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UPDATE: David Boies Charges Extortion As He Returns Fire In ‘The Butler’ Spat Between Warner Bros And The Weinstein Company

5TH EXCLUSIVE UPDATE: Weinstein Company attorney David Boies has responded to the legal letter sent by Warner Bros legal affairs over their dispute regarding use of the title The Butler on the Lee Daniels-directed film. The letter is directed to John W. Spiegel, the Warner Bros-hired lawyer who fired off the last letter July 4. Here is the latest, as Boies makes the move to secure a restraining order as the legal maneuvering continues. He says that Warner Bros is holding hostage the civil rights film to “extort unrelated concessions from TWC.” This is getting nastier and nastier:

Dear Mr. Spiegel:

Although you do not directly respond to my inquiry, I assume that you are the counsel who should be notified in the event it is necessary to seek a TRO.

I will not try to respond to your version of the facts in part because it is so inaccurate and incomplete that such an exercise would be extensive, and in part because your letter appears to be a press release masquerading as a lawyer’s letter. However, I briefly note your lack of response to three critical points.

First, if an anticompetitive “permanent” allocation of titles (and words used in titles) among competitors is a product of a horizontal agreement, that is an antitrust violation, not a defense.

Second, the purported order that TWC not use titles that it has already cleared pursuant to the MPAA’s own rules and procedures demonstrates that it is Warner Bros. and the MPAA that are at odds with established custom, practice, and procedure.

Third, none of this controversy would have occurred if Warner Bros. had not repudiated its representations and agreements not to object to “The Butler” in a transparent attempt to hold a major civil rights film hostage to extort unrelated concessions from TWC.

Sincerely Yours,

David Boies

4th EXCLUSIVE UPDATE: The July 4th holiday didn’t stop the battle between The Weinstein Company and Warner Brothers over the title to The Butler. Attorneys for Warner Brothers yesterday sent a letter to TWC counsel David Boies in response to director Lee Daniels’ personal appeal to WB to back down on its demand for a title change. In the letter, WB attorney John Spiegel stands firm, calling TWC’s “cries of unfairness and its threats to sue Warner ..unproductive and unwarranted”. Sources tell Deadline that Daniels received a personal response from CEO Kevin Tsujihara yesterday. Warner Bros had no comment on the matter. You can read the complete letter below:

July 4, 2013

David Boies, Esq.
Boies, Schiller & Flexner LLP
333 Main Street
Armonk, NY 10504

Re:The Weinstein Company/The Butler

Dear Mr. Boies:

We represent Warner Bros. Pictures (WBP) and Warner Bros. Family Entertainment (collectively, “Warner”). I write in response to your July 3, 2013 letter on behalf of The Weinstein Company’s (TWC). TWC’s cries of unfairness and its threats to sue Warner are unproductive and unwarranted responses to a situation that TWC alone has created.

Your letter conspicuously omits to discuss the actual course of events in this case. That is no oversight, of course, because TWC has flagrantly and repeatedly violated the rules of the Title Registration Bureau (TRB) of the Motion Picture Association of America, Inc. (MPAA). For many years, TWC (including its affiliates and its predecessor in interest, Miramax Film Corporation) has subscribed to the TRB rules and procedures. The TRB functions as the central registration bureau for its subscribers’ film titles of U.S. theatrical motion pictures. TWC is a voluntary subscriber to the TRB. In other words, TWC chooses to avail itself of the many services and benefits the TRB provides. In exchange, TWC, like anyone else who voluntarily elects to participate in the TRB process, agrees to be bound by the TRB’s rules and procedures. Over the years, however, TWC and its principals have operated in the TRB process with breathtaking hypocrisy. They have used the TRB rules and procedures to extract concessions from, and initiate arbitration against, other subscriber companies in order to advance TWC’s own interests. See, e.g., Phoenix Pictures/Miramax-Dimension Arbitration (Oct. 5, 1999) (awarding the Weinstein-controlled Miramax relief against Phoenix’s release of “Got To Be You”); New Line Productions/Miramax-Dimension Arbitration (Dec. 17, 2003) (awarding the Weinstein-controlled Miramax relief against New Line’s “Curse of the Mask”). At the same time, TWC has flouted those same rules if and when they have happened to conflict with TWC’s interests.

