Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1029882
`
`Filing date:
`
`01/20/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92057380
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Jaime Keeling
`
`ADAM DAVIDS
`DAVOLI DAVIDS LLP
`153 WEST 27TH STREET , SUITE 204
`NEW YORK, NY 10001
`UNITED STATES
`adam@adamdavids.com
`647-787-6683
`
`Response to Board Order/Inquiry
`
`Adam Davids
`
`adam@adamdavids.com
`
`/Adam Davids/
`
`01/20/2020
`
`2020-01-20 - Proof of Email Service - Cancellation Petition Supple-
`ment.pdf(490487 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Reg.
`No, 4,334,491
`
`Cancellation No. 92057380
`
`For the Mark: Point Break Live!
`
`Registered May 14, 2013
`
`)
`)
`)
`)
`)
`
`) ) )
`
`)
`)
`
`JAIME KEELING
`Petitioner,
`
`V.
`
`EVE HARS
`Registrant
`
`PROOF OF SERVICE
`
`I am over the age of 18 and not a party to the action above; my business address is 153 West 27th
`Street, Suite 204, New York, New York 10001.
`
`On January 20, 2020, the undersigned hereby certifies that a true and correct copy of the
`foregoing Response to Motion for Suspension was served upon registrant by forwarding said
`copy, via email, to: Eve Hars at newrocktheater@gmail.com.
`
`Executed on January 20, 2020.
`
` Adam Davids Esq.
`
`

`

`1/20/2020
`
`Adam Davids Mail - Point Break Live Trademark - Response to Motion for Suspension
`
`ADAM I I
`
`DAVIDS
`
`Adam Davids<adam@adamdavids.com>
`
`Adam Davids <adam@adamdavids.com>
`To: New Rock Theater Productions <newrocktheater@gmail.com>
`
`Mon, Jan 20, 2020 at 9:58 AM
`
`Dear Ms. Hars,
`
`Please see the attached Response to Motion for Suspension In the Matter of Trademark Reg. No. 4,334,491,
`Cancellation No. 92057380, for the mark: Point Break Live! filed on August 29, 2019.
`
`Point Break Live Trademark - Response to Motion for Suspension
`1 message
`
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`

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`Sincerely,
`
`Adam Davids
`
`Adam Davids
`
`adam@adamdavids.com
`
`Davoli Davids, LLP
`153 West 27th Street, Suite 204
`New York, NY 10001
`Work: 212.225.9380
`
`E 2019-08-29 - PBL Motion for Resumption of Petition.PDF
`384K
`
`https://mail.google.com/mai|/u/0?ik=feeacb46e3&view=pt&search=all&permthid=thread-a%3Ar4207447891107660044&simpl=msg-a%3Ar420910037. ..
`
`

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`
`
`1/1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JAIME KEELING
`Petitioner,
`
`V.
`
`EVEHARS
`Registrant
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`In the Matter of Trademark Reg.
`No. 4,334,491
`
`Cancellation No. 92057380
`
`For the Mark: Point Break Live!
`
`Registered May 14, 2013
`
`RESPONSE TO MOTION FOR SUSPENSION
`
`On August 29, 2013 , Registrant Eve Hars ("Respondent"), filed a Motion for Suspension
`
`based on Registrant's appeal to the Court of Appeals for the Second Circuit of the jury verdict in
`
`U.S . District Court of the Southern District of New York, case number 10-9345. The case was
`
`upheld on appeal and was denied a writ of certiorari.
`
`STATEMENT OF FACTS
`
`1. On August 29, 2013 , Respondent filed a Motion for Suspension pursuant to Trademark
`
`Rule 2.117( a) pending final disposition on an appeal of the District Court's decision to the Court
`
`of Appeals.
`
`2. On October 30, 2013, Respondent' s Motion for Suspension was granted.
`
`3. On October 30, 2015 , the Court of Appeals for the Second Circuit affirmed the District
`
`Court's judgment in its entirety. See Exhibit A attached hereto
`
`4. On January 19, 2016, Respondent filed a writ of certiorari with the United States
`
`Supreme Court appealing the decision of the Court of Appeals for the Second Circuit.
`
`5. On June 27, 2016, Respondent's writ of certiorari was denied by the United States
`
`Supreme Court. See Exhibit B attached hereto.
`
`

