“Disrespecting The Bing”

Introduction

A cartoon knockoff of HBO’s hit series “The Sopranos,” which had been used as ammunition in the advertising arsenals of groups pushing property-rights initiatives in four Western states, has been pulled following inquiries by the Center for Public Integrity.

The Web-based political ads — with virtually identical animated sequences and soundtracks but customized for each state — all urged viewers to “vote yes” on ballot measures that would radically reshape zoning, land-use, and environmental practices.

An HBO spokeswoman told the Center on October 4 that the network’s legal team was investigating, but it is unclear whether HBO took any action.

Two lawyers who specialize in intellectual property and entertainment law told the Center that both the creator of the “Sopranos” spots and the organizations that used them might be liable for copyright or trademark infringement.

Each political ad opened, as does the HBO show, with Tony Soprano driving through what appears to be northern New Jersey, passing oil storage tanks and the Statue of Liberty. In the ads, though, it wasn’t Jersey; depending on the Web site, it was Arizona, Idaho, Nevada, or Washington.

The ads, identically titled “Gangster Politicians: The Eminent Domain,” showed Tony and his mafia cohorts — with the help of government officials — taking over an ice cream parlor, a single-family house, and a church, all in the name of “Bada Bing Development.”

The Center asked HBO and several lawyers to examine the ads, which were created by Political Media, Inc., a political consulting firm in Washington, D.C.

“This is a matter for HBO’s legal team,” Tobe Becker of HBO told the Center in an e-mail message. “They are aware of these ads. I’m afraid we have no additional information to share with you at this time, other than to say we are looking into the matter.”

Political Media’s president, Larry Ward, told the Center that he didn’t realize the ads had attracted the attention of HBO’s lawyers.

“I don’t own the cartoons; I just design them,” Ward said. “It’s a parody. We did do plenty of legal research before we designed it.”

In a memorandum to the Center written before the ads were pulled, Jerry Glover, an entertainment and intellectual property lawyer whose Chicago-based firm represents such media companies as Paramount Pictures and Oprah Winfrey’s Harpo, Inc., wrote that HBO and the actors who appear in “The Sopranos” might have several causes of action, including copyright infringement. Glover noted that, even though no footage from the HBO series is used in the ads, the animated gangster characters strongly resemble characters from “The Sopranos.” If those characters have their own copyright protection, separate from the copyright protection enjoyed by the television series, he wrote, that protection may be the basis of an infringement action.

“The animated ad’s prominent use of ‘Bada Bing!’ [a strip club in the TV series] might . . . be sufficient for a separate trademark infringement action” by HBO, wrote Glover, senior counsel with The Entertainment & Intellectual Property Group, LLC.HBO holds at least two federal trademark registrations for the phrase “Bada Bing!,” records show.

James Gandolfini, who plays Tony Soprano, and other actors in the HBO series also might have a cause of action for violation of their right of publicity, Glover wrote.

“A visual similarity (even if not completely identical) plus a similarity in character traits may prove sufficient to constitute an infringement” of the character’s copyright protection, Glover wrote, quoting Nimmer on Copyright, the authoritative treatise on U.S. copyright law.

Glover’s memo went on to say: “The [‘Sopranos’] actors may argue that they have become so closely associated with their [‘Sopranos’] characters that the use of their animated likenesses and character names in the ads may lead people to believe they have endorsed the political position taken by those ads.”

Glover added, “The sponsors of the ad may have a free-speech argument that would be used as a defense to at least some if not all of the potential causes of action mentioned above.”

Another expert, Daniel Siegel, the vice president and legal counsel of CMG Worldwide, Inc., told the Center that the actors whose likenesses were featured in the political ads might have even stronger claims than HBO. The Indianapolis-based firm manages intellectual-property rights for more than 400 clients in sports, politics, and entertainment, including such legends as Babe Ruth, James Dean, Marilyn Monroe, and Malcolm X. (Siegel is in the firm’s Hollywood office.)

“The argument could be made that the ads [were] using those likenesses to imply that those actors [were] endorsing either side of the campaign,” Siegel said. “There’s a strong argument that that infringes on their right of publicity. The actors’ claims are probably stronger than HBO’s. I still think HBO has a reasonable claim here.”

Siegel added, however, that whoever produced the ads “would have a very strong parody defense, a fair-use defense,” to any kind of copyright claim.

James Gandolfini’s Los Angeles-based lawyer, David Weber, declined to comment.

The “Sopranos” spots appeared on the Web sites of the official ballot committees promoting Arizona’s Proposition 207 and Idaho’s Proposition 2, which would limit the use of eminent domain and require compensation for “regulatory takings,” as well as Nevada’s Question 2, which addresses only eminent domain.

A fourth group, the Citizen Taxpayer Association, also showcased a version of the “Sopranos” ad, this one in favor of Washington’s Initiative 933, even though the measure addresses only regulatory takings — not the eminent-domain abuses the ad portrayed.

Public filings show that both Arizona HomeOwners Protection Effort and Idaho’s This House is MY Home made payments of $23,086.83 and $21,999.02, respectively, to Political Media, Inc., on August 24, 2006. Similar records are not yet available in Nevada and Washington.

Steve Hammond, the president of Citizen Taxpayer Association, said that Political Media persuaded him to use the ad. “I can’t speak for the other states, but it was marketed to me not as strictly ‘off the shelf’ but not as an entirely special creation,” Hammond told the Center. “They said, ‘We have a parody in mind. Are you interested?’ ”

On all the Web sites, the ads were accompanied by this small-type disclaimer: “Neither HBO nor any individuals affiliated with HBO approved, sponsored, or endorsed this message.”

The ads, which began running in late September, were intended to be a form of “viral marketing,” which has been growing in popularity as an alternative to paid commercials. The four pro-initiative groups all encouraged Web site visitors to download the ads to their iPods; share them with friends, and link to them on their MySpace pages and in their personal blogs.