls were manufactured, developed, financed and distributed by Arsenic. It is also undisputed that Montwillo was actively involved in the design and artwork of the cardboard package in which each doll was sold; on the back of each box, there was a copyright notice on behalf of Arsenic & Apple Pie ?AAP was not profitable; from its inception in 1999 until its dissolution in 2004, AAP lost money every year except in 2000, when it showed a profit of $6,140.

?
Montwillo filed suit against Tull, Gibby, and Gibby Novelties LLC on August 1, 2007, alleging a claim of copyright infringement. Tull counterclaimed for conversion, breach of contract, and breach of covenant of good faith and fair dealing.
time-barred.

Defendants unsuccessfully argued that the dolls were work for hire for AAP and therefore that Montwillo had no ownership in them. Plaintiff denied the works were for hire. As support, he cited defendant's response to a Request for Admission admitting that ?Paul Montwillo was never an employee of Arsenic & Apple Pie, LLC.? In addressing this issue, defendants primarily relied on Judge Miriam Cedarbaum?s thorough opinion in Martha Graham School & Dance Foundation v. Martha Graham Center of Contemporary Dance, 224 F.Supp.2d 567 (S.D.N.Y.2002. some of the works involved in that case were governed by the very different work for hire provisions and law under the 1909 Act though, and moreover, as to a number of works in question the opinion was vacated on appeal, 380 F.3d 624 (2d Cir. 2004), something not cited in the opinion, which in any event simply concluded that plaintiff was not an employee.

Next up was the protectibility of the dolls, which defendant challenged as merely scènes à faire, contending that ?because plaintiff used stereotypical, genre elements of ?trailer trash? and ?drag queens,? the dolls lack originality. Without any explanation, of such elements, the court merely concluded that the works were original. The foundation of the scenes a faire doctrine is the classic dramatic setup: A scene occurs; from that scene the audience knows that, inevitably, another scene will occur in which the problem created in the first scene will be confronted. How the problem is confronted is a question of art, of expression: That the problem will be confronted is the ?inevitability? spoken of in the scenes a faire ?doctrine.? Judge Leon Yankwich, who popularized the application of the concept to copyright law in Schwarz v. Universal Pictures Co., 85 F. Supp. 270, 275 (S.D. Cal. 1945)., modestly suggested that the fact of the confrontation alone could not form the basis for a finding of substantial similarity. The fact of the confrontation might, in a particular case, also include material that inheres in any action or depiction of the scenes a faire?that is, stock or commonplace resolutions of the problem confronted (e.g., traditional happy Hollywood endings, as where a driven, hardworking man, through a medical problem or other deus ex machina, comes to realize the primacy of love and family over work, thereby also revealing himself to be a good guy after all). From this humble beginning, some courts have erroneously expanded Judge Yankwich's observations into a full-fledged ?doctrine? functioning more as a doctrine of noncopyrightability. Although some panels from some circuits have occasionally spoken of scenes a faire as unprotectible, these discussions occur usually within the substantial similarity analysis. Courts, appreciating that works of fiction are unified wholes, have employed scenes a faire at the substantial similarity, not the copyrightability, stage, since there will typically be expression in the treatment of stock scenes, and it is the rare work that consists entirely of scenes a faire. This was the position taken by the Seventh Circuit per Judge Easterbrook in Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909 (7th Cir. 1996). See also Judge Posner?s opinions in Bucklew v. Hawkins, Ash, Baptie & Co., LLP., 329 F.3d 923, 929 (7th Cir. 2003) and in Gaiman v. McFarlane, 360 F.3d 644, 659?660 (7th Cir. 2004). The Ninth Circuit now clearly analyzes scenes a faire under the infringement analysis see Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003), although past panels have been confused (no, not in the Ninth Circuit!!).

Full post as published by The Patry Copyright Blog on June 09, 2008 (boomark / email).