`

`Accordingly , Petitioner requests that the Board call up this case and resume the cancellation
`
`proceedings.
`
`Dated: New York, New York
`August 29, 2019
`
`:;5·~·)
`
`Adam Davids
`Attorney for Petitioner
`153 West 27th Street, Suite 204
`New York, NY 10001
`(646) 415-9007
`adam@davolidavids.com
`
`

`

`EXHIBIT A
`
`DECISION OF THE UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`Keeling v. Hars
`No. 13-694-cv
`
`

`

`Case 13-694, Docurnent 188-1, 10/30/2015, 1631406, Panel of 24
`
`13-694-cv
`Keeling v. Hars
`
`]n tbe
`Wntteb ~tates QCourt of ~ppeals
`for tbe $>econb (!Circuit
`
`AUGUST TERM 2014
`No. 13-694-cv
`
`JAIME KEELING,
`Plaintiff-Counter-Defendant-Appellee,
`
`V.
`
`EVE HARS,
`
`Defendant-Appellant,
`
`NEW ROCK THEATER PRODUCTIONS, LLC, A NEW YORK LIMITED
`
`LIABILITY COMPANY,
`
`Defendant-Counter-Claimant,
`
`ETHAN GARBER,
`
`Defendant.*
`
`Appeal from the United States District Court for the
`Southern District of New York
`
`No. 1:10-cv-9345- Thomas P. Griesa, Judge
`
`· The Clerk of Court is directed to amend the official caption in this case
`to conform with the above.
`
`AUTHE ' IT ICATED9
`U.S. COVER"-MENT
`
`INFOR MATION
`
`ceo
`
`

`

`Case 13-694, Document 188-1, 10/30/2015, 1631406. PaDe2 of 24
`
`SUBMITTED: JUNE 26, 2015
`DECIDED: OCTOBER 30, 2015
`
`Before: CABRANES, LIVINGSTON, and DRONEY, Circuit Judges.
`
`The primary question presented is whether an unauthorized
`
`work that makes "fair use" of its source material may itself be
`
`protected by copyright.
`
`We hold, for substantially the reasons stated by the United
`
`States District Court for the Southern District of New York (Thomas
`
`P. Griesa, Judge), that, if the creator of an unauthorized work stays
`
`within the bounds of fair use and adds sufficient originality, she
`
`may claim protection under the Copyright Act, 17 U.S.C. § 103, for
`
`her original contributions. We also reject defendant's challenges to
`
`the District Court's
`
`jury
`
`charge.
`
`The District Court's
`
`January 11, 2013 judgment is therefore AFFIRMED.
`
`STEVEN PARA OISE, Vinson & Elkins LLP,
`New York, NY,for Plaintiff-Counter(cid:173)
`Defendant-Appellee.
`
`EVE HARS, pro se, Los Angeles, CA, for
`Defendant-Appellant.
`
`2
`
`

`

`Case 13-694, Document 188-1, 10/30/2015. 1631406, Page3 of 24
`
`JOSE A. CABRANES, Circuit Judge:
`
`The primary question presented is whether an unauthorized
`
`work that makes "fair use" of its source material may itself be
`
`protected by copyright.
`
`We hold, for substantially the reasons stated by the United
`
`States District Court for the Southern District of New York (Thomas
`
`P. Griesa, Judge), that, if the creator of an unauthorized work stays
`
`within the bounds of fair use and adds sufficient originality, she
`
`may claim protection under the Copyright Act, 17 U.S.C. § 103, for
`
`her original contributions. We also reject defendant's challenges to
`
`the District Court's
`
`jury
`
`charge.
`
`The District Court's
`
`January 11, 2013 judgment is therefore AFFIRMED.
`
`BACKGROUND
`
`Plaintiff-Appellee Jaime Keeling is the author of Point Break
`
`Live! ("PBL"), a parody stage adaptation of the 1991 Hollywood
`
`action movie Point Break, starring Keanu Reeves and Patrick Swayze.
`
`In the film, Reeves plays a rookie FBI agent who goes undercover to
`
`infiltrate a gang of bank-robbing surfers led by Swayze' s character.
`
`The Keeling-authored PBL parody parallels the characters and plot
`
`elements from Point Break and relies almost exclusively on selected
`
`dialogue from the screenplay. To this raw material, Keeling added
`
`jokes, props, exaggerated staging, and humorous theatrical devices
`
`to transform the dramatic plot and dialogue of the film into an
`
`3
`
`

