By: David Lally
“Scary Terry” was born during the 2018 NBA Playoffs, as he became both a nightmare for opponents and a folk hero in the city of Boston. The Kyrie Irving experiment was still in its infancy, and with the All-Star point guard out for the playoffs, the Boston Celtics (“Celtics”), were desperate for a spark off their bench. Enter the scream mask, and at the time, back-up point guard, Terry Rozier, who elevated his game in the post-season, averaging 16.5 points, 5.3 rebounds, and 5.7 assists per game. Taking full advantage of his opportunity, Rozier played a major role in getting the Celtics to the Eastern Conference Finals and in the process, entered the NBA spotlight, launching his brand to new heights.
Rozier adopted the “Scary Terry” alter ego earlier in the 2018 season, but paired it with a mascot design that morphed his own image with that of a well-known movie prop; the mask worn by the “Ghost Face” killer from the hit 1996 slasher film “Scream,” during the Boston Celtics playoff run. As Rozier became more known to fans he was able to sell “Scary Terry” t-shirts and sweatshirts using major vendors such as Barstool Sports, Amazon, and Etsy. Rozier further promoted his new clothing line on Instagram and Twitter and caught the attention of some parties who took issue with the “Scary Terry” mascot. Easter Unlimited, a New York corporation that does business as Fun World, sued Rozier for copyright infringement, trademark infringement, counterfeiting, and dilution by blurring for his use of the “Scream” mask on his articles of clothing. Fun World is in the business of designing, manufacturing, and marketing products for Halloween and other holidays and owns the relevant intellectual property of the “Ghost Face” killer mask. Fun World permitted the producers of “Scream,” along with the movie’s sequels and accompanying TV series to use the mask through contractual licenses, but gave no such permission to Rozier. As a part of its claims, Fun World demanded that Rozier pay up to $150,000 for each act of infringement, plus other damages and attorneys’ fees, which could have totaled millions of dollars. Fun World also demanded a permanent injunction against Rozier to prevent him from further commercializing “Scary Terry.” The two sides litigated the case for three years, and on September 27, a New York federal judge delivered the court’s ruling.
The ruling came down in an 85-page order authored by U.S. District Judge Kiyo A. Matsumoto, in favor of Rozier, rejecting the copyright and trademark claims by Fun World. The judge stated that Rozier’s use of the mask and the humor attributed had transformed the horror villain in a way that did not infringe on the costume company’s copyright. As Judge Matsumoto explained in her opinion, the nickname reflected several dynamics. For one, “it was intended to humorously invoke the fear that Mr. Rozier’s ‘dangerous’ ability to score supposedly instilled in his opponents.” Fun World produced evidence of ownership of a valid copyright and Rozier admitted that “Scary Terry” draws from the “Ghost Face” killer, but still he insisted he broke no law. The court agreed, mainly due to the principle of “fair use,” wherein a defendant’s copying reveals a different purpose from that of the creator. A claim of copyright infringement will fail when the copying was fair use.
According to 17 U.S.C.A. § 107, which sets out the limitations on exclusive rights, in determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. In this case, Judge Matsumoto expressed, the “Ghost Face” “was licensed for use in the Scream films, in which it was worn by a serial killer and was instilled with meaning beyond a Halloween ghost costume.” In contrast, Rozier’s “use of the Scream mask to create a humorous embodiment of an NBA basketball player who was known as a ‘killer’ scorer further transformed the Ghost Face mask with new meaning, expression and messaging.” The judge’s reasoning would follow the first prong of the rule, as the “Ghost Face” copyright’s purpose, which Fun World held, was to invoke fear based on the nature of the horror movies and scary Halloween costumes, while Rozier’s purpose and character of the use were humorous and satirical. Rozier’s copying reflected both parody and satire, which advanced his fair use defense. “The Scary Terry cartoon successfully uses a cartoon rendering of [Easter’s] licensed Scream mask on a cartoon basketball player to lampoon the famous mask-wearing movie villain and killer in the context of NBA players, NBA fans and even the NBA media.” She added that Rozier’s “use of a mask widely associated with a film’s (fictional) serial killer provides a means of satirizing and ridiculing the perception of ruthless, high-scoring athletes in the NBA, as well as underscoring the humor in the Scary Terry.” The fair use win allows Terry Rozier to continue using his alter-ego nickname and selling his “Scary Terry” apparel, just in time for the start of the 2021 NBA season.
Student Bio: David Lally is a second-year law student at Suffolk University Law School and a staffer on the Journal of High Technology Law. David received his bachelor’s degree from the University of New Hampshire in History and Justice Studies.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
