The Briefing from the IP Law Blog: Recent Episodes
Weintraub Tobin
In The Briefing from the IP Law Blog, intellectual property attorneys Scott Hervey and Josh Escovedo discuss current trademark, copyright, and patent law as well as IP litigation and intellectual property in the news.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara Sattler discuss the legal rules governing talent representation and explain why the distinction between a manager and an unlicensed talent agent can have significant consequences for artists and their representatives.
They cover:
- What constitutes “procurement” under California’s Talent Agencies Act
- Why a representative’s actual conduct matters more than the title in the agreement
- How Park v. Deftones and Marathon Entertainment v. Blasi shaped disputes involving unlicensed talent agency activity
Tune in for a practical discussion of how artists, managers, and entertainment attorneys can structure their relationships, protect their interests, and avoid disputes over co
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Richard D. Buckley, Jr. return to copyright fundamentals and explain how these rules affect creators, businesses, developers, filmmakers, and anyone commissioning creative work.
They cover:
- What copyright protects and the requirements for originality and fixation
- Who owns commissioned work and why payment alone may not transfer copyright
- What rights copyright owners have and what happens when those rights are infringed
Tune in for a practical look at how copyright ownership can determine whether a creative project moves forward or becomes tied up in legal complications.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara J. Sattler break down Cesari S.R.L. v. Peju Province Winery L.P., a long-running dispute involving the LIANO and LIANA wine marks.
The Second Circuit vacated a judgment against Peju after finding that the earlier Trademark Trial and Appeal Board decision did not consider how the companies actually used their marks in the marketplace.
In this episode, they cover:
– The two-decade dispute over the LIANO and LIANA wine marks
– Why the TTAB’s likelihood-of-confusion ruling did not bind the federal court
– What the Second Circuit’s decision means for brands facing litigation after a TTAB loss
Tune in for a clear look at when a TTAB loss can follow a brand into federal court, and when it cannot.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara J. Sattler break down the Supreme Court’s decision in Cox Communications v. Sony Music Entertainment, which reversed a $1 billion judgment against the internet service provider.
They discuss:
– Why knowledge that customers are infringing copyrights is not enough to establish contributory liability
– How inducement and substantial lawful uses shape the liability analysis for technology providers
– Why the decision could serve as both a shield and a potential sword in copyright cases involving AI-generated content
Tune in for a clear look at how the Supreme Court’s ruling reshapes the line between neutral technology and contributory copyright infringement.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara Sattler discuss what the law requires, which advertisements may be exempt, and how brands and agencies should approach compliance.
They cover:
- When advertisers must conspicuously disclose the use of a synthetic performer
- How exemptions for expressive works, audio-only ads, and language translation may apply
- Practical steps brands and agencies should take, including AI audits, vendor agreements, and updated creative guidelines
Tune in for a practical look at how AI-generated spokespeople are reshaping advertising transparency and compliance.
In this episode of The Briefing, Weintraub Tobin Partners Scott Hervey and Matt Sugarman discuss SAG-AFTRA’s new 2026 TV/Theatrical Agreement and the updated AI provisions shaping the future of entertainment production.
In this episode, they cover:
- What the new agreement says about digital replicas and synthetic performers
- How consent, compensation, and notice requirements may affect actors and producers
- Why entertainment attorneys should pay close attention to AI language in performer contracts
Tune in for a clear look at where AI, performer rights, and entertainment production collide.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Matt Sugarman revisit Lil’ Joe Records, Inc. v. Ross after the Eleventh Circuit reversed the district court’s ruling in favor of 2 Live Crew. The decision turns on a key bankruptcy issue: whether a copyright termination interest that was never scheduled in a Chapter 7 case remains property of the bankruptcy estate.
In this episode, they cover:
- Why the Eleventh Circuit found Mark Ross’s termination interest remained in his bankruptcy estate
- How that changed the Section 203 majority vote needed to reclaim the copyrights
- What the ruling means for artists, estates, catalog owners, and attorneys handling termination notices
The ruling changes the vote count under Section 203 and raises new due diligence questions for catalog reclamation projects. Tune in for a clear look at wh
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Richard D. Buckley, Jr. break down Patagonia’s trademark lawsuit against drag performer and environmental activist Pattie Gonia. They discuss the trademark claims, the First Amendment defenses, and the broader question of whether filing the lawsuit was the right strategic move.
They cover:
- Why Patagonia is challenging Pattie Gonia’s merchandise and trademark application
- How the Rogers test and First Amendment protections may apply to expressive personas and related merchandise
- What the case shows about trademark enforcement, public backlash, and litigation strategy
Tune in for a clear look at when trademark enforcement collides with parody, activism, and the First Amendment.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara Sattler discuss the court’s ruling, where Brandy Melville’s trademark claims fell short, and whether a different trademark argument could have changed the outcome.
They cover:
- Why the court treated the copied photos as a copyright issue, not a trademark issue
- What Brandy Melville needed to show to support its trademark claims
- How brands should think about protecting product images, marketing content, and visual identity online
Tune in for a clear look at where copyright protection ends and trademark law begins.
Pepperdine has used the “Waves” name for its athletic teams since 1937. Netflix’s Running Point also features a fictional basketball team called the Waves.
In this episode of The Briefing, Weintraub Tobin Partners Scott Hervey and Tara Sattler break down Pepperdine’s trademark lawsuit against Netflix, the ruling on Netflix’s motion to dismiss, and what the decision says about the Rogers test after Jack Daniel’s v. VIP Products.
They cover:
- Why Pepperdine challenged Netflix’s use of “Waves”
- How the court viewed the name in an expressive work
- What the ruling means for the Rogers test after Jack Daniel’s
Tune in for a clear look at where trademark law and entertainment branding collide.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Jessica Marlow break down UMG Records v. Last Brand, the lawsuit targeting Quince’s alleged use of unlicensed music across social media marketing.
In this episode, they cover:
- Why platform music libraries do not automatically clear commercial use
- How influencer briefs, reposts, and “trending audio” can create copyright risk
- What brands and creators should address in influencer agreements before content goes live
For brands, agencies, and influencer marketing teams, this case is a reminder that viral content still needs to be legally cleared. Tune in for a clear look at where music licensing meets influencer marketing, brand control, and copyright liability.
Did the courts just preserve documentary filmmaking as we know it? In this episode of The Briefing, Weintraub Tobin Partner Scott Hervey and Associate Caroline M. Korpiel revisit the Tiger King fair use dispute and break down the Tenth Circuit’s new opinion in Whyte Monkee Productions v. Netflix.
In this episode, they cover:
- Why the original ruling alarmed documentary filmmakers and copyright experts
- How the Tenth Circuit reconsidered fair use after Warhol v. Goldsmith
- What this decision means for documentaries, biographical storytelling, and “biographical anchor” fair use
Whether you’re a filmmaker, producer, content creator, or IP professional, this episode offers important insight into the future of fair use in documentary storytelling.
Watch this episode on our YouTube or listen to the podcast here.
What happens when your AI assistant can act for you, but the platform says no? In this episode of The Briefing, Scott Hervey and Richard D. Buckley, Jr. break down the high-stakes dispute between Amazon and Perplexity AI over AI agents accessing password-protected user accounts.
In this episode, they cover:
– What “agentic AI” means and how tools like Comet actually function
– Why Amazon moved quickly for a preliminary injunction
– How the CFAA and California law are being used to challenge AI-driven access
Tune in for a clear look at whether platform owners can legally fence off AI agents from interacting with their systems.
Can sending a cease-and-desist letter land you in court across the country? In this episode of The Briefing, Scott Herveyand Richard D. Buckley, Jr. break down a major Eleventh Circuit decision involving the Frida Kahlo brand and the risks tied to aggressive IP enforcement.
In this episode, they cover:
- When cease-and-desist letters cross the line into tortious conduct
- How the corporate shield doctrine can fail when personal rights are asserted
- Why the “effects test” can pull IP owners into out-of-state litigation
Tune in for a clear look at how a single demand letter can determine where you end up litigating.
Can a five word phrase be worth millions? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Matt Sugarman break down the high stakes trademark dispute between Las Vegas performer Maren Flagg and Taylor Swift over the phrase “The Life of a Showgirl.”
In this episode, they cover:
– Whether a phrase can function as a protectable trademark or just a descriptive title
– How the Rogers test applies to tour names and merchandise
– What recent Supreme Court rulings mean for First Amendment defenses in trademark law
From concert tours to commercial merch, the line between branding and expression is getting harder to define. Tune in for a clear look at where trademark law meets the First Amendment.
Can you use “March Madness” without getting sued? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Jessica Corpuz break down the NCAA’s lawsuit against DraftKings and the high stakes fight over one of the most recognizable trademarks in sports.
In this episode, they cover:
- What nominative fair use actually means and how courts apply it
- Why DraftKings says its use of “March Madness” is necessary for bettors
- How the NCAA argues the use creates false association and brand harm
Tune in for a clear look at where trademark law meets sports betting.
Watch this episode on our YouTube or listen to the podcast here.
What happens when a failed police raid turns into a music video about lemon poundcake and a $3.9 million lawsuit?
In this episode of The Briefing, Scott Hervey and Richard Buckley, Jr. break down the Afroman defamation case, where surveillance footage, satire, and public officials collide under First Amendment law.
In this episode, they cover:
- Why the deputies’ defamation claims failed under the “actual malice” standard
- How satire and parody shape what counts as a statement of fact
- Why the lack of an anti-SLAPP law in Ohio changed the entire case strategy
Tune in for a clear look at where defamation law meets satire and the First Amendment.
What happens when two fantasy stories share the same DNA? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Matt Sugarman break down a major copyright decision involving the Crave series and what it means for substantial similarity in fiction.
In this episode, they cover:
– Why common genre tropes like love triangles, supernatural powers, and chosen one narratives are not protectable
– How courts filter out unprotectable elements using the “more discerning ordinary observer” test
– Why combining familiar elements is not enough to prove copyright infringement
Tune in for a clear look at where copyright law draws the line between inspiration and infringement.
When does an AI voice become your voice? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Richard Buckley break down the lawsuit filed by longtime broadcaster David Greene against Google over its NotebookLM tool and its eerily familiar AI-generated voice.
In this episode, they cover:
- What Greene must prove to win a Right of Publicity claim
- How Midler and Waits shape the legal standard for voice imitation
- Why Google’s training data and “knowing use” will be key to the case
- From forensic voice analysis to AI training practices, this case raises major questions about identity, ownership, and emerging technology.
Tune in for a clear look at where the right of publicity meets artificial intelligence
What happens when artists agree to transfer rights to a musical composition but never put that transfer in writing? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Jessica R. Corpuz break down a federal court decision arising from a copyright dispute tied to Ye’s Donda album. The case turned on a simple but unforgiving rule of copyright law: without a written assignment, you do not own the copyright and you cannot enforce it.
In this episode, they cover:
- Why Section 204(a) of the Copyright Act requires copyright transfers to be in writing
- The legal difference between composition copyrights and sound recording copyrights
- How the lack of a written assignment wiped out most of the plaintiff’s infringement claims
Tune in for a clear reminder that in copyright law, if it is not in writing, it may as well not exist.
What happens when an artist terminates a decades-old copyright grant under U.S. law, but the work is still being exploited around the world? In this episode of The Briefing, Weintraub Tobin Partners Scott Hervey and Matt Sugarman break down the Fifth Circuit’s decision in Vetter v. Resnik and what it means for worldwide copyright grants. In this episode, they discuss:
- Whether termination under 17 U.S.C. § 304(c) can recapture foreign exploitation rights
- Why the Fifth Circuit parted ways with California cases like Siegel v. Warner Bros.
- The difference between ownership disputes and extraterritorial infringement claims
- How this ruling impacts publishers, studios, catalog buyers, and global licensing strategies
- If termination can unwind a worldwide grant, the leverage shift for authors and heirs could be significant.
Tune in for a clear look at how copyright termination.
Can an arbitration provider force someone into arbitration who never signed the contract? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Richard D. Buckley, Jr. break down the high-profile dispute involving Skechers, global influencer Khaby Lame, his management company KBL Services, and talent manager Barrett Wissman. At the center of the fight is a critical question of arbitration law: does the American Arbitration Association have jurisdiction over a non-signatory?
In this episode, they discuss:
- When non-signatories can be compelled to arbitrate
- Alter ego and veil piercing theories
- Agency law and representative capacity
- Whether the AAA can administer arbitration against someone who never agreed to it
- Strategic litigation choices when challenging arbitrability
If you handle contracts, endorsement agreements, arbitration clauses, or business disputes, this episode offers important insight into the limits of consent in arbitration.
When a jury says two works are not substantially similar, is that the end of the story? In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Richard D. Buckley, Jr. break down the Ninth Circuit’s decision arising from the Kat Von D tattoo of an iconic Miles Davis photograph and why it may signal the beginning of the end for the intrinsic test in copyright law.
In this episode, they cover:
- How the Ninth Circuit’s two-part substantial similarity test works
- Why the jury’s finding was nearly impossible to overturn on appeal
- The concurring opinions calling the intrinsic test legally incoherent
- How other circuits analyze substantial similarity differently
- What a reworked test could look like going forward
Whether you are a creator, lawyer, or rights holder, this case highlights a potential turning point in how courts evaluate copyright infringement.
California privacy law has entered a new phase. In Part Two of this two-part episode of The Briefing, Weintraub Tobin Partners Scott Hervey and Richard Buckley break down the CCPA’s new requirements for Risk Assessments and Cybersecurity Audits.