`

`Case 13-694. Docurnent 188-1. 10/30/2015. 1631406. PaDe4 of 24
`
`irreverent,
`
`interactive
`
`theatrical experience.
`
`For example,
`
`in
`
`Keeling' s PBL parody, Point Break's death-defying scene in which
`
`Reeves' s character must pick up bricks, blindfolded, in a swimming
`
`pool takes place, instead, in a kiddie pool. Massive waves in the
`
`film are replaced by squirt guns in the PBL parody. A central
`
`conceit of the PBL parody is that the Keanu Reeves character is
`
`selected at random from the audience and reads his lines from cue
`
`cards, thereby lampooning Reeves's reputedly stilted performance
`
`in the movie. Keeling added to the effect that the audience was
`
`watching the making of the film by creating a set of film-production
`
`characters in the PBL parody, including a director, cinematographer,
`
`and production assistants. Keeling possesses no copyright or license
`
`with regard to the Point Break motion picture.
`
`Defendant-Appellant Eve Hars, proceeding pro se on appeal,
`
`owns production company New Rock Theater Productions, LLC
`
`("New Rock") . In 2007, Keeling executed a production agreement
`
`with Hars, pursuant to which New Rock would stage a two-month
`
`production run of PBL from October through December 2007.
`
`During that time period, Hars conferred with an entertainment
`
`attorney and the holder of the copyright to the Hollywood
`
`screenplay for Point Break, and eventually Hars came to believe that
`
`Keeling did not lawfully own any rights to the PBL parody play.
`
`Accordingly, after its
`
`initial two-month run, Hars sought to
`
`renegotiate the terms of the contract upon its expiration and, in
`
`effect, continue to produce PBL without further payment to Keeling.
`
`Keeling refused renegotiation, threatened suit, and registered a
`
`4
`
`

`

`Case 13-694. Document 188-1. 10/30/2015. 1631406, Page5 of 24
`
`copyright in PBL, without first obtaining perm1ss10n from the
`
`copyright holders of the original Point Break. Keeling' s asserted
`
`copyright in PBL became effective on January 4, 2008. Hars and
`
`New Rock continued to stage performances of PBL for four years
`
`thereafter without payment to or authorization from Keeling.
`
`In December 2010, Keeling brought suit against Hars, New
`
`Rock, and New Rock investor Ethan Garber, asserting claims for
`
`copyright infringement, breach of contract, and tortious interference
`
`with contract.
`
`In the District Court proceedings, all parties were
`
`represented by counsel. After the District Court denied defendants'
`
`motion to dismiss, see Keeling v. New Rock Theater Prods., LLC, No. 10
`
`Civ. 9345 (TPG), 2011 WL 1899762, at *1 (S.D.N.Y. May 17, 2011),
`
`defendants asserted counterclaims seeking, inter alia, a declaration
`
`that Keeling' s PBL copyright registration was invalid. Upon
`
`completion of discovery, defendants moved for summary judgment,
`
`arguing primarily that PBL, an unauthorized derivative work, was
`
`not entitled to copyright protection as a matter of law. The District
`
`Court denied defendants'
`
`successive motions
`
`for
`
`summary
`
`judgment, ruling that a parody that makes "fair use" of another
`
`copyrighted work may contain sufficient originality
`
`to merit
`
`copyright protection itself. See Keeling v. New Rock Theater Prods. ,
`
`LLC, No. 10 Civ. 9345 (TPG), 2011 WL 6202796 (S.D.N.Y. Dec. 13,
`
`2011); Keeling v. New Rock Theater Prods., LLC, No. 10 Civ. 9345
`
`(TPG), 2012 WL 5974009 (S.D.N.Y. Nov. 29, 2012). The District Court
`
`also rejected defendants' argument that a script heavily reliant on
`
`theatrical devices, as was PBL's, could not lawfully constitute
`
`5
`
`

