Wednesday, April 29, 2009

Two Las Vegas Adult Film Companies Battle Over “Deep Throat”

On April 24, 2009, a company named Arrow Productions Ltd. (“Arrow”) filed a trademark and copyright infringement lawsuit against V.C.X., Ltd. (“VCX”) and its owner David Sutton. See Arrow Productions Ltd. v. V.C.X., Ltd. et al, Case No. 09-cv-00737 (D. Nev. April 24, 2009). A copy of the complaint can be downloaded here. A story on the lawsuit was reported by the Xbiz newswire (link here)

Both Arrow and VCX are in the business of “selling prerecorded sexually oriented motion pictures for personal home use, presently and, in recent years, in DVD format and previously in VHS videotape format.”

According to the complaint, VCX is the successor-in-interest to a California corporation named VCX Incorporated formed in 1979 (along with related corporations named Direct Video Corporation and Showcase Video Corporation) in the early years of the home videotape market. Apparently, in 1986, one or more of those companies went into bankruptcy and a man named Rudy Sutton purchased the rights to the film libraries owned by those corporations from the bankruptcy trustee. Rudy later incorporated VCX in 1996. Rudy passed away on December 14, 2006, but the business has continued on under the direction of David Sutton. VCX now sells the films that it owns on DVD as well as over the Internet.

The basis of the lawsuit centers around VCX's alleged distribution of several thousand copies of the movie “Deep Throat” in early 2009.

Arrow claims to be the owner of the copyright to the original motion picture “Deep Throat” (Wikipedia, IMDB). Arrow states that the movie was created and directed by the late Gerard Damiano as a work for hire of Arrow’s predecessor-in-interest. According to Xbiz, “Deep Throat” was produced by Plymouth Distributing owner Louis "Butchie" Peraino, who later called the company Arrow Film and Video (now Arrow Productions).

One critical issue is whether or not the copyright rights to the original film are in the public domain (VCX apparently believes that they are). And because pre-1989 copyright law required all works to be published with a copyright notice, one issue is whether the movie was published without a copyright notice because, if it failed to do so, then the movie might be in the public domain based on pre-1976 copyright laws.

Without specifically stating whether or not copyright notices were printed on the early versions of the film that were shown in theaters, Arrow claims that during the early theatrical exhibition of the movie, Arrow always maintained control of the prints and the showing of the movie was “four-walled” (i.e., Arrow’s employees rented the theater, sold the tickets to moviegoers, collected the tickets, and operated the projected), and thus such theatrical exhibition did not constitute “publication” under the Copyright Act. [Any copyright experts care to field that argument?]

Arrow’s subsequent distribution of the film on videotapes purportedly had the required copyright notice. Arrow asserts that it registered its copyright to the movie in March 1979 (although curiously Arrow’s complaint does not mention the specific registration number).

In order to bolster its otherwise quite simple copyright infringement claim against VCX, Arrow throws in a barrage of trademark infringement claims. Arrow originally applied for the mark DEEP THROAT (for prerecorded videotapes involving adult content) back in 1998, but the application went abandoned after failing to respond to an office action. Arrow filed again in 2004, and this time, the mark was registered (for pre-recorded videotapes and DVD's featuring adult entertainment programs and movies). Arrow also registered the mark with the Nevada Secretary of State on February 23, 2009 (see E0094112009-8). Arrow claims to have used the mark to identify a series of adult movies going back to 1972.

Arrow’s complaint also cites to a trademark on the mark LINDA LOVELACE. Linda Lovelace was the pseudonym of Linda Susan Boreman, the actress who played the lead female character in the movie “Deep Throat” (and apparently also in one version of the sequel). However, “Linda Lovelace” was played by different actresses in several “Deep Throat” sequels and there were two additional movies other than “Deep Throat” that use the Linda Lovelace “character” in the title. Arrow currently has three applications pending for the LINDA LOVELACE mark (here, here and here). And for good measure, Arrow registered the mark with the Nevada Secretary of State on March 17, 2009 (see E0139232009-6 ).