In this episode, they cover:
- When Risk Assessments are required and what they must evaluate
- How businesses must weigh operational benefits against privacy risks
- Who must be involved in conducting Risk Assessments and when
- When Cybersecurity Audits are triggered and what they must include
- What businesses must submit to the California Privacy Protection Agency
Tune in for part two on how a clear look at how California privacy law is turning AI compliance into an operational requirement.
California privacy law has entered a new phase. In Part 1 of this two-part episode of The Briefing, Weintraub Tobin Partners Scott Hervey and Richard Buckley breaks down California’s new CCPA regulations governing Automated Decision making Technology, or ADMT. This episode explains how the amended rules go beyond data collection and sharing to regulate how businesses use algorithms, artificial intelligence, and automated tools to make decisions about people.
In this episode, they cover:
- What qualifies as Automated Decision making Technology under the CCPA
- Which automated decisions are considered “significant decisions”
- When a business is subject to the ADMT rules
- New notice, opt-out, and access rights for consumers, including employees and job applicants
- Key compliance deadlines businesses need to prepare for now
Tune in for a clear look at how California privacy law is reshaping automated decision making and AI governance.
We previously covered the trademark lawsuit filed by Lost International against Lady Gaga over her use of “Mayhem” in connection with her album, tour, and related merchandise. Now the court has ruled, denying Lost’s motion for a preliminary injunction. In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara Sattler break down the court’s order and what it signals about the Rogers test after the Supreme Court’s Jack Daniel’s decision.
In this episode, they cover:
- Why the court applied the Rogers test instead of the traditional Sleekcraft likelihood of confusion analysis
- How the court treated tour merchandise tied to an expressive work under Ninth Circuit precedent
- What “artistic relevance” means and why that prong was easily met here
- Why “use of the mark alone” was not enough to show the use was explicitly misleading
- How this ruling fits into the broader post Jack Daniel’s landscape, including recent Ninth Circuit developments
Tune in for a clear look at where trademark law meets tour merchandising and First Amendment protections.
The Ninth Circuit kicked off 2026 with a major copyright decision in the long-running Top Gun dispute, affirming summary judgment for Paramount in the lawsuit over Top Gun: Maverick. In this episode of The Briefing, Weintraub Tobin shareholders Scott Hervey and Tara Sattler break down the Ninth Circuit’s reasoning and why it matters for studios, writers, and anyone adapting real-world stories.
In this episode, they cover:
- The background of the claim tied to the 1983 magazine article “Top Guns”
- How the Ninth Circuit applied the extrinsic and intrinsic tests for substantial similarity
- Why historical facts and real events remain free for all to use, even when dramatic
- The court’s focus on “protected expression” versus unprotectable ideas, facts, and genre conventions
- Key takeaways for nonfiction adaptations, biopics, and projects inspired by true stories
Tune in for a clear look at where copyright law draws the line between protected expression and real-world facts.
As 2025 fades into the rearview mirror, many of the entertainment and media industry’s biggest legal questions remain unresolved. In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Tara Sattler take a forward-looking approach to the cases and doctrines that could shape 2026.
In this episode, they cover:
- The unsettled future of fair use in AI training and copyright infringement
- How courts are approaching lawful versus unlawful acquisition of training data
- The growing split in AI cases involving market substitution and fair use
- The narrowing application of the Rogers Test following the Jack Daniel’s decision
- What pending cases could mean for filmmakers, studios, and content creators
Tune in for a clear look at the legal issues that could define entertainment and media in 2026.
Your intellectual property is one of your company’s most valuable assets. Are you keeping track of it? In this episode of The Briefing, Weintraub Tobin Partners Scott Hervey and Tara Sattler walk through why an IP checkup is a smart way to kick off the year and how businesses can safeguard their intellectual property assets.
In this episode, they cover:
- Why regular IP audits matter for growing businesses
- How to track and manage trademarks, copyrights, and patents
- Common gaps companies overlook in their IP portfolios – Practical steps to protect and strengthen your IP strategy
Tune in for a practical guide to protecting the ideas and assets that drive your business forward.
In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Matt Sugarman break down The New York Times v. Perplexity AI, a lawsuit that goes beyond copyright and into largely untested trademark territory. They discuss the Times’ allegations that Perplexity copied its journalism at both the input and output stages and, more significantly, that the AI attributed fabricated or inaccurate content to the Times using its trademarks. The case raises new questions about false designation of origin, trademark dilution, and how AI hallucinations could expose platforms to liability.
In this episode, they cover:
- Alleged large-scale scraping and output copying of Times content
- How RAG systems complicate traditional copyright defenses
- The novel use of trademark law to challenge AI hallucinations
- False designation of origin and dilution by tarnishment claims
- What this lawsuit could mean for AI companies that cite or brand sources
Tune in for a clear look at where trademark law meets AI-generated misinformation.
Get into the holiday spirit with a look at some of the most unique Christmas patents ever filed. From Santa detectors to upside-down Christmas trees, Scott Hervey and Jamie Lincenberg explore festive inventions that add a little extra cheer to the season on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
The Terrifier franchise is one of the most unlikely independent horror success stories of the last 25 years. But a new lawsuit challenges how the first film was made and raises serious questions about performer consent and on-set protections. In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Matt Sugarman break down actress Catherine Corcoran’s lawsuit against the film’s producers and what it reveals about SAG-AFTRA requirements for nudity and simulated sex scenes.
In this episode, they cover:
- What a SAG nudity rider is and why it is legally required
- How consent must be disclosed, documented, and respected on set
- Why filming nudity without a signed rider can be deemed nonconsensual
- The risks producers face when still images or footage are reused without permission
- How intimacy coordinators and detailed riders protect both performers and productions
This case is a reminder that nudity riders are not a formality. They are a core safeguard in film and television production.
Tune in here for a clear look at how SAG protections, performer consent, and production liability intersect.
Did Coca-Cola cross the line by using a Johnny Cash soundalike in its nationwide “Fan Work is Thirsty Work” campaign? In this episode of The Briefing, Weintraub Tobin attorneys Scott Hervey and Richard Buckley unpack the Cash estate’s lawsuit and what it reveals about the evolving law of soundalikes.
In this episode, they cover:* How Tennessee’s new Elvis Act expands protection for voices and vocal imitation * Why the Cash estate is also asserting a Lanham Act false endorsement claim * How Midler v. Ford and Waits v. Frito-Lay continue to shape soundalike disputes * The line between imitating a musical “style” and misappropriating a distinctive voice * What brands and agencies should consider before using tribute artists or AI vocals Tune in here for a clear look at where right of publicity, soundalike law, and advertising practice collide.
Creators, beware: just because it’s online doesn’t mean it’s fair game. In this episode of The Briefing, Scott Hervey and Richard Buckley break down one of the most misunderstood areas of copyright law—fair use.
In this episode, they cover:
- What makes a use “transformative”?
- Why credit alone doesn’t protect you
- How recent court rulings (Warhol v. Goldsmith) are changing the game
- Tips to stay on the right side of the law
Watch this episode on YouTube or listen to this podcast episode here.
Who really owns your Thanksgiving traditions? In this special holiday edition of The Briefing, Weintraub Tobin partners Scott Hervey and Richard Buckley discuss how intellectual property law intersects with holiday food, recipes, and branding.
They explore:
- Why recipes usually aren’t protected by copyright
- The surprising trademarks behind holiday favorites like Turducken and Tofurky
- How brands use trademarks, trade dress, and storytelling to own a piece of the Thanksgiving season
- The rise of “Friendsgiving” as both a cultural phenomenon and a branding challenge
Whether you’re a lawyer, brand owner, or marketing professional, this episode offers valuable insight into how IP shapes the way we celebrate and sell the holidays.
In this episode of The Briefing, Scott Hervey and Richard Buckley break down Campbell Soup Co. v. Campbell for Congress, the lawsuit over a political candidate’s “Soup4Change” slogan and AI-generated soup can design. They cover the backstory, the trademark and First Amendment arguments, and how the Hershey case may influence the court’s view of political campaign branding. Tune in for a clear look at where trademark law meets political speech.
Watch this episode on YouTube.
After losing its anti-SLAPP motion, Warner Bros. has appealed in Roadrunner JMTC LLC v. Warner Bros. Television, the lawsuit brought by Michael Crichton’s estate claiming the new series The Pitt is an unauthorized derivative of ER.
In this episode of The Briefing, Weintraub Tobin attorneys Scott Hervey and Tara Sattler discuss:
- The background behind the ER “freeze clause”
- Warner Bros.’ First Amendment arguments under California’s anti-SLAPP statute
- The battle over what “derivative work” really means
- How the trial court handled the Katz declaration
- The broader implications for creative freedom and legacy IP
Watch this episode on YouTube.
When artistic identity meets corporate branding, where does copyright law draw the line?In a new episode of The Briefing, Scott Hervey and Richard Buckley discuss the lawsuit filed by artist Tyrrell Winston against the New Orleans Pelicans.Winston—whose distinctive sculptures of deflated basketballs arranged in grids have been exhibited worldwide and licensed by brands like Nike, Adidas, and even NBA teams—claims the Pelicans copied his signature style in a social media campaign.His lawsuit raises a major question for artists, brands, and IP lawyers alike: Can a distinctive artistic style be protected under copyright law?The conversation compares Winston’s claim to the “vibe copyright” case (Sydney Nicole v. Alyssa Sheil) and examines whether courts are expanding protection from expression into concepts and aesthetics.Watch this episode on YouTube.
A consent agreement can be a powerful tool to overcome a USPTO likelihood-of-confusion refusal—but only if it’s done right.
In this episode of The Briefing, Weintraub Tobin attorneys Scott Hervey and Richard Buckley discuss the TTAB’s precedential decision in In re Ye Mystic Krewe of Gasparilla, where the Board rejected a one-page consent agreement as a “naked consent” insufficient to overcome a Section 2(d) refusal.
They unpack:
- The history of the GASPARILLA application
- Why the TTAB said the agreement didn’t “show the work”
- How to draft a consent agreement that will actually persuade the USPTO
Don’t miss this one—it’s a practical guide for anyone working with trademarks or brand portfolios. Watch this episode on YouTube.
Can a car, a superhero, or even a cartoon sidekick be protected by copyright? In this episode of The Briefing, Scott Hervey and Matt Sugarman break down how fictional characters earn legal protection — and when they don’t.From DC Comics v. Towle (the “Batmobile” case) to Carroll Shelby Licensing v. Halicki (the “Eleanor” case), Scott and Matt explore the three-part test for character copyrightability, how trademark rights can extend protection, and what creators and studios can do to safeguard their most valuable IP assets.🎧 You’ll learn:● What makes a fictional character “especially distinctive” under copyright law● Why consistency across stories matters for protection● How trademark rights protect character names and merchandise● The difference between creative expression and brand identityWatch this episode on YouTube and learn how to keep your characters safe from copycats.
A federal court has granted summary judgment for Nirvana, dismissing Spencer Elden’s claim that the Nevermind album cover — depicting him as a baby — constituted child pornography. In this episode of The Briefing, Scott Hervey and James Kachmar revisit their earlier coverage of the Ninth Circuit’s decision and unpack how the district court’s final ruling turned on artistic intent and context rather than perception.
Tune in to learn how the court applied the Dost factors, what this ruling means for artists and rights holders, and how intent shapes the boundary between art and exploitation.
Watch this episode on YouTube.
Show Notes:
Scott: In a previous episode, we covered Elden versus Nirvana, the lawsuit brought by Spencer Elden, the Baby, on the cover of Nirvana’s Never Mind album, who claimed that the image amounted to child pornography. The Ninth Circuit revived Elden’s case in late 2023, holding that his claims were not time barred and sent it back to the District Court to decide the big question, was Nirvana’s album cover child pornography? Now that question has been answered. The District Court has granted summary judgment for Nirvana, holding that the cover is not child pornography as a matter of law.
I’m Scott Hervey, and I’m joined today by my partner, James Kachmar. We are going to break down the District Court’s ruling and evidence surrounding the artistic intent behind one of the most iconic album covers of all time on today’s installment of The Briefing. James, welcome back to The Briefing. Good to have you.
James: Thanks for having me back, Scott.
Scott: So, James, when you and I last talked about this case, the Ninth Circuit had just revived Eldon’s lawsuit. Can you remind the listeners how we got here?
James: Sure, Scott. The photograph at the heart of this case is on the cover of Nirvana’s Never album. It’s a naked baby swimming underwater, appears to be reaching for a dollar bill that’s on a fishing hook. That baby, Spencer Eldon, was four months old when that photo was taken in 1991. Thirty years later, in 2021, Eldon sued Nirvana, the surviving band members, and their record labels under a federal law that allows victims of child pornography to bring civil claims. He alleged that the photo was sexually exploitive and that Nirvana had knowingly possessed, reproduced, and distributed what he claimed was child pornography.
Scott: And that case was originally dismissed on statute of limitations grounds.
James: Exactly, Scott. The District Court initially threw it out saying that Eldon had waited too long to sue. He turned 18 around 2009, but waited another 12 years to file his lawsuit. But in December 2023, the Ninth Circuit reversed, holding that because the album had been rereleased in 2021, Eldon could bring claims based on that recent republication. That sent the case back to the district Court to decide the substance of Alden’s claim, whether or not the image itself met the legal definition of child pornography.
Scott: And now, the District Court, having heard arguments on both sides, has granted summary judgment for Nirvana. So Let’s dive into the court’s reasoning.
James: Sure. The court held at the Never mind cover simply doesn’t meet the definition of child pornography under federal law.
Scott: Right. We don’t normally dive into this on these podcasts, but this is a media case, and it is interesting. I think there’s some other interesting aspects of this case that we’re going to talk about later. Okay, so the court applied the DOS factors. That’s a six-part test used to assess whether an image is sexually suggestive. Those factors look at things like whether the child’s pose is sexually suggestive, whether the photographer intended to elicit a sexual response. Here, the court said, obvious, that the photograph is not sexually suggestive. It depicts a baby swimming underwater with no sexualized focus or context.
