Advantage, Williams Sisters?

As Serena Williams effortlessly marched on to the third round of the U.S. Open in Flushing Meadow yesterday, it was a recent victory for the Open’s number-one seed on (or in) another court that caught the Sports Law Insiders attention in the last couple of weeks. On August 13, in the case entitled United States Tennis Association Incorporated v. VSW Productions LLC, M& M Films, Inc., Maiken Baird and Michelle Major, 13 CV 4124, District Judge Nelson Roman of the Southern District of New York granted leave to counsel for the production company founded by Venus and Serena Williams, as well as a second production company and several producers therein (defendants), to make a motion to dismiss a lawsuit filed in June by the United States Tennis Association (USTA). 

As we previously mentioned in this space on June 22, the USTA alleged in its complaint filed on June 14 that in mid-July of 2011, the Defendants approached the USTA seeking to include archival footage of the Williams sisters from prior U.S. Opens in their forthcoming feature documentary Venus and Serena.  In an e-mail to the USTA, the defendants allegedly stated that they were “entirely willing to agree to film only where and what [the USTA would] allow.” The USTA apparently agreed to work with the defendants, allowing them to engage a USTA-approved film crew to get footage from that year’s Open. Apparently, in the same email, one of the documentary’s producers said that one of the things he wanted the film crew to get footage of would be “Venus and Serena playing their matches with on court sound which we understand we will have to license” (emphasis added). 

While the parties apparently continued communications regarding the use and scope of the footage the defendants requested, the defendants requested to include both archival footage and 2011 U.S. Open footage recorded by its own production team (which by this time, the USTA had agreed to allow the defendants supply). The defendants requested nine minutes of footage for their 90-minute film. The USTA informed them that the maximum amount it would allow in the film would be five minutes of footage, with the executive director of the USTA becoming the final arbiter in whether to exclude the footage taken that was “not in the best interest of the sport.” However, while negotiations continued, in earnest, to come to a licensing agreement for both sides, the negotiations were unsuccessful, in part, apparently, because of the conditions that the USTA attempted to impose. As a result, the USTA allegedly left the negotiating table believing that the film had stalled in production, or that the film would be made without the U.S. Open footage. Game, set, match … right?  

However, when the film Venus and Serena premiered on October 10, 2012, there was, allegedly, over 20 minutes of unlicensed footage (12 minutes recorded by the defendants’ film crew and eight minutes of archival footage, as well) — footage that the USTA believed would never see the light of day in a production of any kind without a license. As a result, in early June, the USTA brought an action against the production company owned by Venus and Serena Williams, and others, claiming copyright infringement, unjust enrichment, and promissory estoppel, and seeking to permanently enjoin the distribution of the film. 

On July 2, the defendants’ counsel wrote a letter seeking a pre-motion conference prefatory to its making a motion to dismiss the complaint. In the pre-motion conference letter, the defendants evidenced their intent to use the defense of fair use on the copyright infringement claim, arguing that the threat and cost of legal proceedings should not prevent the filmmakers from “commenting on the Williams’ sisters’ highly public activities.” There is certainly a great argument to be made that the use of the footage is so transformative as to create an entirely new, stand-alone work worthy of copyright protection itself, and the use of the buzzword “comment” fits neatly within the confines of the fair use defense’s allowance of use of someone else’s copyrighted work for the purposes of commentary thereon. However, the fact remains that after apparently failing to come to a licensing agreement, and refusing to give up creative control on their documentary to the executive director of the USTA, the defendants went ahead and used the footage anyway — at the very least a fairly malicious allegation taken at face value. 

So, it appears that even after the U.S. Open fortnight ends on September 8, the Williams Sisters (or at least their attorneys) will be sticking around lower Manhattan until at least November.

 

Source: SDNY ECF Docket for the case United States Tennis Association Incorporated v. VSW Productions LLC, M& M Films, Inc., Maiken Baird and Michelle Major, 13 CV 4124.

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