In an important victory for those concerned with maintaining Safe Harbor protections on the Internet, online streaming site Justin.tv won a partial dismissal of trademark claims and full dismissal of Communications Act claims that were brought against it by Zuffa LLC.
The U.S. District Court in Nevada, citing the U.S. Supreme Court’s opinion in Dastar v. Twentieth Century Fox Film Corp., dismissed plaintiff Zuffa LLC’s claims for infringement of its “octagon” fighting-arena design mark. The court found the trademark to be an inherent part of a streaming mixed martial arts video in which it was displayed and expressed concern that enforcing Zuffa’s rights in a mark, displayed as an inherent part of a copyrighted broadcast, would run afoul of the rule of Dastar. It bars trademark protection for copyrightable works and held that the Communications Act did not apply to defendant’s purported conduct.
Defendant Justin.tv operates a website that allows users to stream or broadcast live video across the internet to other Justin.tv users, akin to YouTube or Vimeo but for live rather than prerecorded video. Zuffa, LLC, which operates and does business as the Ultimate Fighting Championship (UFC), owns trademarks, including Ultimate Fighting Championship, UFC and the “Octagon” (the eight-sided ring in which UFC mixed martial arts bouts take place). Plaintiff often broadcasts its copyrighted bouts on television, particularly pay-per-view.
Plaintiff sued defendant based on the live-streaming of a UFC fight through Justin.tv’s service, asserting 12 claims of copyright and trademark infringement, unfair trade practices under Nevada law and violation of laws related to cable and satellite theft.
In its motion to dismiss trademark claims, defendant relied on the Supreme Court’s decision in Dastar 539 U.S. 23 (2003) wherein the justices held that reverse passing-off claims under the Lanham Act cannot be used to create “mutant copyrights or perpetual copyrights.” They concluded that a once-copyrighted video series that had fallen into the public domain could be edited and resold without “proper” attribution to the original creators.
The lower court recognized that the Zuffa case differed from Dastar; rather than turming on a physical product with modified intellectual property, this case involved the display of trademarks in a video stream. The case did not involve a “reverse passing-off” or even a “passing-off” claim, but rather a basic trademark claim that needed hearing at an early state of the case.
The court did curtail plaintiff’s trademark claims, ruling that under Dastar, the plaintiff could not proceed on a claim for display of trademarks inherently part of the copyrighted broadcast (such as the Octagon) because, if this were allowed, Zuffa would possess a mutant or perpetual copyright because nobody then could copy the video and display it, regardless of whether the video had entered the public domain. The court elected to address later whether the UFC’s watermark logo or other trademarks were an “inherent” part of the video.
The court also dismissed plaintiff’s claims under the Communications Act, holding it does not apply to defendant’s alleged conduct in this case, actions better addressed under copyright law.