`

`Case 13-694, Document 188-1, 10/30/2015. 1631406, Paoe6 of 24
`
`original creative expression deserving of copyright protection. 2011
`
`WL 6202796 at *1.
`
`Finally,
`
`the Court found that multiple
`
`outstanding issues of material fact remained-including whether
`
`PBL constituted a "fair use" parody of Point Break and whether PBL
`
`contained sufficient originality to merit copyright protection. Id.
`
`In December 2012, the case proceeded to a five-day trial by
`
`Jury. At the close of the evidence, the parties delivered summations
`
`focused largely on whether PBL was a parody at all, and if so,
`
`whether that parody constituted non-infringing "fair use." Record
`
`on Appeal ("ROA"), Keeling v. New Rock Theater Prods. , LLC, No. 10
`
`Civ. 9345 (TPG) (GWG), Dkt. No. 98, at 567-648 (S.D.N.Y. Dec. 7,
`
`2012). The District Court then charged the jury, beginning with the
`
`first question the jury would be asked to answer: "whether [ PBL]
`
`was a fair use by way of a parody of the original movie Point
`
`Break." Id. at 652. The District Court declined to enumerate each of
`
`the four statutory factors pertaining to "fair use," opting instead to
`
`attempt to "put a little more content on the discussion," which the
`
`District Court believed that the "list of factors" alone lacked. Id . at
`
`655. The pertinent instructions on fair use were as follows:
`
`Now, the person who creates the derivative
`work has a copyright in that derivative work. Now,
`if the derivative work is simply somehow really a
`copy of the original then it may be somehow called a
`derivative work but it infringes on the owner of the
`original. But if it is what we call "fair use" then it is
`not an infringement on the original and it is a new
`work and it has its own copyright and the author or
`
`6
`
`

`

`Case 13-694, Document 188-1, 10/30/2015, 1631406, Pa~Je7 of 24
`
`the creator of the new work owns that copyright as
`well as owns the new work. ...
`The plaintiff contends that [PBL] is a fair use of
`sections of the script of the original movie. The
`plaintiff contends that this is fair use as a parody and
`a parody, certainly, can be fair use ....
`A proper parody is something which generally
`ridicules to some extent, makes fun of, makes light of
`the original. Suppose the original is the very serious
`drama of some kind and if someone comes along
`and makes a parody, it is generally turning it into
`something different, humorous, ridiculous. And if
`that is done it is fair use to use even substantial
`amounts of the script of the original movie. It is fair
`use to even use the high points or the high point as
`long as it is not simply conveying again the original
`movie. If it takes the script of the original movie and
`creates something which uses that script to ridicule
`to make fun of, to make light of to produce humor
`instead of the original seriousness, then that is a
`legitimate parody.
`Now, the amount of script taken from the
`original cannot completely go beyond the needs of
`the parody. In other words, if the parody is for, if
`we could imagine, a third it is not legitimate to copy
`the other two thirds and put them out again. But if
`the amount of script used is reasonably related to the
`production of
`the humor,
`the
`ridicule,
`the
`lightheartedness and so forth that is a legitimate
`parody and that is fair use.
`Now, it is sometimes said that the judge in
`instructing a jury on fair use is supposed to refer to a
`
`7
`
`