As TWC is well aware, TRB subscribers must register each and every one of their film titles and cannot use a title for which they do not have the rights under the TRB rules. See TRB Rules 3.1 and 5.1.2. Pursuant to TRB Rule 3.7.2.2, each subscriber may designate up to five hundred (500) titles as “Permanent Original Releases.” WBP chose to add its title, “The Butler,” to this list in May of 2010. Where, as here, a subscriber submits a title for registration that is identical to the title of a Permanent Original Release, TRB Rule 4.4.2.2 clearly provides that registration will be denied unless a waiver is obtained from the subscriber with the protected title. If a waiver is not obtained, the subscriber seeking to register the identical title can instead register a variation of that title. If the subscriber with the similar permanently protected title protests, the subscriber seeking to use the similar title can request an arbitration, and a panel of arbitrators then decides, based on numerous factors, including equitable considerations, whether or not there is “harmful conflict” between the titles, such that the party seeking to use the permanently protected title should be precluded from doing so.

These are the rules and procedures — among many others — which have been in place for decades, with which TWC is intimately familiar, and which TWC has invoked many times for its own benefit. And yet, as it has also done several times in the past, TWC has chosen to proceed in reckless disregard of the rules, apparently relying on a self-spun “Weinstein exception” to the rules whenever and wherever those rules do not solely favor TWC.

TWC’s violation of the rules in this case include the following:

(1)TWC began promoting its film in September 2012, two months before TWC even attempted to register the title with the TRB;
(2)TWC attempted unsuccessfully to register the title in November 2012, and continued to use the title without authorization for eight months after its registration was denied
(3)TWC delayed for four months seeking a waiver from WBP, during which time TWC continued to make unauthorized use of the title;
(4)TWC failed to timely register a similar title, that Warner would likely not have protested and, even had the matter gone to arbitration, would likely have resulted in TWC’s being able to use the similar title; and
(5) TWC continued to use the title for months after Warner declined to grant a waiver.

In light of the severity of TWC’s transgressions, it is unsurprising that the arbitrators ruled as they did. Indeed there was ample precedent for their ruling, including TWC’s own disturbing pattern and practice of flagrant TRB rules violations. For example, in 1997, the Weinstein-controlled Miramax released the motion picture “Scream” without having cleared the title in conformance with TRB rules. After the subscriber who protested Miramax’s unauthorized use sought arbitration, the panel, as the panel did in this case, enjoined Miramax from any further use of the title; prohibited Miramax from using the word “scream” in any form; awarded damages and attorneys’ fees to the opposing party; and ordered monetary sanctions for any prospective violations of the arbitration award. Similarly egregious violations of the TRB rules by your clients in connection with the motion pictures “Il Postino” (“The Postman”) and “Control” resulted in the imposition of similar injunctions and sanctions.

When viewed in light of the complete factual background, TWC could not reasonably have expected the arbitration in this matter to yield any result other than the arbitrators’ ruling. On the contrary, given TWC’s extensive experience with the TRB and intimate knowledge of the rules, it is truly astounding that TWC chose once again to flout the rules, especially when there were so many opportunities for TWC itself to obviate the harm that TWC now claims. Had TWC timely sought to register the title and timely sought a waiver from Warner, there would have been ample opportunity for TWC to register a clearly similar title if Warner denied the waiver. TWC could have registered any number of alternative titles featuring the word “Butler.” In fact, TWC registered the title “Lee Daniels’ The Butler,” which Warner did not protest and which TWC could easily have used. Instead, TWC insisted on continuing to use an unregistered, uncleared, protested title, giving Warner no choice but to bring an arbitration against TWC, not only to defend Warner’s own rights in this case but to defend the integrity of the TRB rules and procedures.

