Written by Eleanor M. Lackman and Theresa B. Bowman 

On March 30, 2020, in Blaney, et al., v. XYZ Films, et al., the U.S. District Court for the Eastern District of New York dismissed copyright infringement and false endorsement claims arising out of the depiction of a well-known Brooklyn mural in the dystopian, thriller motion picture Bushwick.  While the defendants undeniably filmed, and thus reproduced, the mural in the motion picture, the court held that such copying was both de minimis and fair use and therefore not copyright infringement.  In dismissing the false endorsement claims, the court determined that the defendants’ use of the mural created little risk of confusion that the murals’ creator and subject, both peace activists, endorsed the defendants’ motion picture.

The decision bolsters the ability of movie and TV production companies to depict, accurately and briefly, iconic or well-known community sites as part of background “establishing shots.”  Meanwhile, the outcome might inject some uncertainty into whether artists can pursue licensing revenue for works depicted in those films and TV shows.

Blaney is a 19-year-old environmental activist, actress, and singer-songwriter best known for her work reflecting her indigenous community in Canada.  LMNOPI is a street artist and activist whose visual art focuses on human rights.  At the center of the dispute is a tagged (i.e., signed) mural by LMNOPI that depicts Blaney and is located on a building wall above the entrance to the Jefferson Street subway stop in Bushwick, Brooklyn.

Bushwick was produced by XYZ Films and later distributed by co-defendants Netflix, Amazon and Google.  About a year after the movie’s release, LMNOPI and Blaney realized that the mural appeared for nearly four seconds in the opening scene.  They claimed that the mural’s depiction suggested that they had endorsed the film.  LMNOPI also alleged that the mural’s use in the film infringed her copyright rights.  The defendants moved to dismiss both claims under Federal Rule of Civil Procedure 12(b)(6).  They conceded that LMNOPI’s copyright was valid and that the motion picture had, in fact, copied the mural.  However, the defendants argued that because their use of the mural was “de minimis,” the works were not substantially similar in protected expression.

Even where, as in Blaney, the defendant admittedly copies the plaintiff’s work, a plaintiff in a copyright infringement lawsuit must still show that his or her work and the defendant’s work are “substantially similar” in protected expression.  Thus, plaintiffs must show that the copying was of some “protected expression” in the earlier work and that the copy was “more than de minimis.”  In finding that any use of the mural was de minimis, the Blaney court closely followed the reasoning in the pleading-stage dismissal of a copyright infringement claim in Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 632 (S.D.N.Y. 2008).^[1]  Summarizing the de minimis approach to substantial similarly, the court explained that, “the law does not concern itself with trifles.”  In other words, the law does not provide relief for every instance of copying of protected works.  There is no bright line, but courts generally ask whether the “average lay observer” would notice the similarity between the two works, taking into consideration the length of time the work is displayed and the focus and prominence of the display.

Consistent with prior legal principles, the Blaney court focused on whether the appearance – or observability – of the mural in Bushwick was sufficiently significant.  While the use lasted mere seconds, the plaintiffs argued that the mural was still prominently featured with clarity.  However, the court characterized the plaintiffs’ assessment as “grossly overstated.”  In fact, the court observed, the mural was one of several murals that made only a “brief cameo” in the background of a 93-minute film.  In the shot itself, the focus was on the actress standing in the foreground; the mural was merely a backdrop and was partially obscured by street traffic.  Although LMNOPI argued that the mural is a key landmark in the Bushwick neighborhood, the court found that the mural was “completely irrelevant” to the plot of the film.  Finding the relevant facts to be virtually identical to those in Gottlieb, and rejecting LMNOPI’s cited authorities, the court concluded that the use was easily de minimis.

The court also agreed with the defendants that the depiction of the mural constituted “fair use.”  The “fair use” defense provides, among other things, that a defendant may use copyrighted works as part of its own new work, as long as the new use is “transformative” (that is, communicates something new or different from the original), does not take too much of the original work, and does not supplant a likely market that belongs to the copyright owner.  In Bushwick, the court determined that the film’s use of the mural was transformative because the mural oriented the viewer to a recognizable location in Brooklyn, and did not – as the artists originally intended – convey a specific social or political message.  As to market harm, the court was persuaded that the target audience of the mural – street art enthusiasts – was very different from the film’s target audience –fans of “action thrillers.”  The court rejected the argument that licensing for background use was an important component of licensing revenue for LMNOPI, finding the use did not substitute for a licensed use.

Plaintiffs similarly argued that the makers and distributors of Bushwick misled consumers into thinking that Plaintiffs approved of the film – given that their “tag” and likeness appeared in the mural.  This “false endorsement” claim also failed.  The court acknowledged that under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), a Lanham Act claim involving an expressive work cannot survive if the use has any artistic relevance and is not explicitly misleading.  In light of how fleeting the use in Bushwick was, the court determined that it was implausible that anyone would believe plaintiffs had endorsed the motion picture under any test – and particularly implausible in light of the elevated standard in Rogers.

In most respects, the court’s application of copyright and trademark law in this case is straightforward.  The outcome is notable, however, because the holding is a strong statement signaling courts’ future skepticism over granting protection for works displayed in background or “B roll” type footage.  While de minimis use and Lanham Act arguments often survive motions to dismiss, the Blaney ruling is a reminder of the increasing trend of dismissing copyright and Lanham Act claims for “blink and you’ll miss it” copying of a protected work.

[1] MSK partner Eleanor M. Lackman was counsel for defendant in the Gottlieb case.