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A federal judge with the U.S. District Court for the Southern District of New York has ruled against a request for a broad preliminary injunction in a copyright dispute involving “X-Men,” last summer’s blockbuster movie from Twentieth Century Fox Film Corp. The decision will be published Monday. In Twentieth Century Fox Film Corp. v. Marvel Enterprises Inc., 85951, U.S. District Judge Allen G. Schwartz did, however, grant Fox a “limited” injunction barring the use of the name “Mutant X” in an upcoming television series being produced by Tribune Entertainment Co. and Fireworks Communications Inc. The show, developed through a licensing agreement with Marvel Enterprises Inc., is scheduled to premiere this fall. Tribune and Fireworks are also barred from using a logo similar to the one Twentieth Century Fox used for its movie, and from promoting the television series with video clips and trailers from the movie. But Tribune and Fireworks do not have to stop production of the show, Judge Schwartz ruled, because the characters in the series are distinct from those in Fox’s “X-Men” film. In 1993, Twentieth Century Fox licensed the exclusive rights to create motion pictures based on the “X-Men Property” for $1.6 million, including the right to use Marvel’s X-Men copyrights and trademarks as Marvel would as owner of such rights. The contract also stipulated that although Marvel “reserves all television rights [based on the X-Men],” it could not authorize the production of any “live-action motion picture for free television exhibition, pay television exhibition, non-theatrical exhibition, or home video exhibition (on cassettes or discs)” without Fox’s written consent. ‘CROWN JEWEL’ OF PROPERTIES Since releasing “X-Men” in July 2000, Twentieth Century Fox has reaped $290 million in revenue in the United States. Thomas Rothman, chairman of Fox Film Entertainment, testified that “X-Men” is the “crown jewel” of Fox’s current properties, and he said the company will make it into a “franchise film” by producing sequels. As the “X-Men” was being marketed, Marvel decided to create a live-action television series about a new breed of mutant superheroes, whose abilities derived from genetic experiments gone awry. The series, originally titled “Genome X,” was later changed to “Mutant X” at the suggestion of Richard Askin, president of Tribune Entertainment. Executives of Fox claim they first learned of “Mutant X” when marketing materials and videotapes — featuring footage from “X-Men” — began to surface. Fox immediately filed claims against Marvel and the show’s producers, with allegations including breach of contract, copyright infringement and deceptive trade practices. As of June, Tribune had entered into licensing agreements with television stations in 161 U.S. markets, covering about 94 percent of the country’s households. Responding to Fox’s suit, Marvel moved to dismiss the breach of contract claim, saying “live action motion picture” clearly refers to a long-form movie, not a television series. Judge Schwartz ruled against Marvel’s motion, finding that the contract did cover television rights, based largely on evidence concerning the negotiation process, previous drafts of the contract, and the meaning of the term “motion picture” with respect to television rights. Nonetheless, Schwartz ruled, the contract did not preclude the development of “Mutant X,” because the show’s characters are distinct from those portrayed in “X-Men” and other X-Men properties to which Fox has obtained the license in conjunction with its film. In a character-by-character comparison, Schwartz refuted Fox’s claims of similarity by describing the characters’ supernatural powers, temperament and physical attributes. Schwartz also refuted Fox’s claims to the rights to plot aspects found in the upcoming series, saying that many elements, such as weapons that neutralize power and powerful viruses, are common to the genre. As far as Fox’s claim of irreparable harm if production of the series was not enjoined, Schwartz found that “neither the nature nor quality of the alleged harm is precisely explained.” Dale M. Cendali of O’Melveny & Myers argued on behalf of the plaintiff. Jonathan D. Reichman of Kenyon & Kenyon represented Marvel Enterprises. Gerald E. Singleton of Frankfurt, Garbus, Kurnit, Klein & Selz represented Tribune Entertainment. Steven H. Rosenfeld of Ohrenstein & Brown represented Fireworks Communications.

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