Law School Case Brief
Don Post Studios, Inc. v. Cinema Secrets, Inc. - 24 F. Supp. 2d 311
To prove copyright infringement in violation of § 106 of the Copyright Act, a plaintiff must prove (1) ownership of a valid copyright; and (2) copying by the alleged infringer. A defendant may rebut the presumed validity of a plaintiff's copyright registration by showing that the subject of the copyright lacks originality. A lack of originality can be shown through either direct proof of copying or by showing that defendant had access to the registered work and that the allegedly infringing work is substantially similar to the registered work.
This case involves a dispute over the origin and authenticity of competing masks bearing a resemblance to the one worn by the character Michael Myers in the 1978 movie "Halloween." At the request of the filmmakers, plaintiff Don Post Studios created and delivered the prototype of the mask worn by the Michael Myers character; however, Don Post Studios did not claim or reserve any rights to the mask. In 1986, Don Post Studios marketed its "Don Post the Mask" ("DPTM"), which bore a strong resemblance to the mask worn by the character. Don Post Studios did not obtain a copyright registration in DPTM until 1998. In 1999, defendant Cinema Secrets obtained a non-exclusive license from the Halloween filmmaker to begin producing a "Michael Myers" mask. Later in 1999, Don Post Studios filed the instant lawsuit, alleging that Cinema Secrets' Michael Myers mask was a copy of DPTM. Plaintiff contended that defendant's actions constituted copyright and trade dress infringement, in violation of § 106 of the Copyright Act and § 43(a) of the Lanham Act. Defendant argued that even if plaintiff is found to hold a valid copyright to DPTM, defendant's conduct does not constitute copyright infringement because it created its own mask independently of the copyrighted DPTM.
Did plaintiff Don Post Studios, which created and marketed a mask that bore a strong resemblance to the mask worn by the Michael Myers character in the movie Halloween, prove its claims against competing mask maker defendant Cinema Studios for copyright infringement in violation of § 106 of the Copyright Act and trade dress infringement in violation of § 43(a) of the Lanham Act?
The United States District Court sought to determine the ultimate factual issue: who copied which mask from whom and, if so, when did the copying take place. The Court held that defendant Cinema Studios showed that plaintiff Don Post Studios copied DPTM from a prior source. Because DPTM was a copy of the Michael Myers Halloween mask, DPTM's copyright is invalid because it lacked the requisite originality.
Applying the two-part test to prove copyright infringement, the Court found that plaintiff's infringement claim failed for two reasons: (1) plaintiff did not own a valid copyright; and (2) defendant created its mask product independently of plaintiff's DPTM product. Defendant showed plaintiff's lack of originality by providing evidence of direct proof of copying. There was ample evidence that DPTM lacked originality because it was a copy of the original prototype. For example, both the original Michael Myers mask worn by the Halloween movie character and DPTM were derived from the same foam master of the head of William Shatner. Second, even if plaintiff had held a valid copyright, the Court found that the defendant's conduct did not violate the law because Cinema Secret's Michael Myers mask was an independent creation. The Court explained that independent creation is a complete defense to a claim of copyright infringement. For example, defendant's final product was approved for accuracy by the licensing agent for the holder of the Halloween copyright.
Finally, the Court held that plaintiff's trade dress infringement claim failed because DPTM has not acquired secondary meaning within § 43(a) of the Lanham Act; secondary meaning was the first of three elements required to prevail on a claim for trade dress infringement. To prove acquired secondary meaning, a plaintiff must show that in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself. The Court found a lack of any evidence demonstrating that DPTM's features were source-indicative rather than aesthetic.
(For images of the masks, see the full text of the case.)
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