Christian Turner Assistant Professor of Law

198^ The record suggests that Disney’s programs at the time of trial consisted of approximately one hour a week of network television and one syndicated series. Universal’s percentage in the Los Angeles market on commercial television stations was under 5%. See Tr. 532-533, 549-550.

199^ “Some public stations, as well as commercial stations, program the ‘Neighborhood’ at hours when some children cannot use it. I think that it’s a real service to families to be able to record such programs and show them at appropriate times. I have always felt that with the advent of all of this new technology that allows people to tape the ‘Neighborhood’ off-the-air, and I’m speaking for the ‘Neighborhood’ because that’s what I produce, that they then become much more active in the programming of their family’s television life. Very frankly, I am opposed to people being programmed by others. My whole approach in broadcasting has always been ‘You are an important person just the way you are. You can make healthy decisions.’ Maybe I’m going on too long, but I just feel that anything that allows a person to be more active in the control of his or her life, in a healthy way, is important.” T.R. 2920-2921. See also Def. Exh. PI, p. 85.

200^ Section 107 provides:

Notwithstanding the provisions of section 106, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include –

(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.

201^ A VTR owner who has taped a favorite movie for repeated viewing will be less likely to rent or buy a tape containing the same movie, watch a televised rerun, or pay to see the movie at a theater. Although time-shifting may not replace theater or rerun viewing or the purchase of prerecorded tapes or discs, it may well replace rental usage; a VTR user who has recorded a first-run movie for later viewing will have no need to rent a copy when he wants to see it. Both library-builders and time-shifters may avoid commercials; the library builder may use the pause control to record without them, and all users may fast-forward through commercials on playback. The Studios introduced expert testimony that both time-shifting and librarying would tend to decrease their revenue from copyrighted works. See 480 F.Supp., at 440. The District Court’s findings also show substantial library-building and avoidance of commercials. Both sides submitted surveys showing that the average Betamax user owns between 25 and 32 tapes. The Studios’ survey showed that at least 40% of users had more than 10 tapes in a “library”; Sony’s survey showed that more than 40% of users planned to view their tapes more than once; and both sides’ surveys showed that commercials were avoided at least 25% of the time. Id., at 438-439.

202^ Peer-to-peer networks have disadvantages as well. Searches on peer-to-peer networks may not reach and uncover all available files because search requests may not be transmitted to every computer on the network. There may be redundant copies of popular files. The creator of the software has no incentive to minimize storage or bandwidth consumption, the costs of which are borne by every user of the network. Most relevant here, it is more difficult to control the content of files available for retrieval and the behavior of users.

203^ By comparison, evidence introduced by the plaintiffs in A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (C.A.9 2001), showed that 87% of files available on the Napster file-sharing network were copyrighted, id., at 1013.

204^ The record makes clear that StreamCast developed these promotional materials but not whether it released them to the public. Even if these advertisements were not released to the public and do not show encouragement to infringe, they illuminate StreamCast’s purposes.

205^ We stated in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), that “‘the lines between direct infringement, contributory infringement and vicarious liability are not clearly drawn’….[R]easoned analysis of [the Sony plaintiffs’ contributory infringement claim] necessarily entails consideration of arguments and case law which may also be forwarded under the other labels, and indeed the parties … rely upon such arguments and authority in support of their respective positions on the issue of contributory infringement,” id., at 435, n. 17. In the present case MGM has argued a vicarious liability theory, which allows imposition of liability when the defendant profits directly from the infringement and has a right and ability to supervise the direct infringer, even if the defendant initially lacks knowledge of the infringement. Because we resolve the case based on an inducement theory, there is no need to analyze separately MGM’s vicarious liability theory.

206^ Of course, in the absence of other evidence of intent, a court would be unable to find contributory infringement liability merely based on a failure to take affirmative steps to prevent infringement, if the device otherwise was capable of substantial noninfringing uses. Such a holding would tread too close to the Sony safe harbor.

207^ Justice BREYER finds support for summary judgment in this motley collection of declarations and in a survey conducted by an expert retained by MGM. That survey identified 75% of the files available through Grokster as copyrighted works owned or controlled by the plaintiffs, and 15% of the files as works likely copyrighted. As to the remaining 10% of the files, “there was not enough information to form reasonable conclusions either as to what those files even consisted of, and/or whether they were infringing or non-infringing.” Even assuming, as Justice BREYER does, that the Sony Court would have absolved Sony of contributory liability solely on the basis of the use of the Betamax for authorized time-shifting, summary judgment is not inevitably appropriate here. Sony stressed that the plaintiffs there owned “well below 10%” of copyrighted television programming, and found, based on trial testimony from representatives of the four major sports leagues and other individuals authorized to consent to home-recording of their copyrighted broadcasts, that a similar percentage of program copying was authorized. Here, the plaintiffs allegedly control copyrights for 70% or 75% of the material exchanged through the Grokster and StreamCast software, and the District Court does not appear to have relied on comparable testimony about authorized copying from copyright holders.