`

`Case 13-694, Document 188-1, 10/30/2015, 1631406, Pa~Je8 of 24
`
`list of factors. The list of factors is a list of factors
`without much content or meaning. And what I am
`
`trying do with you now is to refer to the necessary
`factors but I hope put a little more content on the
`discussion. And really that's all I have to say to
`define fair use by way of parody.
`
`Id. at 653-55. No party objected to the District Court's jury
`
`instructions. Id. at 668.
`
`The jury returned a verdict in Keeling' s favor in the amount of
`
`$250,000, finding (a) that Keeling's use of material from the film
`
`Point Break was "fair use in the way of a parody," (b) that Keeling
`
`was the sole owner of the copyright to PBL, and ( c) that defendants
`
`infringed Keeling's copyright.
`
`Id. at 675-77. The District Court
`
`entered judgment on January 11, 2013.
`
`Defendant Hars, now proceeding pro se, appealed.
`
`She
`
`challenges the District Court's denial of her pretrial motion for
`
`summary judgment as well as the subsequent jury verdict in favor of
`
`Keeling. 1
`
`1 Although Hars suggests in her reply brief that she does not in fact
`challenge the District Court's denial of her pretrial motion for summary
`judgment and instead appeals only "the pure legal issues raised" therein, see
`Def.'s Reply Br. 9, we treat her appeal, taken as a whole, as a challenge to the
`District Court's denial of summary judgment as well as the subsequent jury
`verdict.
`
`8
`
`

`

`Case 13-694, Docurnent 188-1. 10/30/2015. 1631406. Page9 of 24
`
`DISCUSSION
`
`Though not a model of clarity,2 Hars' s appellate briefing
`
`primarily raises three issues: first, whether PBL, as an unauthorized
`
`"fair use," is entitled to copyright protection capable of supporting
`
`Keeling' s claim of infringement by a third party; second, whether
`
`Keeling's contributions to the work-consisting of individually non(cid:173)
`
`copyrightable elements-could be sufficient to support a copyright
`
`in PBL; and third, whether the District Court's jury instructions were
`
`erroneous. The first two issues relate to the same question: whether
`
`Keeling's work was copyrightable. We consider each issue in turn.
`
`I. Challenges to Copyright Law
`
`In general, "where summary judgment is denied and the
`
`movant subsequently loses after a full trial on the merits, the denial
`
`of summary judgment may not be appealed." Schaefer v. State Ins.
`
`Fund, 207 F.3d 139, 142 (2d Cir. 2000) (internal quotation marks
`
`omitted) . However, this rule does not apply where, as here, the
`
`district court's purported error was "purely one of law." Id. In such
`
`circumstances, we review de nova the legal issues underlying the
`
`district court's denial of summary judgment. Id.
`
`2 We construe the submissions of a pro se litigant liberally and interpret
`them "to raise the strongest arguments that they suggest." Triestman v. Fed.
`Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006) (emphasis in original) (internal
`quotation marks omitted).
`
`9
`
`

`

`Case 13-694, Document 188-1, 10/30/2015. 1631406, Page10 of 24
`
`The Copyright Act principally offers copyright protection for
`
`"original works of authorship." 17 U.S.C. § 102(a). Pursuant to the
`
`statute's terms, authors may control the copying of their original
`
`works and also retain "the exclusive rights" to "prepare derivative
`
`works based upon the copyrighted work." 3 17 U.S.C. § 106. Thus,
`
`unauthorized derivative works are typically afforded no copyright
`
`protection because they unlawfully infringe the exclusive rights of
`
`the original author. Id.; see also id. § 103 ("[P]rotection for a work
`
`employing preexisting material in which copyright subsists does not
`
`extend to any part of the work in which such material has been used
`
`unlawfully.") .
`
`The doctrine of "fair use" constitutes a critical and long(cid:173)
`
`standing limitation on the exclusive rights of the original copyright
`
`owner. 4 Though only made a part of statutory copyright law in
`
`1976, "[f]rom the infancy of copyright protection, some opportunity
`
`3 Section 101 of the Copyright Act defines a "derivative work" as "a work
`based upon one or more preexisting works" such as a
`translation,
`fictionali za tion, "or any other form in which a work may be recast, transform ed,
`or adapted." 17 U.S.C. § 101. The definition further notes that such a work can
`consist of "editorial revisions, annotations, elaborations, or other modifications
`which, as a whole, represent an original work of authorship." Id.
`
`4 See generally Authors Guild v. Google, Inc., No. 13-4829-cv, -- F.3d --, 2015
`WL 6079426, at *5 (2d Cir. Oct. 16, 2015) ("For nearly three hundred years, since
`shortly after the birth of copyright in England in 1710, courts have recogni zed
`that, in certain circumstances, giving authors absolute control over all copying
`from their works would tend in some circumstances to limit, rather than expand,
`public knowledge ." (footnote omitted)); Pierre N. Leval, Toward a Fair Use
`Standard, 103 HARV. L. R EV . 1105 (1990) (discussing the doctrine of fair use within
`the context of the history and objectives of copyright law).
`
`10
`
`