James: That’s right, Scott. The judge went even further, emphasizing that there was no evidence of sexual intent by anyone involved with the album cover. The judge wrote, The undisputed evidence establishes that the creative team intended the image to convey a critique of capitalism, not to sexualize or exploit the child.
Scott: The court recognized that the concept behind the image was artistic, not sexual. The court noted that photographer, Kurt Weddell, testified that the shoot was done in a single session at a local pool, and that there was no direction to the baby, meaning that Eldon wasn’t posed or otherwise manipulated.
James: Exactly, Scott. The designer, Robert Fischer, who created the album artwork, testified that the goal was to comment on how people are chasing money from birth. The court cited that testimony and wrote, The image was designed to be a satirical commentary on the pursuit of wealth, the baby reaching for the dollar, not to elicit any sexual thought. The court concluded that the artistic and social commentary intent was clear and undisputed, and that in context, the image was wholly inconsistent with a notion of sexual exploitation.
Scott: I want to talk a bit about Eldon’s claims that the continued and widespread use of the album and the album cover caused him emotional harm. My opinion, and this is just my opinion, some of the evidence introduced by Nirvana tends to show that this was really an attempted money grab by Eldon, which I think is so ironic given the artistic intent of the album, the album cover. I want to make it clear, again, this is my personal opinion based on the district court’s factual findings and its analysis of the record. While they did not specifically say that Eldon brought the suit solely for monetary gain. The evidence discussed in the order strongly suggested that the suit was motivated by financial or publicity interest rather than genuine claims of exploitation or injury.
James: Yes, Scott. The majority of this evidence is discussed in the context of rejecting Elden’s claim that the widespread use of the cover had caused him emotional distress or how his own conduct undermined his claim.
Scott: All right. I mean, the court, in its order, it covered the fact that Elden had repeatedly and publicly celebrated his association with the never mind album cover for years before filing the lawsuit. He recreated the photo for various anniversaries of the album, and sometimes did that for paid photoshoots. Again, I’m going to point out the irony here. He also gave numerous media interviews over the years where he expressed pride in being the Nirvana Baby. Also relevant was the fact that the album had been around for 30 years before Elden began to complain of his emotional injuries.
James: Yeah, and the court noted that these voluntary and enthusiastic reenactments undermine any claim of long-term psychological injury or exploitation, and instead showed that Elden benefited from and sought to profit from the notoriety of that album image.
Scott: Yeah, the order specifically pointed out that Elden derived publicity and potential financial benefit from his identity as the Never mind Baby. This was completely inconsistent with a genuine victim narrative. In the order, the district Court points out that Elden even tattooed the album’s name across his chest. I mean, come on.
James: Yeah. So even giving Elden the benefit of the Ninth Circuit Statute of Limitations Ruling, his case still fails on the merits. The court closed with a clear statement that the album cover is an artistic image globally recognized for its social commentary, not for sexual content. And with that, the court granted summary judgment for Nirvana and dismissed the case in full.
Scott: Right. So after all these years, Elden versus Nirvana has come to an end. I mean, at least for now, Elden could appeal, but I don’t know. I think the chips are pretty much stacked against him, given his past conduct.
James: Well, for what it’s worth, Scott, Eldon’s attorneys have told Rolling Stone magazine that they would likely appeal the ruling back to the Ninth Circuit. We may have to do another one of these episodes in the future. However, this ruling underscores that context and intent are critical when evaluating allegations of sexual exploitation in visual art. Artistic nudity, even in involving a minor, doesn’t automatically amount to child pornography. The court looked carefully at what the image was meant to express and concluded that it was a critique of commercialism, not a depiction of sexual conduct.
Scott: Right. But I’m sure you would agree with me, James, in this. Let’s be clear, I don’t think this was a good idea from the outset. I understand the artistic intent behind the photo, but this isn’t the Italian Renaissance, right? I mean, maybe in the ’90s, it was a bit more relaxed, but there was way too much risk of a legal blowback here. The artistic intent could have just as easily been conveyed if the baby was wearing a diaper. I don’t know. I think a word of caution here to all of our creatives and rock bands looking to find the next version of the Never mind album cover. Let’s avoid naked babies, eh?
James: Yeah, I agree, Scott. I’m not sure how that album cover would fly in today’s environment.
Scott: Well, James, thanks for joining me today. Always great to have you. And thank you to our listeners for joining us on the briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share it with your network. We’d also love to hear from you. Please leave us a comment or a review and let us know what topics you would like us to cover in future episodes. I’m Scott Herbie. I’ll see you next time on The Briefing.
Disney faced a copyright lawsuit over the use of MOVA facial-capture software in Beauty and the Beast. A jury found Disney vicariously liable, the district court threw out the verdict, but the Ninth Circuit has now reinstated it. In this episode of The Briefing, Scott Hervey and Tara Sattler discuss:● The facts behind Disney’s use of VFX vendor DD3 and the disputed MOVA software● Why the district court found no “practical ability” for Disney to control its vendor● How the Ninth Circuit reversed, emphasizing Disney’s contractual rights, on-set presence, and red-flag evidence● What this means for studios and production companies managing VFX vendors
Former Congressman George Santos sued Jimmy Kimmel after the late-night host used Cameo videos in a comedy segment called “Will Santos Say It?” Santos claimed copyright infringement and fraud, but both the District Court and the Second Circuit said Kimmel’s use was fair use. In this episode of The Briefing, Scott Hervey and Tara Sattler break down:● How Kimmel obtained the videos using fake Cameo accounts● Why the District Court dismissed Santos’s case● How the Second Circuit reinforced that criticism and satire are protected under fair use● Why Santos’s contract and fraud claims also failedWatch this episode on YouTube.
Neil Young vs. Chrome Hearts — What happens when a rock legend collides with a luxury fashion powerhouse? Chrome Hearts has filed suit against Neil Young, claiming his new band “Neil Young and the Chrome Hearts” infringes on their famous trademark
On this episode of The Briefing, Weintraub attorneys Scott Hervey and James Kachmar unpack the lawsuit, analyze the likelihood of confusion, and compare it to the Lady Gaga “Mayhem” case. Plus, they share practical takeaways for musicians to avoid trademark trouble.Show Notes:
Scott: Neil Young, one of the most influential voices in rock history, has landed in federal court, but not for his music. His new backing band, Neil Young and the Chrome Hearts, has become the center of a trademark infringement lawsuit filed by luxury fashion brand, Chrome Hearts. At issue is whether Neil Young’s use of the Chrome Hearts’ name, and especially the sale of related merchandise, crossed the line into infringement. I’m Scott Hervey, a partner of the I’m a law firm of Weintraub Tobin, and today I’m joined by my partner, James Kachmar. We are going to break down Chrome Hearts versus Neil Young on today’s installment of The Briefing.
James, welcome back to The Briefing. Good to have you.
James: Thanks for having me, Scott. Anytime you’ve got a clash between a rock legend and a fashion powerhouse, you know it’s going to be an interesting case.
Scott: Oh, absolutely. Well, so let’s set the stage, shall we? So Chrome Hearts filed suit in the Central District of California against Neil Young and his production company, the Other Shoe Productions, and his bandmates. The complaint alleges trademark infringement, false designation of origin, unfair competition, common law trademark infringement, and common law unfair competition. But I think the centerpiece of this case really is the federal trademark infringement claim. I think, really, this case either lives or dies on whether or not Neil Young has violated the Lanham Act. Okay, let’s talk about some background here. Chrome Hearts, for those of you who aren’t aware, Chrome Hearts is not just a boutique clothing line. It’s a billion-dollar brand that’s been around since 1988. They’ve built an empire on jewelry, leather goods, apparel, eyewear, and even furniture. They’ve collaborated with the Rolling Stones, Rihanna, Madonna, Drake, and countless others. Their products are sold in exclusive boutiques worldwide, and they have a loyal following among musicians and celebrities. Now, critically, Chrome Hearts has a very long list of federally-registered trademarks covering Chrome Hearts, both the wordmark and related designs. These registrations span across jewelry, letter goods, clothing, eyewear, retail store services, and even entertainment services in the nature of live performances by a musical band.
Now, that last one is particularly important because I think it directly overlaps with Neil Young’s activities.
James: I knew about Chrome Hearts as a fashion and jewelry brand, but I had no idea that there was a band associated with it. Did you know that, Scott?
Scott: No, I didn’t until I read the complaint. I got a little curious, and I found the specific trademark that covered their entertainment services. I mean, it’s listed in the complaint. I looked up its file at the USPTO to see what specimens it submitted. Lo and behold, it’s a photo of a band with the band name Chrome Hearts right there on the stage monitors. I tried to find out more about that band, but when you search Chrome Hearts Band, all you get is references to Neil Young’s new band.
James: Neil Young launched this new band, Neil Young and the Chrome Hearts, last year in 2024. They played shows in New York, branded the outing as the Chrome Hearts Tour, and then released new music earlier this year, including a full studio album this past June. The complaint highlights that they were selling T-shirts and other merchandise, prominently using the Chrome Hearts name as part of that tour.
Scott: If I had to guess, I would say that’s really the spark. Touring under a band name might have been acceptable, especially since it’s Neil Young and the Chrome Hearts. But I think once Young started selling merchandise, shirts, hoodies, and other items bearing Neil Young and the Chrome Hearts, that’s probably what caused Chrome Hearts to file its lawsuit. According to the complaint, vendors and fans, allegedly, have assumed there’s a collaboration between Young and the Chrome Hearts. That’s exactly the consumer confusion trademark law is designed to prevent.
James: Yeah, and this isn’t the first time we’ve seen a conflict between a fashion brand and a musical tour.
Scott: That’s right. Earlier this year, you and I covered the Lady Gaga mayhem case. In that one, the surf and lifestyle brand, Lost International, claimed that Lady Gaga’s use of mayhem as her tour and album title and on her merch conflicted with their registered trademark for clothing.
James: Exactly. Lost had been using mayhem since the late 1980s and owned a federal trademark registration that also covered apparel. Their argument was that Lady Gaga’s tour merchandise created a likelihood of confusion with their surfwear products.
Scott: That case really highlighted the importance or risk of overlap. Even though Lady Gaga wasn’t in the surf industry, both sides were selling clothing. The court was going to analyze this overlap, the potential of trademark infringement, through the Sleekcraft factors.
James: Right. That’s the same framework that the court would apply here. Let’s get into it. In trademark law, the core issue is whether there’s a likelihood of confusion. Courts will apply some version of the Sleekcraft factors in determining whether there is a likelihood of confusion with regard to the infringement complaint.
Scott: Right. So let’s walk through them and let’s make a determination whether they would support Chrome Hearts or Neil Young. Now, obviously, we’re making these calls extremely early in the case before Young has even answered the complaint and before discovery. But I don’t know. I think we know enough about trademark law. Maybe there’s enough facts just from the complaint where we can see where this is going. All right. So just a quick recap. In California, courts analyzing a trademark infringement claim, they’re going to look at the Sleekcraft factors, which are the following: the strength of the plaintiff’s mark, the similarity of the marks at issue, the similarity or the relatedness of the goods covered by of those marks, the similarity of the marketing channels for those goods, both the plaintiffs and the defendants, the degree of care likely to be exercised by the consumer of those goods, whether it’s a sophisticated consumer or not, evidence of actual confusion, the defendant’s intent in selecting the marks, and likelihood of expansion of the product lines.
James: Scott, let’s start at the top, the strength of Chrome Heart’s mark.
Scott: All right. Okay, good call. I think Chrome Heart’s Mark is strong. It’s been around for decades, has incontestable registrations, and is pretty widely recognized in both fashion and music circles. Now, the registration provides them with certain presumptions of ownership and certain presumptions of the right to use the mark nationwide, and that mark is distinctive. I think this factor strongly favors Chrome Heart.
James: Okay, but I’m not sure the next factor favors Chrome Hearts, and that’s a similarity of the marks. Here, Neil Young is using Chrome Hearts as part of his mark, but as his band name, Neil Young and the Chrome Hearts, and his tour name is the Chrome Hearts Tour. So the marks appear to be different in appearance, sound, and meaning. I think this factor may end up favoring Neil Young.
Scott: I’m having flashbacks of our Lady Gaga conversation. I think I have to agree with you partially. I think the primary focus of Neil Young and the Chrome Hearts is Neil Young. I agree with you there that favors Neil Young. However, the Chrome Hearts Tour is very different. I think that one is more similar than dissimilar to Chrome Hearts, Mark.
James: Okay, so let’s discuss the relatedness of the goods and services factor. Both parties are offering clothing and live music-related entertainment; it would be hard to see how this factor could not favor Chrome Hearts here.
Scott: I think I agree, James. However, even though those goods are the same, I think the marketing channels factor show some significant differences in the nature of those goods. So this factor examines how and where the prospective goods or services are advertised and sold. Now, Chrome Hearts markets its products online and in high-end stores. Not quite sure where the Chrome Heart band performs, but I’m going to assume that it’s not in the same type of venues or has the same ticket prices as Neil Young. Now, as for Young’s merch, I couldn’t find any website that sells it. I note that there isn’t a dedicated website for Neil Young and Chrome Hearts. It’s my guess that the tour merch is sold only at tour venues. Now, yes, the Chrome Hearts tour is promoted online. However, courts do not treat the internet as a single undifferentiated channel. When they look at how and where on the internet the goods or services are sold and marketed, and to whom. I think it’s to whom where Chrome Hearts may have issues. I think it’s fair to assume that there’s not really going to be a significant an overlap between consumers of Chrome Hearts clothing and fans of Neil Young. I’m sure we’re going to see evidence of that introduced in this case.