208^ Although named in the caption of plaintiff’s complaint and other pleadings, Edmonds and Reid were never served with process, and, therefore, are not parties to this litigation in their individual capacities.

209^ The sticker also states in smaller print: “Parental Advisory. Explicit Content.”

210^ Cf. Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir.1996) (involved use of basketball player’s name in an automobile advertisement); Winterland Concessions Co. v. Sileo, 528 F.Supp. 1201 (N.D.Ill.1981), aff’d, 830 F.2d 195 (7th Cir.1987) (involved the use of names of entertainers and musical groups on t-shirts); Uhlaender v. Henricksen, 316 F.Supp. 1277 (D.Minn.1970) (involved use of major league baseball players’ names in connection with a board game); Palmer v. Schonhorn Enter., Inc., 96 N.J.Super. 72, 232 A.2d 458 (1967) (involved use of a golf player’s name and likeness in connection with a golf game).

211^ By contrast, in Cher v. Forum International, Ltd., 692 F.2d 634 (9th Cir.1982), cert. denied, 462 U.S. 1120, 103 S.Ct. 3089, 77 L.Ed.2d 1350 (1983), relied upon by plaintiff, the defendant explicitly misrepresented that Cher had granted an “exclusive” interview and endorsed the magazine. Similarly, in National Bank of Commerce v. Shaklee Corp., 503 F.Supp. 533 (W.D.Tex.1980), the plaintiff’s name was used without permission in an explicit “endorsement” of products, and in Fairfield v. American Photocopy Equipment Co., 138 Cal.App.2d 82, 291 P.2d 194 (1955), the defendant explicitly misrepresented that the plaintiff was a “satisfied user” of defendant’s products.

212^ Furthermore, in conventional “product” trademark cases, “merely occasional” instances of alleged actual confusion do not support the existence of likelihood of confusion. See, e.g., S.C. Johnson & Son, Inc. v. Johnson, 266 F.2d 129, 141 (6th Cir.), cert. denied, 361 U.S. 820, 80 S.Ct. 65, 4 L.Ed.2d 65 (1959).

213^ Compare the Lanham Act cases cited by plaintiff all of which involved the use of famous persons’ names in connection with recordings by them, thereby directly and intentionally misrepresenting that the plaintiffs had approved the unauthorized distributions of their work. See PPX Enter., Inc. v. Audiofidelity Enter., Inc., 818 F.2d 266, 268 (2d Cir.1987) (defendants marketed eight albums allegedly containing feature performances by the electric guitarist Jimi Hendrix, when in fact the albums “either did not contain Hendrix performances at all or contained performances in which Hendrix was merely a background performer or undifferentiated session player”); Apple Corps Ltd. v. Adirondack Group, 124 Misc.2d 351, 355, 476 N.Y.S.2d 716, 719 (1983) (defendants distributed “recordings of inferior quality which were made as a lark”); Benson v. Paul Winley Record Sales Corp., 452 F.Supp. 516, 518 (S.D.N.Y.1978) (defendants “made [the plaintiff] to appear as the central and controlling artist when in fact he was not,” and also misrepresented to the public that the songs on the album were recent releases by the plaintiff). On the other hand, defendants here have not used plaintiff’s name on a work by plaintiff, nor have defendants misappropriated any written or recorded material of plaintiff’s.

214^ The Sixth Circuit noted in Carson v. Here’s Johnny Portable Toilets, Inc., that Lanham Act and Michigan state law unfair competition claims were both governed by the same standards. 698 F.2d at 833; see also Sports Auth., Inc. v. Abercrombie & Fitch, Inc., 965 F.Supp. 925, 934 n. 5 (E.D.Mich.1997) (“the Court’s analysis under the Lanham Act will also apply to [plaintiff’s Michigan] common law claim”).

215^ M.C.L. s 429.42 states in relevant part: [A]ny person who shall:

(a) Use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this act in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services … is liable to a civil action by the owner of the registered mark.

(emphasis added).

216^ “[W]hether alleging infringement of a registered trademark … or infringement of an unregistered trademark …, it is clear that a plaintiff must show that it has actually used the designation at issue as a trademark, and that the defendant has also used the same or a similar designation as a trademark.” Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir.1998). Compare defendants’ use of plaintiff’s name here for the purpose of sending an artistic message, with a hypothetical claim by defendants that they were selling “Rosa Parks”-brand discs and cassettes.

217^ Under Professor Prosser’s scheme, the right of publicity is the last of the four categories of the right to privacy. Prosser, 48 Cal. L. Rev. at 389.

