Cleo Suero

Cleo Suero

On September 30, 2021, the Second Circuit made a significant ruling regarding authors’ termination rights under the Copyright Act of 1976. The ruling was in the case Horror Inc. v. Miller[1], whereby the Second Circuit had to decide whether Victor Miller created the screenplay for the horror flick Friday the 13th as an employee or independent contractor of the production company, Manny Company, to which he assigned his rights to the screenplay for just $9,000 in 1979. Miller’s employment status was key to determining whether he was entitled to terminate his grant of rights decades later.

Under the Copyright Act, copyright ownership typically “vests initially in the author or authors of the work”, i.e. the person who actually creates the work.[2] However, there is an exception for a work “made for hire”—in this instance, "the employer or other person for whom the work was prepared is considered the author.”[3] Consequently, unlike an author, a creator of a work-for-hire is unable to terminate prior transfers of ownership of any or all of the exclusive rights in a copyright under Section 203 of the Act.

Horror Inc., which subsequently acquired the rights to the screenplay, sought a declaration that Miller was just an employee at the time and the screenplay he wrote was only a work-for-hire. Ultimately, however, the Second Circuit affirmed the District Court’s ruling that Miller wrote the screenplay as an independent contractor under copyright law and as such it was not a work-for-hire. Therefore, Miller, as the author, had the right to terminate his transfer of, and reclaim ownership to, the copyright to the scary screenplay.

Horror Inc. v. Miller, No. 18-3123-cv, 2021 WL 4468980 (2d Cir. Sept. 30, 2021).

17 U.S.C. § 201(a).

17 U.S.C. § 201(b).

Recently, British artist Stuart Semple made headlines when he created a 150 ml tube of “super flat matte high-grade shade” acrylic paint called “TIFF” and sold it for $28 on his e-commerce site.[1] The buzz around this pre-order project centers on the fact that the tube oozes a particular robin’s egg blue hue, No. 1837 in Pantone’s Color Matching System, which is synonymous with the jewelry brand, Tiffany & Co. In doing so, Semple endeavors to “liberate” the signature shade and make “this once unattainable color” available to “all artists to use in their creations.”[2] However, through this project, Semple also highlights the bounds of protection that colors have as trademarks under U.S. trademark law.

In the seminal case Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995), the Supreme Court held that the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color. Though, not just any color can be trademarked, nor can any trademarked color enjoy widespread protection. As explained in the Qualitex decision, a color mark consist of one or two colors that are used on a particular object and act as a symbol with which consumers identify a particular brand. Examples of popular color marks include Post-Its’ canary yellow adhesive stationary notes or Christian Louboutin’s bright red contrasting outsoles. Likewise, Tiffany & Co. maintains multi-class trademark registration for its blue shade, but only for its use on its boxes, drawstring jewelry pouches, shopping bags, retail services, jewelry featuring the color, and the like. As such, Tiffany &Co.’s trademark registration is specifically and narrowly tailored to the actual and consistent uses the brand makes of the color. Tiffany & Co. does not, in turn, have a monopoly on the color, which would otherwise hinder artists’ ability to use it. Accordingly, if artists incorporate Tiffany & Co.’s blue in their works, it is not necessarily “ILLEGAL” as Semple claims.[3] While it is true that Tiffany & Co. and other brands that have registered color marks do enjoy protections, these protects are limited to specific good and/or services.