James: Yeah, I agree on that point. Let’s look at the evidence of actual confusion. The complaint points to vendors and consumers who believe there may be some connection between Neil Young and Chrome Heart, the fashion brand. This factor tends to be a fairly significant one in these types of cases.
Scott: Right, it does. But I think just looking at the complaint itself, I think I’d have to call this one neutral since we really need to see more facts. If this is just one or two vendors, then I would probably call it a fluke and not convincing. However, if it were a significant number of consumers and vendors, well, that’s different.
James: Right. Usually, you would see some survey or opinion of experts on that issue. Let’s talk about the defendant’s intent in adopting this mark. This factor considers whether the defendant adopted the mark with the intention of trading on the plaintiff’s goodwill. The complaint alleges that Neil Young was on constructive notice of Chrome Hearts trademark and was on actual notice based on a cease and desist letter that was sent in July 2025.
Scott: Right. Now, I would assume that Young’s team ran a trademark search before coming up with the band and tour name and if they did, they would certainly have seen the Chrome Hearts trademarks. However, Young’s team may very well have concluded that there isn’t any likelihood of confusion between the two marks.
James: Okay. Scott, where How did you come out on this? What’s your early assessment of this case?
Scott: Okay. After I give you mine, you have to give me yours. I think that Chrome Hearts may have a very tough time with preventing the use of Neil Young and the Chrome Hearts. I think this mark is different enough, and the use of Neil Young as the primary focus of that mark pushes it over the top. Plus, the fact that the band and tour merch is sold only at concert venues, I assume that is going to be proven out. I think that really seals the deal. Now, the use of Chrome Hearts’ tour may be different, but in doing my research, I didn’t see any merch using Chrome Hearts Tour. The images included in the complaint, the images of the concert T-shirts, they call the tour, the merch has the tour labeled as the Love Earth Tour. I think we’ll have to wait and see what discovery uncovers with regard to the Chrome Hearts tour. What’s your take?
James: I largely agree with that, Scott. I think in a lot of these cases, it’s going to come down to battling experts over the likelihood of actual confusion, where you’re going to have surveys to show how consumers may or may not have been confused between the two marks. I think you had mentioned earlier that it’s hard to see how a fan of Neil Young and a patron of Chrome Heart’s luxury brands is going to be much overlap or confusion.
Scott: Right. I agree. It’ll be interesting to follow up and see if our call, which I think both of us are calling a high chance of success for Neil Young in defending the case, at least with regard to Neil Young and the Chrome Heart.
James: Right. So, Scott, what’s the lesson here? First, musicians need to recognize that merchandise isn’t just an afterthought. It’s often where the money is made, and it’s where trademark issues frequently arise.
Scott: Right. And let’s remember that courts wide authority to issue injunctions. If a case doesn’t settle, the agreed party may push hard to stop any further use of the name in connection with the concert and merch. That could be a significant issue for a touring band.
James: I agree. Scott, what are some of your recommendations for young bands or artists out there?
Scott: Yeah, good question, James. Okay, there are a few. So first, do a trademark search. Before naming a band or a tour, have a concert run a search to spot conflicts. And if you’re running the search, make sure that you also look at traditional band and tour merch, T-shirts, posters, coffee cups, etc. Avoid famous or established marks. If a name already has significant goodwill in fashion, entertainment, or consumer goods, I would steer clear of that. Consider licensing or collaboration. If you’re set on a name that overlaps with an existing brand, explore a licensing deal. Chrome Hearts has done collaborations before. They’re not a stranger to music tie-ins. I would suggest, though, before you reach out to an existing brand about a potential deal, get counsel from a lawyer experienced in this space. It could be like waving a red cape in front of an angry bull. So just be careful. And then lastly, think beyond music. Remember that trademark rights often extend to merchandise, live events, and online promotions. If your band name touches on those areas, you need clearance.
James: One more thing, don’t forget to protect your brand. Once you’ve picked a name, consider registering it as a trademark yourself. This will likely give you stronger rights and may deter disputes down the road.
Scott: That’s a great point, James. Thank you to our listeners for joining us on The Briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share it with your network. We’d also love to hear from you. Leave us a comment or review and let us know what topics you’d like us to cover in future episodes. I’m Scott Hervey. See you next time on The Briefing.
The Anthropic settlement shows just how costly copyright missteps can be in AI development. Anthropic has agreed to a $1.5B settlement after a court found that keeping a permanent library of pirated books was not fair use—even though training its AI model on those same works was.On this episode of The Briefing, Weintraub attorneys Scott Hervey and Matt Sugarman discuss the ruling, the settlement, and what it means for future copyright claims against AI companies.Show Notes:
Scott: In a previous episode, we broke down a key ruling in the Anthropic AI Training case. That one asked, what happens when an AI company trains its model on millions of books? Some purchased, some pirated. In that closely watched decision, a federal judge said, the training itself was fair use, comparing it to how humans learn by reading. But keeping pirated copies of those books in a permanent digital library, that crossed the line. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin. I’m joined today by my partner, Matt Sugarman. Today, we are going to talk about the one big question that ruling left open. What’s the price tag for that mistake? That answer just came in, and it’s a big one on this installment of the briefing. Matt, welcome back to the briefing. It’s good to have you.
Matt: Thank you, Scott. It’s good to be here.
Scott: Great. Well, this one’s a good one. I know you and I both talk a lot about these AI training cases, and we covered the meta case previously. But why don’t you give us a quick backstory on this case.
Matt: Okay, Scott, let’s rewind for a second. In 2021, Anthropic trained its Claude model on a massive data set of books, articles, websites, you name it. But instead of licensing the books, they grabbed millions of copyrighted works straight off the pirate sites.
Scott: Right. They did license them by some, but for sure, they pirated millions of books. Like you said, we’re not talking about a few. We’re talking about more than seven million pirated books. And those works include some very notable authors. At the same time, they bought millions of print books, they scanned them, and they built this huge searchable digital library.
Matt: That’s correct, Scott. And that’s what set off the lawsuit. The author said that Anthropic infringed their copyrights in three separate ways: downloading the pirated books, using them to train Claude, and keeping digital copies in a permanent internal library.
Scott: So when Anthropic moved for summary judgment on fair use, Judge William Alsup, of the Northern District of California, didn’t really give them a clean win. Instead, he carved up their conduct into three categories.
Matt: That’s right. Training AI on books, scanning and digitizing legally-purchased print books, and then the big problem, keeping pirated books in a permanent digital library.
Scott: And the judge treated each one differently.
Matt: Correct. First, training Claude with the books, the court said that was fair use. And not just fair use, he called it spectacularly transformative.
Scott: That’s right. He did call it spectacularly transformative. Even if Claude absorbed a lot of the underlying materials, the judge pointed out that the model wasn’t spitting out verbatim chunks of the author’s books.
Matt: Well, the second point was digitizing purchased printbooks. The authors argued that converting them into searchable PDFs was also in free trade.
Scott: But the court pushed back. Because Anthropic lawfully bought the books and then destroyed the physical copies and only kept one digital version for internal use, that passed muster as fair use.
Matt: Scott, the judge even went out of his way to say that this use was more transformative than in Texaco. Google Books and Sony Betamax, and clearly different from the Napster case.
Scott: Right, clearly different from the Napster case. That brings us to the third use, which was pirating books and retaining those pirated books.
Matt: Correct, Scott. That’s where Anthropic went off the rails. They downloaded millions of books from pirate sites, and they stored them, even when a lot of them weren’t used for trading at all.
Scott: The kicker, internal emails show that the founder and other executives really knew of the risk, and they were quite cavalier about this, but they decided that essentially, piracy was easier than licensing.
Matt: Yep. And the court said no. This was not transformative. It undercut the market, and it was full verbatim copy. The bottom line, fair use didn’t apply.
Scott: So this brings us to the fallout. So just last week, Anthropic agreed to settle the author’s claims for $1. 5 billion.
Matt: That sounds like a lot, but when you break it down, Scott, that’s only about $3,000 per copyrighted work.
Scott: True, but it doesn’t really stop at $1.5 billion. That $1.5 billion is only floor. Once the lawyers finalize the class list, Anthropic may owe another $3,000 for every infringing work over the first $500,000. Plus, they have to destroy all of the pirated data sets.
Matt: That’s right. But the settlement still needs court approval. There are a lot of logistical pieces, class certification, claims processing, notification, but the number is already quite staggering.
Scott: I agree. That number is quite big. Here’s a bigger picture. This case doesn’t really line up with Codre versus Metta, which we covered previously. In Codre, the judge rejected the whole AI learn like a student analogy, saying the risk of competitive harm was way too high.
Matt: Right. And that shows how different courts are approaching this. Judge Alsup zeroed in on the market harm and intent. In Cadegny, however, the plaintiffs They didn’t just have enough facts. But future plaintiffs could succeed, especially if they can prove market harm, even when the works aren’t pirated, but if they’re legally purchased.
Scott: And we’re already seeing this play out. Apple was sued on September fifth for copyright infringement over AI training data sets. The complaint alleges unlicensed and pirated books, and it leans hard into the market harm argument that Apple’s output could replace place the very works authors are paid to write.
Matt: The takeaway, Scott, building data sets from pirated material is at least a billion and a half dollar mistake, if not more. This case gives authors and their lawyers a clear roadmap for future claims.
Scott: It certainly does, Matt. So, thanks again to my co-host, Matt Sugarman. Matt, always great to have your insights. And thank you to our listeners for joining us on the briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share it with your network. We’d also love to hear from you. Leave us a comment or a review, and let us know what topics you’d like us to cover in future episodes. I’m Scott Hervey. See you next time on the briefing.
The Yuga Labs v. Ryder Ripps case is shaking up NFTs and trademarks. In this episode of The Briefing, Weintraub attorneys Scott Hervey and Tara Sattler unpack the Ninth Circuit’s ruling on whether NFTs count as “goods,” why the First Amendment defense fell flat, and what it all means for the future of digital asset law.
Watch this episode on YouTube.
Show Notes:
Scott: Was the Ryder Ripps Bored Ape Yacht Club NFT series a social commentary on the popular Board Ape Yacht Club and an exposure of its racist tropes? Or was it just an attempt to capitalize off of Bayes’ popularity for profit? These questions were front and center in the lawsuit between Yuga Labs, the creators of the Board Ape Yacht Club NFT. Boys, say that 10 times fast. Project and Ryder Ripps, a popular visual artist. This case resulted in a bench trial award to Yuga Labs of $8 million in damages. But the appeal of that award to the Ninth Circuit raised some very interesting issues, named Mainly the question of whether NFTs are goods that fall under the Lanham Act.
I’m Scott Hervey, a partner with Weintraub Tobin, and today I’m joined by my partner and frequent briefing contributor, Tara Sattler. We are taking a deep dive into the fascinating intersection of digital art, blockchain, and Intellectual Property on today’s installment of The Briefing. Tara, welcome back to the briefing.
Tara: Hi, Scott. Great to be here, as always.
Scott: It’s good to have you here. Let me ask you a question. Did you ever buy any NFTs?
Tara: I did not.
Scott: I did not either. But I think we’re still qualified to talk about this case, even though we weren’t suckers, I’m sorry, consumers of NFTs.
Tara: Yes, I agree.
Scott: Let’s start with a summary of the Yuga Labs case. Why don’t you tell us what exactly happened here?
Tara: Sure. Yuga Labs Inc. Created the Bored Ape Yacht Club or B-A-Y-C NFT collection, which is one of the most recognized NFT collections globally. The B-A-Y-C collection was associated with, very early with celebrity owners, including Snoop Dogg, Justin Bieber, and Jimmy Fallon. Each NFT in this collection is associated with a unique cartoon soon, Bored Ape Image, and purchasing an NFT not only grants rights to the ape art, but also membership in what’s been described as a strange combination of gated online community, stock shareholding group, and art appreciation society. Yuga Labs launched BAYC in April of 2021, quickly selling out the collection and generating over $2 million. They also developed various trademarked brand signifiers like Bored Ape Yacht Club and Bayayc.
Scott: Now, this was right as NFTs took off, some promoting NFTs as an investment category and some just promoting it as hype. There was a huge rush to the adoption of NFT art, and NFTs gained cultural relevance as status symbols. That’s where Ryder Ripps and Jeremy Cahan, hope I pronounce his last name correctly.
Tara: Comment. Prefithely. In late 2021, Ryder Ripps, a visual artist, started criticizing Yuga Labs, alleging they used neo-nazi symbolism, alt-right dog whistles, and racist imagery in the B-A-Y-C NFTs.
Scott: That’s right. According to Ripps, the Bayy-C Ape Skull logo resembled the Totenkopf emblem of the Nazi SS Stormtroopers. Ripps compiled his findings on a website and used art to satirize the Bayy-C brand. In May 2022, Ripps and Kehen created their own collection called Ryder Ripps Board Ape Yacht Club, which was linked to the exact same ape images with some slight changes and a corresponding ape ID, as was Yuga’s NFTs.
Tara: So surprise, Yuga Labs sued Ripps and Cahin and asserted 11 federal and state causes of action, including claims under the Lanham Act for trademark infringement. Yuga claimed the defendants made counterfeits market, BAYC NFTs that they advertised and sold to the same customers in the same markets using Yuga’s BAYC trademarks.
Scott: The defendants argued that their use was protected by normative fair use and the First Amendment. It’s interesting that of the 11 causes of action, Yuga didn’t sue for copyright infringement despite that the BAYC NFTs are associated with original works of art.
Tara: That’s true. What’s your thought on why Yuga didn’t sue for copyright infringement?