`

`Case 13-694, Docurnent 188-1, 10/30/2015, 1631406, Pagell of 24
`
`for fair use of copyrighted materials has been thought necessary to
`
`fulfill copyright's very purpose, 'to promote the Progress of Science
`
`and useful Arts.'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
`
`575 (1994) (alterations omitted) (quoting U.S. CONST., Art. I, § 8, cl.
`
`8). Under Section 107 of the Copyright Act, certain unauthorized
`
`"fair use of a copyrighted work," for purposes such as criticism,
`
`comment, news reporting, teaching, scholarship and research, "is
`
`not an infringement of copyright" and thus is lawful. 5 17 U.S.C. §
`
`107. While parody is not expressly mentioned in the statute, the
`
`Supreme Court has instructed that "parody, like other comment or
`
`criticism, may claim fair use under§ 107." Campbell, 510 U.S. at 579.
`
`In this case, Hars does not dispute
`
`the jury's factual
`
`determination that Keeling's use of Point Break material in her
`
`creation of PBL was "fair use in the way of a parody." ROA, Dkt.
`
`No. 98, at 675.
`
`Indeed, she repeatedly disclaims any "fair use"
`
`challenge, explaining that she "is not concerned about whether
`
`Keeling's script is a fair use of Point Break because it is completely
`
`irrelevant to any and all of Hars' arguments." Def.'s Reply Br. 20; see
`
`also id. at 20-21 ("[T]he issue of whether Keeling's script qualifies as
`
`fair use was astutely and consciously avoided by Hars in her brief.
`
`5 The Copyright Act lists four non-exhaustive factors for courts to
`consider in determining whether a use is "fair" : "(1) the purpose and character
`of the use, including whether such use is of a commercial nature or is for
`nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the
`amount and substantiality of the portion used in relation to the copyrighted
`work as a whole; and (4) the effect of the use upon the potential market for or
`value of the copyrighted work." 17 U.S.C. § 107.
`
`11
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`Case 13-694, Document 188-1, 10/30/2015, 1631406, Page12 of 24
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`Hars is not asking the Court to spend even one second of
`
`valuable time trying to determine whether Keeling' s script qualifies
`
`for fair use.").
`
`Instead, Hars presents two legal arguments for why copyright
`
`protection should not extend to Keeling' s work, both of which were
`
`first raised in defendants' summary judgment briefing and denied
`
`by the District Court.
`
`A. Copyright Protection: Fair Use
`
`First, Hars argues that an unauthorized derivative work like
`
`PBL categorically may not receive independent copyright protection,
`
`regardless of whether it makes fair use of its source material. 6 This
`
`argument flows from the admittedly unusual posture in which this
`
`case arises. Typically, fair use is invoked as a defense against a claim
`
`of copyright
`
`infringement brought by
`
`the
`
`source-material
`
`6 Both parties characterize PBL as a "derivative work." See Def.'s Br. 1-3,
`9-18, 27-40, 45-51; Pl.'s Br. 1, 9, 21-32. We note that, as a general matter,
`"derivative works" and "fair use" are discrete legal categories. Under the
`Copyright Act, a derivative work involves a transformation to the work's
`"form," 17 U.S.C. § 101, while fair use involves a transformation of the work's
`"purpose and character," 17 U.S.C. § 107. PBL is both-it involves the
`dramatization of a motion picture, making it a derivative work, and it involves a
`transformation of the motion picture's character from serious to parody, making
`it non-infringing fair use. The parties here seem to confuse the distinction
`between derivative works and fair use. Nonetheless, because neither party has
`raised this issue on appeal, and because our analysis applies equally to
`derivative and non-derivative works so long as the work constitutes lawful fair
`further address questions
`raised by
`the parties'
`use, we need not
`characterization.
`
`12
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`

