Do You Believe in Magic?

Teller, of Penn & Teller, recently won a resounding victory in Federal District Court in Nevada.

This case has stretched on for about two years, due mostly to the foreign defendant avoiding participation in the case, and representing himself.

In 2012, Defendant Gerard Dogge posted a video on YouTube showing an improved version of Teller’s famous Shadows illusion (seen here with commentary). The improved routine consisted of the same effect, with nearly identical staging and progression. The main differences were that a clear vase was used, and water was poured from the vase after the illusion finished.

Generally, magic effects are not subject to IP protection. However, in the mid 80s, Teller had the foresight to copyright the pantomime presentation of his effect. While the effect itself cannot be copyrighted, the way in which the effect is presented may.

Teller initiated this copyright infringement and unfair competition (based on use of Teller’s name in marketing the knock-off illusion). In March the judge granted Teller summary judgment of copyright infringement, and in late-September the court granted Teller’s motion for default judgment on the unfair competition and willful infringement counts due to the Defendant’s continued lack of meaningful participation in the litigation.

There are a couple of worrying elements of the opinion. First, on page 8, the judge states the wrong standard for a permanent injunction. He includes the element “a likelihood of success on the merits,” which is an element of a preliminary injunction (before a decision on the merits of the claims). Here, the judge already decided that Teller succeeded, so it should be clear that the likelihood of his success should not factor into whether an injunction should issue.

Second, the judge, at least partially, based Lanham Act and Copyright Act counts on the same underlying work. It’s a nuanced issue, that due to the defendant representing himself likely did not get the attention it deserves. But the judge essentially held that you can infringe copyright by performing Teller’s trick, and that you can infringe trademark by performing Teller’s trick – because the trick is a “signature trick.” Typically you only get one kind of intellectual property protection per item.

Finally, the judge awarded Teller a strikingly broad injunction, which is worrisome in any case involving speech.

I point these out not to pick a fight with Teller, whom I deeply respect, but just to highlight some interesting issues in what is a serious win for magicians protecting their IP.