Scott: This is just my hypothetical and my thought. When Bayayay-C NFTs were sold, you have a lab’s granted buyer as a license to use the underlying artwork for personal and commercial purposes. It could be as broad as creating derivative works or merchandise featuring the artwork that corresponds to the NFT that you purchased. This licensing model could potentially complicate a copyright claim because Ripps could argue that his NFTs were permissible under the broad license that was granted to the BAYC NFT holders, or he could have argued that his use was fair use, especially since Ripps claimed that his project was satirical commentary of the BAYC NFT art. Now, trademark law focuses on brand confusion and not on the creative content itself. Maybe Yuga’s lawyers thought it would be a stronger avenue for them to challenge Ripps’ use of the BAYC mark than alleging claims for copyright infringement.
Tara: I agree with you there, Scott. Going back to the case, setting the table for the Ninth Circuit, the district Court granted summary judgment for Yuga Labs on its trademark infringement claims, enjoying the defendants from using the BAYC marks, and awarded Yuga over $8 million in discouragement of profits, statutory damages, attorneys fees, and costs.
Scott: That’s a very significant award. As expected, the defendants appealed the decision. They appealed to the Ninth Circuit. On appeal, the Ninth Circuit had to address three main things. First, whether NFTs can be trademarked. Second, whether to reverse the district court’s summary judgment for Yuga Labs on its trademark infringement and cybersquatting claims. We’re not going to talk about the cybersquatting claims in this discussion. But particularly focusing on whether Yuga proved likelihood of consumer confusion. And third, whether to affirm the rejection of the dependents counter claims.
Tara: So let’s talk about the first issue. Can NFTs be trademarked?
Scott: Sure. So Obviously, this was a threshold question for the court. If NFTs couldn’t be trademarked, then Yuga’s entire case went away. So, the Ninth Circuit said, yes, NFTs can be trademarked. The court noted that the Lanham Act protects marks that are used with any goods or services, but it doesn’t define what constitutes a good. However, the court found guidance from a recent USPTO report which concluded that NFTs are goods covered by the Lanahm Act. The USPTO views trademarks in NFT markets as functioning similar to those in other markets, identifying the source of the underlying asset like digital arts or services, such as club memberships represented by NFTs.
Tara: The defendants had a very interesting counterargument to that. They relied on the line of cases that they said stood for the proposition that intangible goods like NFTs are ineligible for trademark protection because there are not goods as defined in the Lanham Act.
Scott: Right. Now, that was an interesting counterargument, but ultimately it proved to be unpersuasive.
Tara: Right. The court said that there is no bright line rule delineating tangible and intangible goods, and that NFTs are different than the good in the cases cited by the defendants. One was a video cassette because they’re not contained in or even associated with tangible goods. Nfts exist only in the digital world and are associated only with digital files. They are actively marketed and traded as commercial goods in online marketplaces, specifically curated for NFT.
Scott: Right, that’s right. The court emphasized that consumers perceive the BAYC NFTs as more than just a digital deed to the authentication of artwork. They also function as, in this case, membership passes, providing exclusive access to this social club, I guess, merchandise and events. Based on this, the Ninth Circuit concluded that Yagla Labs NFTs are indeed goods under the Lanamack.
Tara: Some of the analysis of this decision call this a groundbreaking finding for the future of digital assets. You don’t believe that this part of the decision is groundbreaking. Why?
Scott: Right. I don’t believe it’s ground heartbreaking because we saw this in the 2022 case of Hermes International versus Mason Rothschild, which involved the Metta Birkin NFTs. You remember those? In that case, the US district Court for the Southern district of New York found that Rothschild’s NFT series called Metta Birkin infringed the Birkin trademarks that were owned by Hermes. The court said that Rothschild used Metta Birkins as a mark in commerce, that he used it to identify the collection of NFTs that he offered for sale. In many ways, that case foreshadowed what was to come, not only here in this case where this court found that the BAY BRYC brands are trademarks, but I also think it foreshadowed what happened in the Supreme Court’s handling of the Rogers test in Jack Daniels versus VIP products.
Tara: So speaking Speaking of the Rogers test, let’s talk about how this case addressed the defendants claims that the Rogers test applied to their use of the Bayer-YCE marks. Ripps argued that their sale of the RR Bayy-C NFTs was a component of a broader expressive art project and public protest. And as such, the Rogers test applied.
Scott: Right. So just as a quick background. So the Rogers test provides a narrow First Amendment to trademark infringement for expressive works unless the use is irrelevant or explicitly misleading. However, those frequent listeners to this podcast know, the Supreme Court’s decision in Jack Daniels Properties versus VIP products, narrowed this doctrine quite a bit. The Supreme Court made it clear that this First Amendment exception does not apply where an alleged infringer uses a trademark in the way that the Lanham Act most cares about. In other words, as a designation of source for the infringer’s own good. So as a trademark.
Tara: In the appeal, Ripps and his fellow defendant devoted significant briefing to explaining the expressive nature of their RR, B-A-Y-C, NFT project, and relatively little to explaining how their use of Yunga’s marks was not a designation of source for their their own NFTs. And ultimately, the court found that the defendant’s cursory assertion that it did not use Yunga’s marks as identifiers of source, failed that Jack Daniels test.
Scott: Exactly. The Yunga Court found that Ripps and Kehan used the Bayes-C Mark as marks, meaning as a source identifier, not merely to describe or to reference the Yunga Labs NFT project. For example, they embedded Bored Ape Yacht Club and Bayy C into the name of their NFT project, so R-R-B-A-Y-C NFT, and its trading symbol. They also used those marks in advertising. The court explicitly stated that it doesn’t matter that the defendant’s ultimate goal may have been criticism or commentary because they were still using a similar-looking mark and a similar-sounding mark as a designation of source for their own goods. The court emphasized that the functionality of the mark itself, how it operates and whether it’s likely to cause confusion, is what the Lanham Act addresses, not the user’s subjective intent. So since the defendant’s use was, at least in part, for source identification, the First Amendment exception under Rogers was foreclosed.
Tara: Yeah, and you mentioned the Airmays case that foreshadowed this result and the Supreme Court’s decision in Jack Daniels. In Airmays, where Mason Rothschild created meta-berk in NFTs that depicted furry versions of Airmays’ iconic Berkene bags, Airmays sued him for trademark infringion and dilution. The court in Hermès found that the Rogers test was applicable, but also found that the defendant could not avail himself of that defense since his use of the Berk in Mark was explicitly misleading. Why do you think this foreshadowed Jack Daniel?
Scott: It is true that the Hermès Court found that Rogers was the analytical framework. However, it was the Court’s treatment of the second Rogers factor, the explicitly misleading factor, specifically the application of the Polaroid factors to assess this prong, which showed that Rogers was heading for a narrower application. The court noted that Rothschild’s Metta Birkins NFTs were not purely artistic, but functioned as a commercial product, sold for profit, and marketed in a way that suggested a connection to Hermès’s iconic Birkin brand. The court highlighted evidence of consumer confusion as being critical to assessing whether Rothschild’s use was explicitly misleading under Rogers.
Tara: By applying the Polarite factors, the court was focusing on whether the Meta Birkin NFTs operated as source identifiers, implying a brand affiliation with Hermès.
Scott: Hermès wasn’t just looking at whether the use was in connection with an expressive work. It was looking at the nature of that use as well. In Jack Daniels, the Supreme Court clarified that Rogers does not apply when a trademark is used as a source identifier, such as when a mark is used to designate the source of a defendant’s own good. In that case, it was a dog toy that was mimicking the Jack Daniels’ whiskey bottle. The court emphasized that trademark law’s core purpose, preventing consumer confusion, takes precedent in such case. The Hermes Court’s scrutiny of Rothschild’s commercial intent and the resulting consumer confusion, a test, aligned with this principle, suggesting that Roger’s protections are limited when a defendant’s use mimics a brand’s commercial identity. As opposed to being purely expressive.
Tara: Yeah, and the Jack Daniels decision did clarify that courts should not reflexively apply Rogers to any use of an expressive element. In Instead, they must first determine whether the use functions as a source identifier.
Scott: Right. And there are many courts fact-intensive approach in determining that second Rogers factor, focusing on whether the Metta Birken Mark was explicitly misleading via the Polaroid factors, anticipated this by requiring robust evidence of confusion in a commercial context before dismissing First Amendment protections. This aligns with Jack Daniels’ emphasis on distinguishing between expressive and commercial uses of trademarks.
Tara: Right. So while Hermes didn’t have the Jack Daniels case to cite, it effectively reached a very similar conclusion that using trademarks, famous marks, to sell your own product, even if it has an expressive element, falls outside the scope of Rogers.
Scott: Right. So props the Judge, Rackoff, the judge rack the judge in the Hermes case for understanding where Rogers was going before the Supreme Court’s decision in Jack Daniels. All right, so let’s get back to this case, the Yuga Labs case. So if an NFT can be trademarked and the First Amendment defense doesn’t apply, let’s talk about why summary judgment for Yuga Labs on trademark infringement was reversed and what is still left to be decided.
Tara: It’s fairly straightforward. The Ninth Circuit reversed the summary judgment because Yuga Labs has not proven as a matter of law that the defendant’s actions were likely to cause consumer confusion.
Scott: Right. That likelihood of consumer confusion, it’s a core element of trademark infringement. It’s generally a fact-intensive inquiry that should not be decided by a court on a dispositive motion, but should be reserved for a jury. To be clear, it’s not that Yuga Labs can’t win, but they haven’t proven it as a matter of law just yet.
Tara: Exactly. The court looked at the sleep craft factors, which are used to assess the likelihood of confusion in trademark cases, especially in internet commerce. There were some factors leaning toward Yuga, such as the strength of the mark and relatedness of the goods.
Scott: Right. So focusing briefly on those two factors, this is what the court found. So for strength of the mark, the court found that the VA AYC marks were conceptually strong and commercially strong due to their widespread recognition, celebrity attention, etc. As the proximity of the goods, the Ryder Ripps’ BAYC NFTs and the Yuga Labs, B-A-Y-C NFTs, were nearly identical in terms of images and ape IDs. The defendants even copied Yuga’s smart contract name and symbol, which could cause misidentification.
Tara: Although these two factors favored Yuga Labs, that wasn’t enough. The court noted that several factors remained unclear and that a jury would need to weigh the evidence. For example, on the similarities of the marks factor, the court noted that although the marks are similar, the addition of the R-R and the backslash in R-R/bayc, R-R referring to Ryder Ripps creates visual and auditory differences that a juror could find significant enough to avoid confusion.
Scott: And as for evidence of actual confusion, while Yuga presented some evidence, other evidence suggested that some interested consumers did know the difference, making this factor neutral. There were also questions about the similarity of the marketing channels for the goods. Most of the dependent sales occurred on their own One website, rrbayc. Com, which is different from Yaga, it’s bayc. Com, and the extent of sales on shared platforms like Twitter was unclear. So this factor favored the defendants.
Tara: Another sleep-craft factor, which looks at the type of goods and degree of care by the purchaser, tended to favor the defendants. The court noted that NFTs are generally considered sophisticated and often expensive goods. So, the significant price differential between Bayy-C NFTs, which sold for millions, and the Ryder-Ripps Bayy-C NFTs that sold for $100 to $200 could alert consumers to a difference.
Scott: It should alert consumers to a difference. All right. Lastly, the court noted that the last factor, the factor that analyzes the defendant’s intent in adopting the allegedly infringing mark, could favor the defendants. The court recognized that Ripps and Cahan had dual motives to criticize Yuga and satirize NFTs, but also potentially to confuse consumers.
Tara: Yeah. So, the future of this dispute now rest with the jury to decide whether consumers were truly confused by the Ryder Ripps, B-A-Y-C, NFT.
Scott: Exactly. Yuga Labs may still prevail, but they’ll need to convince a jury at trial. This space will continue to be a significant one for trademark law in the digital asset space, and one that we are going to watch and report back on. So that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please leave us a comment.
50 Cent’s two-minute cameo in the horror film “Skill House” turned into a full-blown legal battle over credits, contracts, and control. In this episode of The Briefing, Weintraub entertainment and IP attorneys Scott Hervey and Tara Sattler break down what went wrong—and what Hollywood can learn from it.Watch this episode on YouTube.Show Notes:
Scott:
Picture this, Curtis 50 Cent Jackson, hip hop legend and media mogul, steps on to the set of a new horror flick, Skill House. He films a quick two-minute scene, gets billed as a producer, and then next thing you know, he’s in court, trying to stop the film’s release, claiming his name and likeness were used without his permission. But the producers say, Hold on, wait a minute, we had a deal. Welcome to the Briefing by Weintraub Tobin, where we dissect the legal showdowns Shaking Up Hollywood.
I’m Scott Hervey, and I’m joined today by my partner, Tara Sattler. Today, we’re going to unravel this messy dispute on today’s installment of The Briefing. Tara, welcome back to The Briefing.
Tara: It’s always great to be here, Scott, and welcome back. I know you’ve been gone for a little bit.
Scott: Yeah, that’s right. We pre-filmed about four or five episodes, and they weren’t our standard deep dive into current cases. I’m happy to dig back into this one. This I wrote while I was away on vacation because I found this case from the start to be incredibly interesting.
Tara: God, since I work with a lot of studios and production companies, this case is absolutely my worst nightmare.
Scott: Oh, mine too. I work with a bunch of studios and production company as well. When I read this case, I broke out in cold sweat. This is the thing that keeps you up at night.
Tara: Yeah, it really is. It’s a wild ride. A 50 Cent, a horror film, a missing signed contract. Let’s get into it.
Scott: Yeah. So let’s start with the factual history of the dispute, Tara. Why don’t you give our listeners a Some background on what’s going on here.