Arrow’s causes of action are, with respect to the DEEP THROAT mark, for federal and state registered trademark infringement, counterfeiting [Query: if VCX's copy of the movie is an authentic copy (albeit unauthorized), how exactly is that a counterfeit?], common law trademark infringement, false designation of origin under Section 43(a) of the Lanham Act, and trademark dilution under federal and state law [Query: Is Deep Throat really famous as a mark identifying a source of goods or services – or famous as identifying a particular single work?]. And with respect to the LINDA LOVELACE mark, Arrow’s causes of action are for state registered trademark infringement, common law trademark infringement, false designation of origin under Section 43(a) of the Lanham Act, trademark dilution under federal and state law [Again, is Linda Lovelace really famous as a mark identifying a source of goods or services – or famous for the fact that it identifies a particularly famous pseudonym of an actress who appeared in the film?] Arrow’s final cause of action is for copyright infringement. [Placed in the complaint almost like an afterthought].

Arrow is seeking injunctive relief, an impounding and destruction of all infringing copies of the movie, and statutory damages (for the counterfeiting and copyright infringement claims).

Of course, despite the morass of causes of actions relating to trademark infringement in Arrow’s complaint, this case is really about copyright infringement, and more particularly, whether the film “Deep Throat” is in the public domain. After all, if the movie is in the public domain and all that VCX is doing is distributing that single work under that single title, then VCX is not using the term “Deep Throat” as a mark to identify the source of goods and services, but merely as the genuine title of the work.

Mark Felt – The “real” Deep Throat

[May 1, 2009 Update:
Steve Green has an article (link here) in the Las Vegas Sun which provides Sutton's response to Arrow's allegations.]


IKF said...

I think four walling would still constitute publication, but it's a possible way of claiming it was never being offered for sale. Interestingly the 1909 act says that showing a picture without offering it for sale to the public does not constitute publication. Footnote 95 discusses what does constitute publication ( I'm not even looking up for case law on what constitutes publication (which could deal with the issue), just the letter of the law.

For this matter the relevant law is the 1909 Copyright Act. Unless they can argue they registered it before it was ever "offered to the public", I'd say its in the public domain. I can't imagine a judge would feel that someone showing the film for profit for over eight years was somehow able to avoid publication. Arrow would also have to prove that at all times prior to 1979 they never lost control of the film. I cannot believe that copies of the film were not offered for sale or rental to others. The distribution of Deep Throat was huge. VCX just needs to show that prints were offered even for rental (and legally) to other non-Arrorw entities (not even actually sold). The lack of any other evidence or case law besides that one claim makes a bold statement will little to back it up.

Here is the actual definition of publication from Section 101

Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

To perform or display a work “publicly” means —

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.,

Also the 1988 Berne Convention Implementation Act would not have changed anything. The 1976 Copyright Act removed the failure to register equals public domain.

I think VCX just needs to prove publication and they can show the film is in the public domain.

I'm currently a copyright law student at SHU Law and study copyright law. I have done some work on film and copyright and interviews on the subject.

IKF said...

I should add that looking at point 27. If someone can find a tape or an offer to sell said tape before the "registration" in 1979, then Arrow will lose (and possibly on Summary Judgment for the copyright issue) and the film is in the PD, because it was not registered before or close to publication.

IKF said...

The Copyright Notice

Copyright Info from

Title appears in Document: List of Titles"
Type of Work: Recorded Document
Document Number: V1705P538
Date of Recordation: 1979-01-19
Entire Copyright Document: V1705P538 (Single page document)
Date of Execution: 27Jun78
Title: Deep throat & 2 other titles; motion pictures.
Party 1: Plymouth Distributors, Inc.
Party 2: International Home Video Club, Inc.
Links: List of Titles

Names: Plymouth Distributors, Inc.
International Home Video Club, Inc.