I also note that, as your client is well aware and contrary to what you have written in your correspondence, Warner never agreed that TWC could copy Warner’s protected title. TWC attempted to make this argument at the arbitration hearing and it was soundly rejected by the arbitrators. The evidence was clear and unambiguous that Warner expressly rejected TWC’s request for a waiver — including at least twice in writing — and that TWC continued to use the title in willful disregard of Warner’s rights and in violation of the TRB rules.

In light of the complete background, it is obvious that the accusations your letter makes are both baseless and fruitless, and that TWC is trying to twist this dispute into something it is not. Warner is in no respect trying “to restrict the marketing and distribution” of TWC’s motion picture. The fact that TWC is now using a campaign of misinformation about those rules and procedures to gin up publicity for the film is not lost on anyone. Indeed, the New York Times noted just yesterday that TWC is following its well-worn path of creating “well-publicized controversies” on the eve of a film’s release. http://artsbeat.blogs.nytimes.com/2013/07/03/its-weinstein-vs-warner-brothers-over-use-of-the-title-the-butler/.

TWC’s attempt to re-litigate a case it lost in arbitration – whether in the press or in court – will never succeed. The TRB rules make it abundantly clear that TRB arbitration is the sole and exclusive remedy for resolving any and all title disputes. The courts do not allow parties like TWC to “sit idle through an arbitration procedure” and then collaterally attack that process in a lawsuit “when the result turns out to be adverse.” Marino v. Writers Guild of America, East, Inc., 992 F.2d 1480, 1484 (9th Cir. 1993). Your suggestion that the TRB rules that TWC voluntarily elected to subscribe to violate the antitrust laws is specious. See Guichard v. Mandalay Pictures, 2005 WL 2007883, at *4 (N.D. Cal. Aug. 22, 2005) (rejecting claim that TRB rules violated antitrust laws); Guichard v. Universal City Studios, 2007 WL 1750216, at *7 (N.D. Cal. June 15, 2007) (rejecting analogous claim that TRB rules were unfair business practices). And, your insinuation that there is some irreparable injury in TWC being subject to sanctions of $25,000 per day for continuing to flout the rules is meritless. If TWC believes that sanction is unwarranted, TWC can make that argument to the arbitration panel or in the appeal process that TWC has voluntarily decided to avail itself of. In all events, the idea that a sanction of $25,000 per day will cause some catastrophic harm to a corporation with the immense resources of TWC and the Weinsteins is self-evidently absurd. TWC’s litigation threats are just more hollow posturing by a party that does not have the facts, law or equity on its side. Let me assure you that Warner will vigorously defend any attempt by TWC to circumvent rules and procedures to which it has voluntarily subscribed and to which it is indisputably bound. It should go without saying that we expect TWC to preserve all relevant documents.

The foregoing is not a complete recitation of all of the facts and law pertaining to this matter, nor a waiver of any of Warner’s rights, remedies, defenses and positions, all of which are expressly reserved.

Very truly yours,

John W. Spiegel

JWS:rcp

cc:John Rogovin, Esq.
Henry Hoberman, Esq.
Floyd Abrams, Esq.

Dominic Patten contributed to this story.

3RD EXCLUSIVE UPDATE: While the lawyers battle it out over the MPAA’s decision to block The Weinstein Company from using the title The Butler because of a nearly century old silent short film that Warner Bros owns, director Lee Daniels has appealed directly to Warner Bros Entertainment CEO Kevin Tsujihara to screen his film and perhaps lean on his lawyers to ease up and settle a holiday week skirmish that borders on the absurd. I’m still sure some last minute horse trading will go down and TWC will get to use the title, but at this point neither side seems of a mind to back down. Deadline Hollywood has obtained the letter by Daniels, who most recently directed Precious and The Paperboy. Daniels has CC’d Tsujihara’s new film team of Sue Kroll, Dan Fellman and Greg Silverman for good measure. Read the letter below:

Dear Mr. Tsujihara:

I have spent the last four years of my life working on the film, The Butler, and it is the proudest moment of my professional career. I am heartbroken as I write this letter to you. I made this film so I could show my kids, my family, and my country some of the injustices and victories African Americans and their families have experienced in the fight for Civil Rights. There are so few depictions of strong black families in our cinematic history and it was of paramount importance to make this movie about a family who endured and survived unimaginable discrimination in their quest for the American Dream. Through the eyes of this loving and hard-working African American family, the film tells the story of the Civil Rights Movement from the sit-ins and the Freedom Riders, to Selma, Martin Luther King’s assassination, and the election of the first Black President. THE BUTLER is not only a story about a black family and black history; it is a universal story about family and OUR history.