Tara: Yeah, absolutely. So this case revolves around Skill House, a horror film that was released on July 11th, 2025, earlier this summer. Curtis Jackson, also known as 50 Cent, appears in the film for just over two minutes, but is prominently featured as a producer in its marketing. 50 Cent and his company, NYC Viive LLLC, filed a lawsuit against the film’s production company, Skillhouse Movies, LLC, its producer Ryan Cavenagh and GenTV, LLC, alleging unauthorized use of his name, likeness, voice, trademarks, and other intellectual property. 50 Cent then sought a preliminary injunction to stop the film’s release, claiming it would cause irreparable harm to his brand and reputation. The defendants, however, argued that 50 Cent agreed to participate in and promote the film in exchange for a back-end profit share of 10%, among some other terms.
Scott: Right. So the core issue, or one of the core issues, is whether there was an agreement. What’s the backstory on that, Tara?
Tara: So in the summer of 2022, 50 Cent and Cavenagh started discussing his involvement in Skillhouse, which is Gen TV’s first feature film. On June 26th, 2022, 50 Cent Council, Stephen Sava, emailed Production Council Neil Sacker, confirming they were good to go on the terms, including producer credit, 10% of the back-end profits, social media promotion with approval rights, product placement for 50 Cent Cognac and champagne brands, and a small acting role. Kavanaugh confirmed these terms, and on July second, 2022, Sacker sent a binding term sheet and certificate of employment, which included $100,000 in fixed compensation and a clause barring 50 cent from seeking injunctive relief in relation to the film. The parties exchanged some revisions on those documents, and by July 30th, Sacker sent what he called the final version of the agreement. But here’s the catch. Neither side can produce a signed copy. So Kavanaugh claims that 50 Cent signed it on set on August second, 2022, in front of witnesses. But 50 Cent and his team deny that.
Scott: That’s pretty messy. I see how this all plays out because this happens. This just happens. But it’s messy. No signed agreement. But the parties kept working together.
Tara: Yeah, they did, even without a signed contract. So 50 Cent filmed his scene, and his team continued discussions about promotion and payment terms. For example, on August 15th, 2022, 50 Cent commented positively about a film flip, and he later discussed product placement with Kavanaugh. But by April of 2025, 50 Cent’s team claimed they hadn’t been paid, and on June 2, 2025, he filed the injunction to block the film’s release, citing federal and state trademark infringement, unfair competition, false advertising, and violations of his right of publicity.
Scott: So let’s get to the court’s legal analysis. Let’s talk Can you talk a little bit about why the court denied 50 Cent’s request for a preliminary injunction that would have injoined the distribution and exploitation of the feature film.
Tara: Yeah. The Court’s decision was issued on July 11th, 2025, by Judge Hernan D. Vera, and it hinged on the winter factors for preliminary injunction. Those are likelihood success on the merits, irreparable harm, balance of equities, and public interest. The court really focused on the first factor, the likelihood of success factor, and found that 50 Cent didn’t clear the bar. The key issue was whether 50 Cent consented to the use of his name and likeness. The defendants provided evidence like emails and text from 50 Cent’s counsel suggesting mutual assent to the agreement’s material terms, even if it signed. For example, Sava’s good to go email and subsequent negotiations showed Jackson’s team was on board. The court also noted that Jackson’s actions, like filming his scene and discussing promotion, supported the defendant’s claim that an agreement really did exist.
Scott: Right. Based on the facts, this seems to be the right decision. 50 Cent published numerous posts on his social media accounts about his involvement in the film. 50 Cent is a very, very successful businessman, and I’m sure he and his team carefully vet all of his projects, which is probably why it was hard for the court to believe that he not only performed his scene, but that 50 Cent and his entire team spent two and a half years marketing and promoting a film he never actually agreed to be in.
Tara: While not having a signed agreement isn’t best practices, it didn’t sink the defendant’s case here.
Scott: Right. I mean, let’s point out it is not best practices, and most studios require a signed contract or some form of a signed agreement, whether it’s a certificate of engagement or long form before anybody starts rendering work. But you’re right, it didn’t sink the case. The court emphasized that a contract can be formed through mutual assent, even without a signature, as long as the parties agree on material terms. This isn’t the first time a court hearing a contract dispute involving an actor’s participation in a project upheld an oral agreement.
Tara: Right, Scott. I think you’re talking about the 1993 case, Mainline Pictures versus Basinger, which is often cited as a landmark decision in Hollywood regarding the enforceability of oral contracts.
Scott: Oh, definitely. Yeah, that’s exactly what I was talking about. In that case, Mainline Pictures versus Basinger, Kim Basinger was ordered to pay $8. 9 million to Mainline Pictures for backing out of an oral agreement to star in the film Boxing Helena. The court found that Basinger’s verbal commitment, coupled with actions like reviewing the script and meeting the director, formed a binding contract even without a signed document. This case set a precedent that oral agreements in Hollywood can be enforceable if there’s clear evidence of mutual assent. In the scale house case, the court applied a similar logic. Although no signed contract was produced, the defendant’s evidence, emails, text, and 50 Cent participation on set, suggested mutual assent to key terms like his role and promotional duties. Just as in Basinger, the court didn’t require a signed contract to find that 50 Cent likely agreed to the use of his name and likeness, undermining claim of unauthorized use. The Basinger precedent gave the court confidence to deny 50 Cent injunction, as it showed that oral or implied agreements can hold up when supported by consistent conduct and communications.
Tara: Basinger looms large here, and it really shapes the takeaways for this case.
Scott: Right. The Basinger case reinforces the skill house ruling, I guess it’s core lesson. In Hollywood, you don’t always need a signed contract to be bound. Both cases show that courts will look at a party’s actions and their communications to determine intent. In Basinger, it was her meetings and her verbal commitments. In Skill House, it was 50 Cent’s participation in the filming and the promotional discussions and his social media activity. This connection underscores why studios now, well, they probably always always have, but they certainly do insist on signed contracts before services are rendered. Basinger sent shockwaves through the industry, and Skillhouse is a reminder that Lucid agreements can still lead to legal battles.
Tara: Absolutely. Here, the defendants’ declarations and exhibits, like email exchanges and Kavanaugh’s claim that 50 Cent did sign the agreement on set, created enough doubt about 50 Cent’s claims. So the court didn’t need to rule definitely on the contract’s existence. It just found that 50 Cent couldn’t show a likelihood of success or even serious questions on the merits, which is fatal for a preliminary injunction. So because of this, the court didn’t even address the other winter factors like irreparable harm.
Scott: Right. And that brings us to the two key lessons or two key takeaways from this case.
Tara: Yeah. The first one is fairly obvious, which is the importance of having some type of signed agreement before any non-employee We render services on any type of creative project.
Scott: Right. So this case is a textbook example of what can go wrong when you let any form of talent, whether that’s an actor or a writer or a director or a producer, start working without a signed agreement, without any form of a signed agreement. Now, most studios have a strict no signed agreement, no work policy, because it avoids exactly this dispute. Here, 50 Cent filmed the scene and engaged in promotional discussions without, or at least allegedly, without a signed deal, leading to a he said, he said battle over whether an agreement actually existed. If the defendants had insisted on a signed contract before 50 Cent stepped on set, or if they held on to that signed contract, once 50 Cent signed it on set, they could have avoided this litigation, or at least had a stronger defense. The absence of a signed agreement left both sides relying on emails, text, and conflicting declarations, which muddied the waters and prolonged the dispute, and that means money. Studios enforce this policy to lock in terms protect against claims like the ones that 50 Cent made, which could have derailed the movie’s release.
Tara: Yeah, absolutely. It really could have. Here it seems that 50 Cent may have had a signed certificate of engagement, even though no one could find a copy of it.
Scott: Right. I mean, it’s a fairly standard practice, as we both know, in the entertainment industry, to have a producer, a director, a writer, sometimes even an actor, sign a certificate of engagement before a full long form agreement is signed. A certificate of engagement is itself a binding agreement that sets out the key material terms relating to that talent, that artist’s engagement. In addition, certificates also generally include an arbitration provision, a waiver of injunctive relief, and other core requirements for a written contract.
Tara: Yes, they definitely We certainly do. That actually brings us to the second lesson that we learn here, which is the importance of the waiver of injunctive relief provision.
Scott: Right, absolutely. In the entertainment industry, it’s standard practice to include a provision in, well, not just talent agreements, but you see them in almost every single agreement related to anything that appears on camera or has anything remotely to do with the production of either a television or a motion picture or any type of creative output. That’s a term that waives the right to seek injunctive relief. This case shows why that provision is enforceable. The defendants argued that the unsigned final agreement included a cause barring 50 cents from seeking injunctive relief, which would have blocked this motion outright if the court had found the agreement enforceable. This clause protects production companies and studios studios and distributors from last minute attempts to halt a film’s release, which is a lot about leverage, and it can cost millions of dollars and disrupt distribution schedules. Without such a clause or without a signed agreement to enforce it, producers, studios, distributors face the risk of a lawsuit like this one where a plaintiff can try to gain leverage by threatening to pull the plug at the 11th hour. Even though 50 Cent’s injunction failed, the clause’s presence in the draft agreement maybe influenced the court’s view on the party’s intent.
Tara: Yeah, I think that’s right, Scott. What are the takeaways for the entertainment industry from this case?
Scott: Yeah. This case is a wake-up call. First, always get agreement signed before work begins. No exceptions. A handshake deal email or email chain isn’t enough when millions of dollars are on the line. Second, include clear waivers of injunctive relief in contracts, including certificates, to shield against attempts to block a project’s relief. Parties. Finally, keep really good records of negotiations and have someone designated to collect and retain and distribute agreements that are signed on set. The defendants evidence of mutual assent saved them here, but a signed contract, if they would have had some type of coordinator on set who Kavanaugh could have said, Here, hold this and scan it into our system, That would have made this case or their defense a slam dunk. For talent, this case shows the risk of proceeding without clear, executed agreements. You might lose leverage to control how your name and likeness would be used.
Tara: Absolutely, Scott. I agree with all those takeaways. This dispute is really a reminder that in the entertainment industry, the fine print can make or break a project.
Scott: Right. Well, that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics cover today, please leave us a comment.
You came up with a clever brand name in a foreign language—great! But did you know it might be refused by the USPTO? In this episode of The Briefing, Scott Hervey and Richard Buckley break down what a doctrine is, how trademark examiners apply it, and other important considerations for choosing foreign-language marks.
Watch this episode on YouTube.
Show Notes:
Scott: You’ve come up with a great brand. It’s clever, it’s catchy, and it’s in a foreign language. But when you file for a trademark, the USPTO refuses your application. Why? Well, the answer might lie in an obscure but important rule, the doctrine of foreign equivalence. I’m Scott Hervey, a partner with a law firm of Weintraub Tobin, and I’m joined today by my partner Richard Buckley. We are going to unpack the doctrine of foreign equivalence, how it works, when it applies, and what it means for brand owners and their lawyers on today’s installment of the briefing. Richard, welcome back to The Briefing.
Richard: Great to be here, Scott. Great topic.
Scott: Yeah, I was reminded of this when I was looking at a trademark search for a client, and it happened to be for a consumer brand, and their mark was in Italian. In clearing the brand, I had to think, Okay, what does that word mean? I had to look for that English language word for similar products. I’m jumping ahead of myself, though. Let’s start with the basics. The doctrine of foreign equivalence is a rule in US trademark law used to analyze trademarks that contain foreign words. Under this doctrine, a foreign word used in a trademark mark may be translated into English to determine whether the mark is generic or merely descriptive, and whether it’s confusingly similar to another registered or pending mark.
Richard: The doctrine reflects the idea that the average American consumer familiar with the foreign language may translate the word when encountering the mark. It’s not automatic. Translation only happens if it’s likely that the consumer would recognize the term translate it mentally into English.
Scott: All right. So let’s talk about how this comes up in practice. So during the trademark examination process, and that happens after an applicant has filed their trademark registration application with the Patent and Trademark Office, the USPTO examining attorneys are required to consider whether a foreign term should be translated under this document. The USPTO even has what’s called a Trademark manual of Examining Procedure, or the TMEP, which directs examiners to apply the doctrine when it is appropriate.
Richard: Here’s how they typically analyze it. First, language recognition. Is the word in a common, modern, foreign language that is spoken by a substantial portion of US consumers? Spanish, Italian, French, German, and Mandarin are the usual suspects.
Scott: Last Latin, not so much. Okay.
Richard: Not anymore.
Scott: Translatability. Is the term directly translatable? For example, Lupo, right? It’s Italian for wolf.
Richard: Third, relevance of the translation. Does the English translation affect the analysis of the mark? For instance, if the translation is descriptive or generic, that can be grounds for refusal. If the translated the word is confusingly similar to an already registered English language mark, that may lead to a Section 2D likelihood of confusion refusal.
Scott: Right. The doctrine of foreign equivalence only applies when an ordinary American purchaser is likely to translate the foreign mark into English. However, the Trademark Trial and Appeal Board has interpreted the phrase ordinary American purchaser as purchasers familiar with the foreign language. This definition of ordinary American purchaser effectively guarantees that the doctrine would be applied in almost every case involving a foreign word, since those familiar with a non-English language would ordinarily be expected to translate the word into English. So the bottom line of that is if your mark is in a foreign language, it’s always best to analyze whether that mark conflicts with its English language counterpart.
Richard: Scott, let’s discuss why this matters for brand owners, especially in entertainment and consumer-facing industries.
Scott: Sure. That’s a great idea. All right, so let’s say you’re launching a fashion label, and let’s say it’s called Bell Mode, French for beautiful fashion. Even though that sounds elegant, it could be viewed as merely descriptive when translated, making it hard, if not impossible to protect.