`

`Case 13-694, Document 188-1, 10/30/2015, 1631406, Page13 of 24
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`rightsholder. Here, however, Keeling invoked the fair-use principle
`
`to establish an affirmative claim against defendants for unauthorized
`
`use of her PBL parody. Hars concedes that Keeling could use the
`
`"fair use" doctrine as a "shield" against a claim of copyright
`
`infringement, but argues that she may not use the doctrine as a
`
`"sword" to vest a work with independent copyright protection
`
`against third-party infringement. Def.'s Br. 13-14.
`
`This argument is inconsistent with the operative statutory
`
`language. The Copyright Act provides that derivative works are
`
`entitled to "independent" copyright protection, separate from any
`
`copyright in the preexisting material. 17 U.S.C. § 103(b). Though
`
`copyright protection expressly may extend to derivative works
`
`"employing preexisting material in which copyright subsists," the
`
`statute cautions that protection "does not extend to any part of the
`
`work in which such material has been used unlawfully." 17 U.S.C.
`
`§ 103(a) (emphases supplied).
`
`If, however, a work employs
`
`preexisting copyrighted material lawfully-as in the case of a "fair
`
`use" -nothing in
`
`the statute prohibits
`
`the extension of
`
`the
`
`"independent" copyright protection promised by Section 103.7
`
`Id.
`
`§ 103(b). A close reading of the statute therefore makes plain that an
`
`unauthorized but lawful fair use employing preexisting copyrighted
`
`7 To be sure, the independent copyright protection in the new work is
`limited to that work's original content: "[C]opyright in a compilation or
`derivative work extends only to the material contributed by the author of such
`work, as distinguished from the preexisting material employed in the work." 17
`U.S.C. § 103(b).
`
`13
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`Case 13-694, Document 188-1, 10/30/2015, 1631406, Page14 of 24
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`material may itself merit copyright protection. It is not the
`
`invocation of fair use that provides the work copyright protection,
`
`and perhaps thinking so has created some confusion on the part of
`
`the defendant. It is the originality of the derivative work that makes
`
`it protectable, and fair use serves only
`
`to render lawful the
`
`derivative work, such that it may acquire-as would other lawful
`
`derivative works-such protection.
`
`Resisting this statutory principle, Hars argues that the case
`
`law does not permit the extension of independent copyright
`
`protection to an unauthorized fair use, and contends that the only
`
`court to have dealt with the issue found that "Congress did not
`
`contemplate such" a result. Def.'s Br. 14 (quoting Sobhani v.
`
`@Radical.Media, Inc., 257 F. Supp. 2d 1234, 1239 (C.D. Cal. 2003)). But
`
`in fact, Congress did expressly contemplate the extension of
`
`copyright protection where, as here, a work constituted non(cid:173)
`
`infringing fair use. The relevant legislative report stated that,
`
`[u]nder this provision [(i.e., Section 103(a) of the
`Copyright Act)], copyright could be obtained as long
`the preexisting work was not
`the use of
`as
`"unlawful," even
`though
`the consent of
`the
`copyright owner had not been obtained. For
`instance, the unauthorized reproduction of a work might
`the doctrine of fair use or an
`be "lawful " under
`applicable foreign law, and if so the work incorporating
`it could be copyrighted.
`
`H.R. Rep . No. 94-1476, at 58 (1976) (emphases supplied). This
`
`language addresses precisely the issue raised in the instant appeal.
`
`14
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`