I am so proud of this movie. Every member of our cast worked for almost nothing so that this story could be told with only our very small budget. If we were to change the title a mere six weeks before we open, it would most certainly hurt the film by limiting the number of people who would ultimately see this important story. This movie is not a blockbuster, nor did we intend it to be. We just wanted to tell the dark and beautiful story of our nation’s racial history, where we came from, and how far we have come.

Our brilliant writer Danny Strong, amazing cast, and I would like to offer to screen our movie for you today. I beg you to see it before you decide to force us to change the title. I truly believe that once you watch it, you would not want to cause this film any harm. I feel that if this film can succeed and reach people’s hearts, it will only help pave the way for other films that strive to educate and inspire, just as THE HELP and your very own 42 has done for us. These films, along with the upcoming fall releases of MANDELA, FRUITVALE STATION, and 12 YEARS A SLAVE, serve as crucial moments in film and Black history. An artistic movement is afoot. THE BUTLER is a part of this and I plead you not to hurt the chances of this story reaching as many hearts as it possibly can.

I have great admiration for your studio and the films you make. I believe you would not be disputing the title if you did not feel just in doing so. I am sure there are behind-the-scenes issues of which I am not aware, but I simply want you to know how deeply it is affecting the artists involved and the message we all fought so hard to share.

I truly hope you will accept my invitation to see the film at your earliest convenience. I strongly believe that if you do, you will root for it not just as film lovers, but as proud Americans.

With all the love in my heart,

 

Lee Daniels

With the support of:
Forest Whitaker
Oprah Winfrey
Cuba Gooding, Jr.
David Oyelowo
Danny Strong

cc: Dan Fellman
Sue Kroll
Greg Silverman

2ND EXCLUSIVE UPDATE: The Weinstein Company is fighting back after coming out on the losing side of an MPAA ruling that permitted Warner Bros to block TWC from using the title The Butler on an upcoming film so WB can protect its nearly 100-year old same-titled silent short. TWC attorney David Boies has sent letters to both Warner Bros and MPAA lawyers that advise he will potentially file an anti-trust suit and will most certainly file a temporary injunction order to stop daily $25,000 fines TWC is being hit with before an appeal could be heard. In the letter to Warner Bros General Counsel, Boies maintains “that Warner Bros represented to, and agreed with, TWC that TWC would be permitted without objection by Warner Bros to use the title of The Butler in return for certain contributions that TWC agreed to make…After TWC had relied on these representations and agreement, Warner Bros repudiated those representations and agreement and sought, in concert with the MPAA, to prevent TWC from using its title.” To the MPAA, Boies argued The Butler is an important civil rights feature film that is being put through this trouble “on the grounds that title is ‘permanently protected’ because Warner Bros on March 13, 1916 released a short subject picture with the same title. The Warner Bros, 1916 short has not been displayed or exhibited for almost a century and there is no plausible basis to contend that there is any chance of confusion between the two productions. To the extent that the MPAA in concert with its members seeks to ‘permanently protect’ titles where there is no plausible claim of possible confusion, and no claim of actual damages, such an attempt would be a naked restraint on trade in violation of the anti-trust law.” In a second letter, Boies harangues the MPAA for invoking a fine of $25,000 per day until TWC drops the title of The Butler and chooses a title that does not employ any variation of the word “butler.”

Boies further claims that if the MPAA and Warner Bros won’t stop the clock on the fines until its appeal process is exercised, that the attorney will file seeking a temporary restraining order over the next 48 hours. Below are both letters.

