Universal countersued in Fifty Shades of Grey dispute
An adult film company sued by Universal Studios for making a movie based on E.L. James’s best-selling book Fifty Shades of Grey has countersued, arguing that as the author’s work was previously in the public domain, it should not be protected by copyright.
Smash Pictures was sued in November 2012 by Universal and UK company Fifty Shades Limited for producing and distributing Fifty Shades of Grey: A XXX Adaptation.
Fifty Shades of Grey is the first instalment in a trilogy of books that follows the relationship between a female graduate and a rich entrepreneur. The books have sold more than 40 million copies worldwide and include explicit sex scenes involving bondage and sadomasochism.
Universal owns exclusive rights to motion picture versions of the book, and FSL holds trademark rights to the series.
Both companies allege that Smash’s adaptation makes no attempt to parody, comment or poke fun at James’s books and that Smash has been “intentionally free riding” on the trilogy’s success. They are seeking damages and a permanent injunction blocking further sales of the film.
But in a counterclaim filed at central California’s district court on March 4, Smash has challenged Universal’s claims, arguing that as much as 89 percent of the books comes from a fan fiction series based on Stephanie Meyer’s Twilight novels,Masters of the Universe.
As this content was placed on various websites including fanfiction.net between 2009 and 2011, Smash alleges that much or all of it is in the public domain and that Universal’s copyright claims are invalid and unenforceable. Smash also asked the judge to delay a hearing of the case but its request was denied.
Legal representatives for Universal and FSL say the porn producer’s counterclaim is misleading and flawed, particularly as earlier versions of Fifty Shades that were published online were written by the same author.
Paul Fakler, a partner at Arent Fox LLP in New York, said Smash’s claims are “very creative” but unlikely to succeed.
“It’s not at all clear what Smash pictures is alleging in its counterclaim. It appears from the motion papers that it is trying to give the impression that a different author has at some stage contributed to the work, but the plaintiffs allege the earlier works are by the author herself.”
Even if the earlier fan fiction was a collaborative effort, Fakler said this would not negate its copyright protection but could raise some interesting questions over who owns the rights to the text.
“It is very difficult under current US copyright law to inject work into the public domain. Once that work is fixed in a tangible medium of expression, it is protected even without registration, and I’m not aware of any cases where publishing something on a website, even if it’s fan fiction, has removed its copyright protection,” he added.
While the outcome isn’t certain, Fakler added that Gutierez’s refusal to delay a hearing of the case indicates that he is not convinced by its argument.