Richard: Or imagine you name your tequila Toro Azul, a Spanish for a blue bowl. If there’s already a brand called Blue Bull Spirits, you may be blocked, even if your mark is entirely in Spanish.
Scott: For entrepreneurs, the key is to avoid assuming that using foreign words gives your brand instant uniqueness. And also recognize that common or translatable foreign words may be treated the same, I will say, will likely be treated the same as their English counterparts in the eyes of the law, or at least in the eyes of the TTAB.
Richard: For attorneys and brand clearance professionals, here are three best practices. One, translate foreign terms in proposed trademarks as part of your clearance process. Two, Search for English equivalents and phonetic similarities in the US Patent and Trademark Office database and common law sources. Third, be prepared to address the doctrine in your application or in response to an office action.
Scott: If I may add, Richard, in the search, number 2, the search part, most of the time you’re going to hire a third-party search firm to do the searching for you. Make sure that they are also searching the English translation and not just the foreign word. If they’re not, call them up and tell them to rerun the search. Also, keep in mind that the doctrine doesn’t always work against the applicant. In some cases, it’s evoked to support refusal, but in others, it might help argue against confusion if translation is unlikely or if it’s a very obscure language, like Latin. All right, so before we wrap this up, it’s worth noting that, as I said, the doctrine doesn’t in every case. Courts and examiners will not apply the doctrine if the foreign term is rare or obscure, if the term has no clear English translation, or if the term would not be translated by the relevant consumer because they treat it as a brand name and not a literal word.
Richard: Also, the doctrine is more likely to apply when the language is widely spoken by a significant portion of US consumers. For example, Spanish language marks face closer scrutiny because of the large Spanish-speaking population in the United States.
Scott: The doctrine of foreign equivalence may sound like a niche rule, but it has major implications for brand strategy. If you’re working with foreign language names, whether it’s in the entertainment industry, fashion, food, beverages, or tech, understand this doctrine can help you avoid costly setbacks and strengthen your trademark rights from the start. Thanks again to my co-host, Richard Buckley. Richard, always great to have your insights here. Welcome back anytime.
Richard: Thank you, Scott. I look forward to the next refresher.
Scott: Thank you to our listeners or viewers for joining us on the briefing today. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share it with your friends and colleagues. We’d love to hear from you. If you have any suggestions, leave us a comment or review, and let us know what topics you’d like us to cover in future episodes. I’m Scott Hervey. I’ll see you next time on the Briefing.
Can you use a celebrity’s voice or image in your work? What about AI-generated versions? On this episode of The Briefing, Scott Hervey and Richard Buckley explore the right of publicity—how it protects names, likenesses, voices, and what happens when you cross the line.
Watch this episode on YouTube.
Show Notes:
Scott: Can you use a celebrity’s name or likeness in your film, in your podcast, or in an advertisement? Well, you shouldn’t do that without understanding the right of publicity, because if you don’t, there certainly will be lawsuits or problems that will follow. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I am joined today, again, by my partner, Richard Buckley, and we are going to talk about the right of publicity, an always hot issue in entertainment on today’s installment of The Briefing. Richard, welcome back.
This is our fourth installment of the Refresher Series here. And today we’re talking about right of publicity. All right, let’s jump right into it. The right of publicity protects an individual’s name, image, and likeness, and sometimes even voice or signature from being used commercially without their consent.
Richard: Unlike copyright or trademark law, the right of publicity is grounded in privacy and property interests. It gives people, especially public figures, control over how their persona is used.
Scott: Right. Also, unlike copyright law, it is purely based on state law. There is no federal right of publicity law. All right, let’s talk about key elements. To bring a claim for violation of right of publicity, a person generally must show that their identity was used. It was used for a commercial purpose, so generally in connection with the sale or advertisement of goods or services. It was used without consent, and it resulted in damages or unjust enrichment. This applies both to living individuals and in many states, like California, to deceased personalities whose estates may maintain postmortem publicity rights.
There are many notable cases, but one of the classics is White versus Samsung, Banner White. Samsung ran an ad with a robot dressed like Banner White, turning letters on a game show set like Wheel of Fortune. Even though it wasn’t her, the court found that the ad evoked her likeness without permission, and that violated her publicity rights.
Richard: Other great examples are two cases that set the framework for soundalike cases. The first was Midler versus Ford, and the second was Tom Waits versus Frito Le. Both cases involved the use of a he sounded like a singer singing a song in the style of those artists in a television commercial or in two TV commercials. Both cases held that when a voice is a significant indicator of a celebrity’s identity, like Arnold Schwarzenegger or Sylvester Stallone, the right of publicity protects against its imitation for commercial purposes without the celebrity’s consent.
Scott: So what about biopics or documentaries? Here, the First Amendment comes into play.
Richard: Right. If the use is part of an expressive work, that use may be protected, especially if it’s newsworthy or if it’s transformative. Courts often apply the transformative use test that was seen in the case Comedy 3 Productions versus Satarup, where the California Supreme Court said that the First Amendment doesn’t protect literal reproductions of celebrity images used in merchandise.
Ai generated voices and faces are raising new issues. If you generate a synthetic version of someone’s voice or what we would call a deep fake of their likeness, you could run into publicity rights and false endorsement claims.
Scott: Several states have laws on the books to address this, and other states are updating their laws to address this. We’ll likely see more litigation around digital replicas in advertising, video games, and even virtual performances. All right, let’s talk about some practical guidance. Here’s the bottom line. Always get a release if you’re using a person’s identity for commercial purposes. Don’t assume you can use a lookalike or a soundalike without consequences. For expressive works, evaluate with your lawyer whether the use is permitted. Keep an eye on evolving state law, especially around digital likeness and postmortem rights. Thanks again to my co-host, Richard. Richard, always great to have your insights. And thank you, our listener, for joining us on the briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share with your network. We’d also love to hear from you, so leave a comment or a review and let us know what topics you would like us to cover in future episodes. I’m Scott Hervey. I’ll see you next time on The Briefing.
Who owns the rights when you co-create something? It’s not always as simple as you think. On this episode of The Briefing, Scott Hervey and Richard Buckley dig into: ✔️ Joint authorship ✔️ Work-for-hire rules ✔️ Why every collaboration needs paperworkAvoid disputes before they derail your project. Watch this episode on YouTube.Show Notes:Scott: In a film, a television show, and music— creative projects are almost always collaborative. So, who owns what? And how do you avoid a fight over rights down the line? I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by our partner, Richard Buckley. We are going to talk about copyright ownership in collaborative works and how to avoid using Richard’s services as a litigator on today’s installment of The Briefing.
Richard, welcome back to our third installment of, we called it last In the last episode, we called it Refreshers. I think I said I like to call them refreshing. These are our refresher episodes where we’re going to cover basic issues, refresh our audience on some basic issues. Today we’re covering copyright basics, collaborative works, and how to avoid the unfortunate and often painful task of hiring litigator like yourself to deal with disputes. All right, let’s start at the beginning. Copyright basics. A copyright protects original works of authorship that are fixed in a tangible medium. So think, scripts, songs, films, choreography, artwork, photographs, lots more. Ownership automatically vests in the creator unless there is a written agreement stating otherwise.
Richard: Scott, this is certainly your world, but in entertainment, collaboration is constant. But how the law treats collaborators depends on how the project is structured. In a joint work, two or more people intend to merge their contributions into a single piece. Think of songwriting duos or co-writers film.
Scott: It’s important to note that in a joint work like that, each co-author owns an undivided interest in the whole work. That means each individual can independently exploit that work, license that work, distribute that work without the other’s permission, even though they would have to share profits. You could see that can get a little bit confusing in the marketplace. Where you have a joint work, it’s It’s best to have a writing between the two and define who’s responsible for what. Contrast that with works made for hire. If a creator is your employee or if there is a signed agreement that states that the work is a work made for hire, then the employer or the commissioning party owns all of those rights.
Richard: Problems arise when the roles are not clearly defined. Perhaps the composer thinks that he he or she owns the score that they wrote, the production company disagrees, or a freelance editor claims they were not a work for hire because no written agreement exists. These disputes can stop a project from being sold, licensed, or even released. Without a clear chain of title, distributors often walk away.
Scott: That’s very, very true. All right, let’s talk about some real-world scenarios. Let’s take an independent film. You might have, and you will have, a director, a writer, a composer, a cinematographer, a graphic designer, or a VFX company that creates visual effects or the title cards. You have a bunch of actors, lots of people that contribute to the creation of an independent film.
Richard: Right. And unless all of these contributions are either made by employees or are under a written agreement with either an assignment or a work made for higher provision. You could have multiple rights holders with the power to block distribution or demand royalties later.
Scott: That’s right. And that’s not just film where that can happen. In music, co-writers need to agree on splits and ownership early. Same thing with a music producer. In the influence or creator economy space, creator content, video editors or collaborators may claim rights if terms are not clearly spelled out. All right, so let’s talk about some best practices. Here are some takeaways. Always have written agreements. Use work for higher language in all of your agreements, I say, and also have assignment language. For joint works, if you intend to hold the copyright jointly between two authors, clarify, split, and make sure it’s really clear that the agreement is really clear on who has the authority to do what with the work. Also, don’t assume that just paying someone automatically gives you copyright ownership. It does not. While it may give you the right to be deliverable or the end product, it does not vest you with the rights that are vested in a copyright owner. You might find that all you own is the copy what was delivered to you, but all the underlying rights are not yours.
Richard: All great advice. I’d add one thing. If you’re hiring freelancers, make sure that your agreement covers intellectual property, even if you’re just collaborating casually.
Scott: So thanks again to my co-host, Richard. Richard, always great to have your insights. And thank you, our listener, for joining us on The Briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share with your network. We’d also love to hear from you, so leave a comment or a review and let us know what topics you would like us to cover in future episodes. I’m Scott Hervey. I’ll see you next time on The Briefing.
From podcast names to iconic sounds, trademarks shape the entertainment world. In this episode of The Briefing, Scott Hervey and Richard Buckley break down what trademarks are, how to get one, and why creators must protect their brand. A must-listen for anyone building a name in entertainment.Watch this episode on YouTube.Scott: From movie titles to podcast logos, trademarks are everywhere in the entertainment industry. But how do you get one and what does it actually protect? I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Richard Buckley. We are going to talk about the fundamentals of trademark law and why it matters in the entertainment industry on today’s installment of The Briefing.
Richard, welcome back. This is our second installment of our, I guess we’ll call it our Basic Series. It’s not basic, but it is a series on basic issues.
Richard: It’s a great refresher.
Scott: It is. The Refresher Series. I like that. The Refreshing Series. All right. So let’s jump into this here. So let’s start with the definition. What is a trademark? So A trademark is any word, phrase, symbol, or design. It actually even can be a color, and it can also be a noise that identifies and distinguishes the source of goods or services. So think names like Marvel, Pixar, Netflix, or even think the distinctive chime sound from NBC. And let’s not forget the color blue. That is the color of the Tiffany box, right? That’s also a trademark.
Richard: So trademarks are fundamentally about branding. You’re telling consumers where a product or service comes from and preventing confusion in the marketplace. Right.
Scott: So in entertainment, a trademark covers more than you might think. Show titles, well, series titles, production companies, logos, podcast names, podcast series names, even character names in film franchises, they can also be trademarked. If they function as brand identifiers.
Richard: Take, for example, Star Wars. That’s a trademark. So is The Tonight Show. If you’re launching a podcast or a production company, you want to consider protecting your brand as well.
Scott: Let’s talk about what goes into obtaining a trademark. Some people are surprised to learn that you really don’t need to register a trademark to have rights in it. Just by using a mark in commerce, you can establish what’s called Common Law Trademark Rights.
Richard: But registration with the US Patent and Trademark Office gives you several benefits: nationwide protection, presumed ownership, the ability to use that cool symbol, the circle with the R in it, trademark symbol. Also, you have a clearer path to enforcement.
Scott: Yeah. Also, I might add a federal trademark registration is required in order to protect your brand outside of the United States. It is what’s required. Often, also, a federal trademark registration is required if you are dealing with taking down counterfeit merchandise off of B2C sites like Amazon or Etsy or Redbubble. All right, let’s talk about what goes into choosing a trademark and how to avoid choosing a wrong one. One of the biggest mistakes I see is creators falling in love with the name before clearing it. Clearence is about searching to ensure that no one else is already using a confusingly similar mark in your space, your industry, on your same or similar goods or related goods or services.
Richard: It’s important to note that a strong trademark is distinctive. It’s not generic or descriptive. The more unique your name or logo is, the easier it is to protect it.
Scott: That’s right. All right. So once you have a strong trademark, let’s talk about enforcing your rights and dealing with infringement. So trademark infringement is all about likelihood of confusion. What does that mean? Courts will look at whether consumers are likely to believe your product or service comes from or is affiliated with somebody else.
Richard: We’ve seen high-profile disputes like the World wrestling Federation versus the World Wildlife Fund. That’s where the wrestling company, WWF, had to rebrand to WWE, or the Comicon lawsuits between San Diego and Salt Lake over who owns the term.
Scott: Ryan, if you own a mark, you have to police it. That means monitoring for infringing uses, and when necessary, sending the cease and desist letters or taking legal action. And I always counsel my clients, don’t just think that just sending a cease and desist letter is the end of it, because if the other side doesn’t stop, well, you’re faced with the choice of really not doing anything and you’re having your trademark rights erode or spending the money to enforce your rights.
Richard: Right. If you just send a letter and don’t follow up on it to put any teeth of enforcement behind it, then you can get a reputation for just being full of hot air.
Scott: Right. Then no one will pay attention to your cease and desist letters, that’s for No. All right, so let’s talk about some practical takeaways. Here’s what creators should keep in mind. You should always choose a name that’s distinctive and not already in use. Clear the name through trademark searches. You should hire a lawyer to do that. Don’t think you can do it yourself because you really can’t. Consider registering your mark federally. Monitor the marketplace and enforce your rights when needed.