To Warner Bros. GC:

As you are aware from my correspondence with the MPAA on the subject of TWC’s 2013 civil rights feature film “The Butler” I represent TWC in connection with that picture and the apparent efforts of Warner Bros. in concert with the MPAA to restrict the marketing and distribution of that picture. I won’t repeat the facts as I understand them that are set forth in the correspondence to the MPAA, of which you received a copy. However, I am informed that Warner Bros. represented to, and agreed with, TWC that TWC would be permitted without objection by Warner Bros. to use the title “The Butler” in return for certain contributions that TWC agreed to make. I am further informed that after TWC had relied on these representations and agreement, Warner Bros. repudiated those representations and agreement and sought, in concert with the MPAA, to prevent TWC from using its title. We, of course, reserve all rights to recover from Warner Bros. the damages TWC is suffering as a result of Warner Bros. repudiation of its representation and agreement.

As I indicated in my correspondence with the MPAA, I would hope that we could avoid the necessity of litigation. However, in the event that the coercive element of yesterday’s “Arbitration Award” could not be suspended while we seek a resolution, I would ask you to give me the name and contact information of counsel whom you wish to have notified in the event it is necessary for us to seek a temporary restraining order over the next 48 hours.

We, of course, expect that Warner Bros., including its affiliates, will preserve all relevant documents.

Sincerely Yours,

David Boies

To GC MPAA:

This firm represents The Weinstein Company (“TWC”). I have reviewed a copy of a “Arbitrators’ Award” dated July 2, 2013 in which the Motion Picture Association of America Inc. (“MPAA”) in concert with Warner Bros. Family Entertainment (together with its affiliates and parent, “Warner Bros.”) seeks to compel TWC to take certain action and to impose certain monetary penalties on TWC.

The MPAA and Warner Bros. seek to prevent TWC from using the title “The Butler” for an important civil rights feature film on the grounds that that title is “permanently protected” because Warner Bros. on March 13, 1916 released a short subject picture with the same title. The Warner Bros. 1916 short has not been displayed or exhibited for almost a century and there is no plausible basis to contend that there is any chance of confusion between the two productions. To the extent that the MPAA in concert with its members seeks to “permanently protect” titles where there is no plausible claim of possible confusion, and no claim of actual damages, such an attempt would be a naked restraint on trade in violation of the anti-trust laws.

Moreover, the MPAA and Warner Bros. seek not only to prevent TWC from using the title “The Butler”, but also to prevent TWC from using any title that included any use of the generic word “butler”. (For example, the MPAA and Warner Bros. seek to prevent TWC from using the title “The Whitehouse Butler” even though that is not a title that the MPAA has ever previously purported to “permanently” allocate to Warner Bros. and even though there is no possibility of confusion between TWC’s 2013 civil rights feature film and Warner Bros. brief 1916 short.) The attempt by the MPAA and Warner Bros. to “permanently” allocate among competitors the right to use certain words in titles is a further naked restraint of trade, and one that goes beyond any plausible interpretation of the MPAA’s own rules.

Making matters worse, the MPAA and Warner Bros. threaten TWC with penalties of $25,000 per day unless TWC immediately stops any reference to “The Butler” as the title of its pending picture and takes further action intentionally designed to damage TWC and its picture. As the MPAA and Warner Bros. are aware, marketing for the TWC civil rights picture using the title “The Butler” has already been underway, and was already well underway prior to the time that Warner Bros. commenced its “arbitration” in concert with the MPAA. Under those circumstances, the action of the MPAA and Warner Bros. clearly has the purpose and effect of severely damaging TWC’s civil rights picture and TWC itself. I note that the MPAA and Warner Bros. seek to coerce TWC into abandoning its use of the generic word “butler” in its title before TWC has had an opportunity to avail itself of any review or appeal of the “Arbitrators Award” either within the MPAA itself or in court by purporting to impose $25,000 per day penalties immediately if TWC does not so abandon its use of the word.

I would of course, urge the MPAA (and Warner Bros) to agree at a minimum to suspend the punitive penalties that the MPAA and Warner Bros. purport to impose until we have had an opportunity to resolve this without litigation. If the MPAA and Warner Bros are unwilling to do so, please provide me with the name and contact information of counsel who will be representing the MPAA for purposes of notifying them if it is necessary to seek a temporary restraining order over the next 48 hours.