218^ The statute was amended after White filed her complaint. The amendments would not have altered the analysis in this case however.

219^ In warning of a first amendment chill to expressive conduct, the dissent reads this decision too broadly. See Dissent at 1407. This case concerns only the market which exists in our society for the exploitation of celebrity to sell products, and an attempt to take a free ride on a celebrity’s celebrity value. Commercial advertising which relies on celebrity fame is different from other forms of expressive activity in two crucial ways.

First, for celebrity exploitation advertising to be effective, the advertisement must evoke the celebrity’s identity. The more effective the evocation, the better the advertisement. If, as Samsung claims, its ad was based on a “generic” game-show hostess and not on Vanna White, the ad would not have violated anyone’s right of publicity, but it would also not have been as humorous or as effective.

Second, even if some forms of expressive activity, such as parody, do rely on identity evocation, the first amendment hurdle will bar most right of publicity actions against those activities. Cf. Falwell, 485 U.S. at 46, 108 S.Ct. at 876. In the case of commercial advertising, however, the first amendment hurdle is not so high. Central Hudson Gas & Electric Corp. v. Public Service Comm’n of New York, 447 U.S. 557, 566, 100 S.Ct. 2343, 2351, 65 L.Ed.2d 341 (1980). Realizing this, Samsung attempts to elevate its ad above the status of garden-variety commercial speech by pointing to the ad’s parody of Vanna White. Samsung’s argument is unavailing. See Board of Trustees, State Univ. of N.Y. v. Fox, 492 U.S. 469, 474-75, 109 S.Ct. 3028, 3031, 106 L.Ed.2d 388 (1988); Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 67-68, 103 S.Ct. 2875, 2880-81, 77 L.Ed.2d 469 (1983). Unless the first amendment bars all right of publicity actions-and it does not, see Zachini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977)-then it does not bar this case.

220^ The “good lead doctrine” requires that a description provide a way to discover with certainty the land granted. For example, granting “all of my land” in Clarke County does just that. Granting “some of my land” in Clarke County provides no way of knowing what was granted.

221^ The enforceable promises in deeds are known as “warranties,” but they’re no different from promises or terms in a contract.

222^ In Brown v. Lober, the sellers, the Bosts (succeeded by Ms. Lober) did not own all they claimed, namely 2/3 of the subsurface coal. Thus, their promises in their general warranty deed as to seisin and the absence of encumbrances were probably in error. But that was a long time ago… too long under the statute of limitations. And yet, the owners of that encumbrance have not come forward to disturb possession, so the buyers, the Browns, can’t yet sue Lober for failing to defend and guaranteeing quiet enjoyment of what was purported to be conveyed.

223^ A patent is just a deed from the sovereign, rather than from a private individual.

224^ AS 34.15.290 states:

A conveyance of real property in the state hereafter made, other than a lease for a term not exceeding one year, is void as against a subsequent innocent purchaser or mortgagee in good faith for a valuable consideration of the property or a portion of it, whose conveyance is first duly recorded. An unrecorded instrument is valid as between the parties to it and as against one who has actual notice of it.

225^ Because we hold Lowery had a conveyable interest under the Federal statute, we need not decide issues raised by the parties regarding after-acquired property and the related issue of estoppel by deed.

226^ On February 16, 1970, special instructions were given regarding survey. On June 14, 1972, mineral deposit reservations were made. On December 7, 1972, Lowery published his application. Affidavit of posting was made on March 15, 1973, and on June 28, 1973, the BLM notified Lowery that $12.50 payment must be made for the land.

227^ The entire process from the time the claimant decides on a homesite until the patent is passed is quite involved. A notice of location is filed with the BLM by the claimant. After filing of the notice of location, the claim normally proceeds within a five-year statutory period until the claimant is notified that he should submit application to purchase. After application to purchase, BLM requests a field report on the matter, and a realty specialist examines the land. He writes a report and makes his recommendation concerning compliance with the appropriate statute. If the field examiner recommends approval, a request for survey is prepared. The claim is then surveyed, and the plat of survey is forwarded to Washington, D. C. for approval. After it is approved and accepted by the Chief, Division of Cadastral Survey, it is returned to the Alaska State Office for filing. The claimant is then notified that he should direct publication of his claim in the nearest newspaper. In the case of a special survey, publication continues throughout a nine-week period. The newspaper submits proof of publication to the case file, and the claimant must submit an affidavit of posting to purchase the claim along with the appropriate map and his application for purchase. After all this is completed, the matter is finally reviewed. All reservations to the United States Government are summarized, and a final certificate is prepared. Upon signing of the final certificate, a patent is typed, reviewed several times, signed and sealed and the patent number is affixed. The patent is then mailed certified mail to the claimant.

