BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, March 24, 2000.)
In order to avoid confusion as to the origin of a television series, its producer has been ordered by a federal district court to modify and reposition the credit given to the authors of the comic books which inspired that series.1 In its opinion, the Court observes that the reality of television writing credits appears to the uninitiated to be governed by the law according to Humpty Dumpty (“when I use a word, it means just what I choose it to mean — neither more nor less.”).
The plaintiffs are the authors of the comic book series “Harsh Realm” in which the hero enters a virtual reality world and experiences life and death adventures. They entered into agreements with Harris Publications, Inc. (“Harris”) in which they were engaged to create the artwork, plot and script for the comic book series. In those agreements, they also granted Harris the right to license television rights in return for fifty percent of the net receipts derived therefrom. The agreements did not require that Harris include a provision in any such license agreement mandating that plaintiffs receive credit on a television series.
In May of 1996, Daniel Sackheim and others optioned the television rights from Harris. Sackheim brought the project to the attention of Chris Carter, a producer having a relationship with Twentieth Century Fox Film Corporation (“Fox) which produced and ultimately broadcast on the Fox Television Network a series entitled “Harsh Realm,” in which the hero enters a virtual reality world and experiences life and death adventures. The main titles of each episode contain the credit, “Created by Chris Carter” with no credit being given to plaintiffs. After the network run of the series was canceled, Fox licensed it to the FX Cable Network.
Plaintiffs brought suit, naming Fox, Chris Carter and Harris as defendants. They allege that defendants violated the Lanham Act by listing Carter as the creator of the television series and seek a preliminary injunction requiring defendants to list them appropriately in the credits for each episode.
There is no dispute that plaintiffs are the authors of the “Harsh Realm” comic books and that Fox obtained a license to use that work for the television series. The defendants argue, however, that, although the title of the series is derived from the plaintiffs’ work, it differs substantially from the comic book because the characters and situations are totally different. They further argue that the credit given to Carter was appropriate because he created the characters and the situations depicted in the television series and that such credit is required under the standards agreed to in a contract between Fox and The Writers Guild of America, West, Inc. (the “WGA”).
At the time the action was commenced, the only credit which Fox provided relating to the comic book series was “Special Thanks to the Harsh Realm comic book series published by Harris Publications, Inc.” which appeared somewhat separated from the “Created by” credit afforded to Carter. In response to the litigation, Fox altered the credit to read “Inspired by the Harsh Realm comic book series, written by James D. Hudnall, Pencilled by Andrew Packett, Published by Harris Publications, Inc.” This credit still appeared far removed from the “Created by” credit and on one third of the screen with two other items.
Plaintiffs do not seek an order prohibiting defendants from displaying a credit that reads “Created by Chris Carter.” They contend, however, that there should follow immediately after it a credit that adequately recognizes their creative role.
The Court begins its discussion by noting that in order to grant a preliminary injunction it must decide whether the plaintiffs are likely to succeed on the merits and whether they will suffer irreparable harm if preliminary relief is not granted. Here, it is clear that plaintiffs will suffer irreparable harm if they are correct on the merits because it will be difficult to compensate them in damages for the injury that they will suffer if they do not receive appropriate credit during the pendency of the action.
In rejecting defendants’ argument that the Lanham Act claim asserted by plaintiffs is an impermissible attempt to convert a copyright claim into a false designation of origin claim, the Court cites language in prior cases which indicates that reproduction of a work with a false representation as to its creator could support a finding of false designation of origin when the defendant failed to provide credit to the original creator. That is precisely the claim that plaintiffs are making here.
Although there are substantial differences between the comic books and the television series, a trier of fact could find that it is misleading to represent Carter as the creator of “Harsh Realm” without giving adequate recognition to the role that the plaintiffs played in its creation. The defendants, supported by the WGA, also claim that the credit they provided to Carter is one required under the agreement between Fox and the WGA, and that under said contract they are not permitted to provide plaintiffs with the credit they demand. However, plaintiffs are not members of the WGA and, thus, are not bound by its contract. If the credits on the television series violate the right of plaintiffs under the Lanham Act, the fact that the violation is under an agreement with a third party is no defense.
Defendants also allege that it is significant that the contract under which plaintiffs licensed Harris to exploit their work does not contain a provision providing that they must receive credit. In this regard, the issue is not whether plaintiffs may complain if they are not afforded credit as creators of “Harsh Realm.” but, rather, whether it is false and misleading to say that “Harsh Realm” was created by Carter without acknowledging the creative contribution of the plaintiffs.
The Court takes note of the fact that the term “Created by” and other specific credits have taken on a special meaning as a result of the application of the WGA Agreement to hundreds of television productions. Thus, it could be as misleading to order the defendants to give the plaintiffs a credit to which they would not otherwise be entitled under the WGA Agreement as it would to deny recognition of their contribution to the finished product.
After oral argument, the defendants agreed to insert the following credit at the end of each episode: “Inspired by the Harsh Realm comic book series Created by James D. Hundall and Andrew Packett Published by Harris Publications, Inc.” The credit has been inserted in all existing episodes on a separate card that appears as the second card in the end credits.
The Court believes that this credit would be sufficient to alleviate any potential confusion in the mind of the public that might result from Carter’s “Created by” credit if it were to appear in relatively close proximity to such credit. The problem with the solution attempted by the defendants is that the “Created by” credit appears at the very beginning of the show (in the “opening credits”) an hour earlier. The Court states that “it is not reasonable to believe that viewers dashing to get to the refrigerator between television shows will give the same attention to the credits at the end of the show as they do to those at the beginning. Thus, the defendants’ actions, while an improvement, do not solve the problem of consumer confusion.” In an attempt to balance the competing interests and the relative harm to the parties that a preliminary injunction may cause, the Court orders defendants to provide the “Inspired by” credit set forth above in the opening credits of the program immediately following the “Written by” credit. Although this placement is not as close to the “Created by” credit as plaintiffs would like, the Court believes that it appropriately balances the rights of the plaintiffs, the members of the WGA and the public.
Most disputes regarding credits in television and motion picture productions are determined in accordance with the arbitration proceedings of the WGA Agreement. This case presents the unusual situation involving plaintiffs who are not WGA signatories and not entitled to credit under the publication agreement which they signed but, in the opinion of the Court, are entitled to credit in order to avoid confusion in the minds of the public.
1 199 Civ. 10592, U.S. District Court, Southern District of New York (February 29, 2000).