We do, of course, expect that the MPAA, Warner Bros., and their respective members and affiliates will preserve all relevant documents.

Thank you for your prompt attention.

Sincerely yours

David Boies

EXCLUSIVE UPDATE: Stung by an arbitration ruling from the MPAA’s Title Registration Bureau that potentially forces it to change the title of the Lee Daniels-directed The Butler, The Weinstein Company is filing an appeal and has secured the services of noted attorney David Boies to explore a potential lawsuit claiming that Warner Bros motive isn’t to protect the title of an obscure silent short film, but rather to extract another piece of business from TWC in exchange for it allowing the use of the title on a film that has been widely advertised with that moniker. Boies is already coming out firing, as he issued this statement: “The suggestion that there is a danger of confusion between TWC’s 2013 feature movie and a 1917 short that has not been shown in theaters, television, DVDs, or in any other way for almost a century makes no sense. The award has no purpose except to restrict competition and is contrary to public policy.”

UPDATE, 5:43 PM: Warner Bros has been awarded the right to the title for The Butler and The Weinstein Company has to find a new name for its upcoming White House drama. In fact, under the ruling of Title Registration Bureau arbitration conducted today in the MPAA’s LA offices, TWC had until midnight tonight to remove the word “Butler” from all their marketing, promotion and other material related to the Lee Daniel’s directed film. WB claimed the rights to the title based on a 1916 short with the same name. The arbitrator agreed. “TWC made continuous use of the unregistered title The Butler in willful violation of the TRB rules,” said the arbitrator’s award today. Starring Forrest Whitaker, Jane Fonda, Oprah Winfrey, Robin Williams and Alan Rickman among others, the film chronicles the various administrations an African-American butler served under in the Executive Mansion during the last half of the last century. The film is scheduled to be released on August 16. 

PREVIOUSLY, MONDAY PM: A title fight is brewing between The Weinstein Company and Warner Bros over The Butler, the Lee Daniels-directed historical drama that stars Forest Whitaker, Oprah Winfrey and David Oyelowo, with a stellar cast playing small roles as the occupants of the White House during one man’s tenure as butler for eight presidents. Warner Bros is trying to block Harvey Weinstein from using the title The Butler on the film, and it seems like a real “screw you”. Warner Bros is claiming it has rights to the title because of a 1916 silent comedy short called The Butler. That one was produced by the Lubin Manufacturing Company and released by General Film Company, and is now in the Warner Bros library. This sure sounds petty, and there is a high level of outrage at The Weinstein Company, I’m told. Particularly because within just the past few weeks, TWC raised a challenge to the Warner Bros film The Good Lie because it is close to the TWC title The Good Life. When Warner Bros lawyers called, TWC demurred and gave Warner Bros the necessary clearance. I’m told that TWC’s attempts to coax Warner Bros included appealing to them on the grounds this prestige film is the last from Laura Ziskin, the late Spider-Man producer who was well liked in town. There have also been appeals made by director Daniels, to no avail. I’m not sure if Winfrey has reached out or not. This will go to arbitration shortly, and each side seems dug in.TWC is determined to use that title, which is what the picture was being called when TWC acquired it in script stage from Sony Pictures. The film is based on Wil Haygood’s 2008 Washington Post article “A Butler Well Served By This Election,” which introduced Eugene Allen (the character is named Cecil Gaines in the film) and reported that after observing up close the slow and tumultuous developments in the battle for Civil Rights, he was invited back to the White House for the inauguration of Barack Obama as the first African-American president.

These things are usually settled with a little horse trading, such as the time Austin Powers In Goldmember ran a trailer attachment on its film to solve the deliberate similarity to the 007 film Goldfinger. This will have to be settled soon, as the movie will be released August 16. Insiders at Warner Bros said simply that TWC should have tried to clear the title earlier, and that Warner Bros is protecting its rights because it can. Stay tuned.

Dominic Patten contributed to this report