`Case 13-694. Document 188-1, 10/30/2015, 1631406, Page15 of 24
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`Although "the consent of
`
`the copyright owner" -here,
`
`the
`
`rightsholder in the Hollywood screenplay Point Break- "had not
`
`been obtained" by Keeling, her resulting parody PBL was "'lawful'
`
`under the doctrine of fair use," and accordingly, it "could be
`
`copyrighted."
`
`We have previously confirmed that, because "[d]erivative
`
`works are explicitly included in the subject matter of copyright as
`
`defined by the Copyright Act," the mere fact that a litigant's
`
`unauthorized "creations are derivative works is in itself, of course,
`
`no bar to copyrightability." Durham Indus., Inc. v. Tomy Corp., 630
`
`F.2d 905, 909 (2d Cir. 1980) (citing 17 U.S.C. § 103). And this
`
`statutory interpretation is consistent with the animating policy
`
`behind the fair use doctrine-to fulfill copyright's core purpose of
`
`promoting development in arts and science. See Campbell, 510 U.S. at
`
`575. Without any possibility of copyright protection against
`
`infringement for her original fair-use parody, playwrights like
`
`Keeling might be dissuaded from creating at all.
`
`Accordingly, we agree with the District Court's holding that,
`
`when a derivative work's unauthorized use of preexisting material
`
`is fair use and the work contains sufficient originality, its author
`
`may claim copyright protection under § 103 for her original creative
`
`contributions. See Keeling, 2011 WL 1899762, at *1.
`
`15
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`Case 13-694, Document 188-1, 10/30/2015, 1631406, Page16 of 24
`
`B. Copyright Protection: Selection, Coordination,
`and Arrangement of Un-Protectable Elements
`
`Hars' s second legal argument fares no better. Hars contends
`
`that if an author's original contributions to a derivative work consist
`
`solely of non-copyrightable individual elements, those contributions
`
`cannot support a copyright. Specifically, she claims that Keeling' s
`
`original contributions to the PBL script are insufficient to warrant
`
`copyright protection because
`
`they consist entirely of non(cid:173)
`
`copyrightable stage directions and theatrical devices. See 17 U.S.C.
`
`§ 102(b) (providing that copyright protection does not extend to
`
`"any
`
`idea, procedure, process, system, method of operation,
`
`concept, principle, or discovery, regardless of the form in which it is
`
`described, explained, illustrated, or embodied in such work").
`
`We disagree. As the District Court properly found, copyright
`
`law protects not only the individual elements themselves, but the
`
`creative choices made
`
`in selecting and arranging even un(cid:173)
`
`copyrightable elements. Indeed, the Copyright Act itself explicitly
`
`protects "compilations," 17 U.S.C. § 103, and a long line of case law
`
`confirms that copyright covers compilations of raw data or facts,
`
`elements which are not themselves protectable, so long as the
`
`compilation itself (including the arrangement of those elements)
`
`possesses some "minimal degree" of creativity, "no matter how
`
`crude, humble or obvious." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,
`
`499 U.S. 340, 345 (1991) (internal quotation marks omitted); see also
`
`Harper & Row v. Nation Enters., 471 U.S. 539, 547 (1985) ("Creation of
`
`a nonfiction work, even a compilation of pure fact, entails
`
`16
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`

`Case 13-694, Document 188-1, 10/30/2015. 1631406. Page17 of 24
`
`originality."); Silverstein v. Penguin Putnam, Inc., 368 F .3d 77, 80 (2d
`
`Cir. 2004) (1'It is well settled that compilations of fact may be
`
`copyrightable even though facts themselves are not protected"). The
`
`Supreme Court has made clear that even a telephone directory may be
`
`copyrighted if its non-copyrightable factual elements are arranged
`
`with the requisite "minimal degree" of originality. See Feist, 499 U.S.
`
`340. Keeling' s original contributions to PBL clearly exceed this
`
`creativity threshold. 8
`
`To be sure, Hars is correct that Keeling could not copyright
`
`the commonly used individual stage directions and theatrical
`
`devices-e.g., the concept of drafting an audience member to play
`
`the lead, the reliance on cue cards, or the use of squirt guns-which
`
`together comprise PBL's jokes. But Keeling has never sought to do
`
`so. Rather, as the District Court correctly held, "Keeling' s creative
`
`8 We similarly reject Hars's related argument that Point Break material
`improperly "pervade[s]" the PBL script in contravention of Eden Toys, Inc . v.
`Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982), superseded by rule on other
`grounds as recqgnized in Fed . Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd., 726
`F.3d 62, 84 (24 Cir. 2013). See Def.'s Br. 35-37. To the extent it even applies in this
`case, w