228^ 43 U.S.C. s 687a (1970) states:

Rights to purchase; price and limit of acreage; access to water front

Any citizen of the United States twenty-one years of age, or any association of such-citizens, or any corporation incorporated under the laws of the United States or of any State or Territory authorized on May 14, 1898, by law to hold lands in the Territories, thereafter in the possession of and occupying public lands in Alaska in good faith for the purposes of trade, manufacture, or other productive industry, may each purchase one claim only not exceeding eighty acres of such land for any one person, association, or corporation, at $2.50 per acre, upon submission of proof that said area embraces improvements of the claimant and is needed in the prosecution of such trade, manufacture, or other productive industry, such tract of land not to include mineral or coal lands except as provided in section 270-1 of this title, and ingress and egress shall be reserved to the public on the waters of all streams, whether navigable or otherwise: Provided, That any citizen of the United States twenty-one years of age employed by citizens of the United States, associations of such citizens, or by corporations organized under the laws of the United States, or of any State of Territory, whose employer is engaged in trade, manufacture, or other productive industry may purchase one claim, not exceeding five acres, of unreserved public lands, such tract of land not to include mineral, coal, oil or gas lands except as provided in section 270-1 of this title, in Alaska as a homestead or headquarters, under rules and regulations to be prescribed by the Secretary of the Interior, upon payment of $2.50 per acre: Provided further, That any citizen of the United States, after occupying land of the character described as a homestead or headquarters, in a habitable house, not less than five months each year for three years, may purchase such tract, not exceeding five acres, in a reasonable compact form, without any showing as to his employment or business, upon payment of $2.50 per acre, under rules and regulations to be prescribed by the Secretary of the Interior, and in such cases surveys may be made without expense to the applicants in like manner as the survey of settlement claims under sections 270-10 and 270-15 of this title: And provided further, That the minimum payment for any such tract shall be $10, and no person shall be permitted to purchase more than one tract except upon a showing of good faith and necessity satisfactory to the Secretary of the Interior.

229^ Bailey v. Sanders, 228 U.S. 603, 609, 33 S.Ct. 602, 57 L.Ed. 985, 989 (1913); Anderson v. Carkins, 135 U.S. 483, 487, 10 S.Ct. 905, 34 L.Ed. 272, 274 (1890); Moffitt v. Bulson, 96 Cal. 106, 30 P. 1022, 1023 (1893); Harris v. McCrary, 17 Idaho 300, 105 P. 558, 559 (1909); Ronquillo v. Sandoval, 71 N.M. 459, 379 P.2d 611, 613 (1962); McDonald v. Lambert, 43 N.M. 27, 85 P.2d 78, 85 (1938); Howard v. Standolind Oil & Gas Co., 197 Okl. 269, 169 P.2d 737, 741-42 (1946).

230^ United States v. Buchanan, 232 U.S. 72, 76, 34 S.Ct. 237, 58 L.Ed. 511, 514 (1914); Russian-American Packing Co. v. United States, 199 U.S. 570, 26 S.Ct. 157, 50 L.Ed. 314 (1905).

231^ General Homestead Regulation, 43 C.F.R. s 2511.2(a) (1975) states:

Alienation of all or part of claim; ….

(1) The alienation of all or part of the land embraced in a homestead prior to making proof except for the public purposes mentioned … will prevent the entryman from making satisfactory proof, since he is required to swear that he has not alienated any part of the land … .

232^ See note 5, supra.

233^ The Alaska Homestead Act specifically states:

The right of any homestead settler to transfer any portion of the land so settled upon, as provided by section 174 of (Title 43), shall be restricted and limited within the Territory of Alaska as follows: …, and all contracts by the settlor made before his receipt of patent from the Government, for the conveyance of the land homesteaded by him or her, except as herein provided, shall be held null and void.

The regulations promulgated pursuant to Alaska Homestead Act, 43 C.F.R. s 2567.7(c) (1975) state:

In Alaska as elsewhere in the United States, a forfeiture of the claim results from a transfer of any part of the land or of any interest therein before the submission of the proof, with certain exceptions specified by law.

234^ Sylvester v. Washington, 215 U.S. 80, 86, 30 S.Ct. 25, 54 L.Ed. 101, 105 (1909); Adams v. Church, 193 U.S. 510, 516-17, 24 S.Ct. 512, 48 L.Ed. 769, 771-72 (1904); Lamb v. Davenport, 85 U.S. (18 Wall.) 307, 314, 21 L.Ed. 759, 761 (1873); Phillips v. Carter, 135 Cal. 604, 67 P. 1031, 1032 (1902) (Desert Land Act of 1877); and McKennon v. Winn, 1 Okl. 327, 33 P. 582, 585 (1893) (Federal Townsite Claim Act).

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