Richard: I think that’s great advice.
Scott: So thanks again to my co-host, Richard. Richard, always great to have your insights. Thank you, our listener, for joining us on The Briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share with your network. We’d also love to hear from you, so leave a comment or a review and let us know what topics you would like us to cover in future episodes. I’m Scott Herbie. I’ll see you next time on The Briefing.
Creators, beware: just because it’s online doesn’t mean it’s fair game. In this episode of The Briefing, Scott Hervey and Richard Buckley break down one of the most misunderstood areas of copyright law—fair use.
In this episode, they cover:
- What makes a use “transformative”?
- Why credit alone doesn’t protect you
- How recent court rulings (Warhol v. Goldsmith) are changing the game
- Tips to stay on the right side of the law
Watch this episode on YouTube or listen to this podcast episode here.
In a major win for Meta, a federal court recently dismissed a lawsuit brought by prominent authors who claimed their books were illegally used to train the company’s LLaMA models. But the ruling doesn’t give AI companies a free pass—it reveals the roadmap for how a better-prepared copyright plaintiff could win next time.
In this episode of The Briefing, Scott Hervey is joined by his partner Matt Sugarman as they break down:
- The background of Kadrey v. Meta
- The court’s detailed fair use analysis
- A comparison to Bartz v. Anthropic
- The “third theory” of market harm that could shape future litigation
- What AI developers must do now to avoid lawsuits
Watch this episode on YouTube.
A federal judge has ruled that training Claude AI on copyrighted books—even without a license—was transformative and protected under fair use. But storing millions of pirated books in a permanent internal library? That crossed the line.
In this episode of The Briefing, Scott Hervey and Tara Sattler break down this nuanced opinion and what this ruling means for AI developers and copyright owners going forward.
Watch this episode on YouTube.
Show Notes:Scott: What happens when an artificial intelligence company trains its models on millions of books? Some purchased, some pirated. In a closely watched ruling, a federal judge held that training the AI was fair use, likening the process to how a human learns by reading. But keeping pirated copies of those books in a permanent digital library, well, that crossed the line. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner and frequent Briefing contributor, Tara Sattler.
We are going to break down the recent fair use ruling in the lawsuit over Claude AI, that’s Anthropic’s AI, and explore what it means for the future of AI training on today’s installment of the briefing. Tara, welcome back to The Briefing. Good to have you.
Tara: Thanks, Scott. I always enjoy being here with you.
Scott: Always enjoy having you. This one is a much-awaited decision because we have a number of these cases that are swirling around, challenging the process by which AI companies train their large language models. One of these cases involved the Anthropic AI Claude. Why don’t we jump jump into this one, Tara, maybe you could give us some of the background of this particular case.
Tara: Absolutely. In 2021, Anthropic PVC, a startup founded by former OpenAI employees, set out to create a cutting-edge AI system, and that system would eventually become Claude. Like other large language models, Claude was trained on a vast amount of textual data, books, articles, websites, and more. But unlike many of its competitors, Anthropic took a controversial shortcut.
Scott: Right. Instead of licensing books or building a clean data set, Anthropic downloaded millions of copyrighted works from pirate sites like Books 3, Library genius, and the pirate, Library Mirror. In total, Anthropic downloaded over seven million pirated books, including works by authors Andrea Barth, Charles Graber, and Kirk Wallace, Johnson. Anthropic also purchased millions of print books, scanned them, and then created a digital central library of searchable files.
Tara: So the plaintiff sued, alleging that Anthropic infringed their copyrights by copying their works without permission. First, by downloading them from the pirate sites, and then by using them to train Claude, and finally, by keeping digital copies of the books in its internal library for potential future use.
Scott: All right, so let’s now… So as we know, the lawsuit was filed, and Anthropic eventually moved for summary judgment based on fair use only. And in its ruling on Anthropic’s motion, Judge Al up of the Northern District of California issued a very detailed and nuanced opinion. The opinion splits Anthropic’s conduct into three key uses. The first is using the books to train the AI or the large language model, scanning and digitizing legally purchased print books, and thirdly, downloading and keeping pirated books in a permanent digital library. Each of these uses was evaluated under the Copyright Act’s Four-Factor Fair-Use Test.
Tara: Right. Let’s walk through how the judge applied the four fair use factors in each use. For anyone who needs a refresher, here are the statutory factors for fair use under Section 107 of the Copyright Act.
Scott: If you need a refresher, you’re not listening to this podcast often enough. Go ahead, Tara.
Tara: Okay, so we’ll refresh anyway. First is the purpose and character of the use, including whether it is commercial and whether it’s transformative. The second is the nature of the copyrighted work. The third is the amount and substantiality of the portion of the copyrighted work that’s used. And the fourth is the effect the use upon the potential market for the original work, and that’s the economic analysis.
Scott: And that one, as we know, has become more persuasive or more focused on since the Supreme Court case, since the Warhol Supreme Court case. All right, let’s focus on the first factor. Let’s focus on the first factor. Or let’s focus on the first use, which was the training of the large language models. So on the first use, the training of the Claude models using books. The court found that to be fair use. So it didn’t matter whether the books were the purchase books or they were the pirated books. The court found that the training on these books to be fair use and focused most heavily on the first factor. The court called this use spectacularly transformative. The court said, The purpose and character of using works to train LLMs was transformative. Spectacularly so. Like any reader aspiring to be a writer, Anthropics LLM trained upon works not to race ahead or replicate or supplant them, but to turn a hard corner and create something different.
Tara: Right. So even if the AI memorized a lot of the underlying material, the court stressed that the training did not result in infringing output. Inputs. Users weren’t seeing verbatim excerpts from the plaintiff’s books.
Scott: The court rejected the plaintiff’s arguments that just memorizing expressive elements was itself infringement. The court said, If somebody were to read all the modern-day classics because of their exceptional expression, memorize them, and then emulate a blend of their best writing, would that violate the Copyright Act? And the court said, Of course it would not.
Tara: So the court sided with on the training issue, holding that using books to train Claude was spectacularly transformative. And the judge drew a direct analogy to human learning. The judge said, Everyone reads text, too, then writes new text. They may need to pay for getting their hands on a text in the first case, but to make anyone pay specifically for the use of a book each time they read it, each time they recall it from their memory, each time they later draw upon it when writing new things in new ways, would be unthinkable.
Scott: The second and third factors, the nature of the work and the amount used, were considered less significant because of the high degree of transformation. And on the fourth factor, market harm, the judge said there was no evidence of substitution or competitive damage from the training process. So the result was that training was fair use.
Tara: Okay, so now turning to the second use that the court analyzed, which is digitizing purchase books. Anthropic also purchased millions of print books and scanned them into searchable PDFs. The plaintiffs argued that changing the format from print to digital was itself infringement.
Scott: Yeah, but the court disagreed. Because Anthropic had lawfully purchased these books, destroyed the physical copies and retained one digital copy in its place without redistributing that copy was fair use. The judge wrote, Here, every purchased print copy was copied in order to save storage space and enable a searchability as a digital copy. The print original was destroyed. Once replaced, one replaced the other. And there is no evidence that the new digital copy was shown, shared, or sold outside of the company.
Tara: So this use was found to be narrowly transformative, not because of LLM training, but because the digitization made the library more efficient and searchable. And importantly, the court drew a direct line between this and the large scale copying involved in the Napster file sharing case, noting this use was even more clearly transformative than those in Texaco, Google, and Sony Betamax. More transformative than those uses rejected in Napster. So the result, digitizing purchase books is fair use.
Scott: So let’s talk about the third use that the court analyzed, which was retaining the pirated copies of books in permanent libraries. And This is where Anthropic lost, fell short of establishing fair use. So Anthropic, as we know, downloaded more than seven million books from pirate sites and kept them in its internal library, even when it had no intention of using many of those books to train its models. The company argued that because some of those books were later used in training, which was fair use, keeping the pirated books was also fair use, was excusable.
Tara: The judge also rejected that argument outright. There is no carve out, however, from the Copyright Act for AI Companies, is what the judge said. According to internal emails cited by the court, Anthropic’s founders were aware of the legal risks. The CEO described purchasing books as legal practice, business slog, and expressed a preference for simply downloading pirated copies. In total, the company downloaded books from pirate sources even after it had the option of purchasing or licensing them.
Scott: Yeah, that’s the legal practice business log. It just fits that mantra of tech companies move fast, break things. But you better Be sure you’re right, otherwise you’re going to end up on the wrong side of a decision like here, right? And the judge was unambiguous in ruling on this point. Building a central library of works to be available for any number of further uses was itself the use for which Anthropic acquired these pirated copies and not a transformative one. He found that this use, building a centralized permanent library of pirated books, was not transformative and was not justified under fair use. In his words, the judge’s words, pirating copies to build a research library without paying for it and to retain copies should they prove useful for one thing or another was its own use and not a transformative one.
Tara: The court was particularly troubled that Anthropic continued to keep pirated copies even after deciding they would not be used for training. They were acquired and retained as a central library of all the books in the world, is how the court phrased it.
Scott: Yeah. And this wasn’t incidental copying. It was deliberate. And because the use failed the first factor, it wasn’t transformative, undermined the market for the works, which was the fourth factor, and involved complete verbatim copying, which was the third factor, the court found, as it probably must have had defined, that this was not protected. So the result, retaining pirated books was not fair use.
Tara: Let’s talk for a little while now, Scott, about why this matters. It seems like this decision is among the most detailed judicial analysis yet on how copyright law intersects with AI training, and it seems like it sends a pretty clear message.
Scott: I agree. Training an AI system using copyrighted materials, even expressive work like novels, can be fair use so long as the training is transformative and does not infringing outputs. That’s, I think, a very, very, very important point here that the output did not result in infringing… The outputs were not infringing.
Tara: Yeah, I think you’re right. And I think another important point is that companies can’t justify how they acquire the data under the umbrella of fair use. So in the judge’s words, in this case, you can’t bless yourself by saying you have a research purpose and then go and take any textbook you want.
Scott: So In practice, this means that AI companies and developers of AIs who want to train their LLMs will need to avoid using pirated materials, even if that use is internal only, clean up their training data sets, really, really think hard about licensing or partnering with publishers, and document which works were actually used in the training.
Tara: I think you’re right, Scott. For copyright holders, the ruling really confirms that enforcement doesn’t depend on proving an infringing output. The mere act of copying and storing protected words, especially when done unlawfully, can itself be grounds for liability.
Scott: Let’s talk about, I think, what this means for the AI industry and possibly for the broader industry of content owners. For developers of GAI systems, I think the decision cuts both ways, right? It’s both liberating and it’s cautionary. On the one hand, it confirms that training AI on copyrighted books, even expressive ones like novels, can be fair use if done correctly, responsibly, and without infringing outputs.
Tara: But on the other hand, it sends a strong signal that the source of your training data really does matter. Pirated content, even if used for transformative purposes, won’t be shielded by fair use, especially if it’s retained for future uses.
Scott: So expect this decision to push AI companies towards licensing deals with publishers. It also puts pressure on developers to document and clean up their training data sets. Everyone else is doing it. You know that thing you said to your kid, Would you jump off the roof if your buddy jumped off the roof? It’s not a defense, and it doesn’t hold up if your company is found to be sitting on a trove of pirated materials.
Tara: Scott, it was really interesting talking about this one with you today. I know there was another recent ruling in the Meta case about its AI training. Hopefully, we can talk about that one soon.
Scott: Oh, for sure. Yeah, I think it’ll be interesting to talk about that and then compare and contrast these two decisions and see if we’ve got some type of circuit split, some type of circuit split or some type of disagreement amongst the judges as to what aspect of LLM training or how the LLM are trained or what they’re trained on qualifies as fair use. So we’ll definitely cover that one next.
Tara: Yeah, either a disagreement or an agreement, and maybe We will finally start to get some guidance.
Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe. Leave review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
The Supreme Court sidestepped a major copyright showdown—again. What does it mean when infringement claims surface decades later? In this episode of The Briefing, Scott Hervey and Tara Sattler break down the latest in the discovery rule debate, RAD Design’s rejected petition, and how this uncertainty affects creators, businesses, and copyright holders across the country.
Watch this episode on YouTube.
Show Notes:
Scott: In Warner Chapel Music versus Neely, the Supreme Court acknowledged without resolving a major question in copyright law, should plaintiffs be allowed to bring infringement claims years or even decades after the alleged violation happens if they say they just recently found out about it? That question was front and center in Rad Design versus Michael Greckeau Productions. And while many expected the court to finally address it, they declined to take the case. What does this mean for copyright holders, digital content creators, and the businesses defending against those claimed? I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my colleague Tara Sattler. We are diving into the Supreme Court’s decision to leave the discovery rule untouched, at least for now. On in this episode of The Briefing. Tara, welcome back to The Briefing. It’s good to have you back.
Tara: Thanks, Scott. Glad to be here, and glad to be getting into some important copyright strategy with you here today.
Scott: Right. Yeah. So let’s start by defining what we’re actually talking about, the discovery rule. It’s a judgment doctrine that allows plaintiffs to file a copyright lawsuit within three years of discovering the infringement, even if the infringement happened long before that.
Tara: Right. And for years, courts have disagreed on whether the Copyright Act actually allows this. The text of the Copyright Act says that actions must be brought within three years after the claim accrued. But it doesn’t say whether accrual starts at the time of infringement or at the time of discovery.
Scott: And that ambiguity is at the heart of the issue. Some courts, like the Second Circuit, have embraced the discovery rule. Others are skeptical. That split was one reason the Supreme Court agreed to hear Neely in the first place. So before we get deeper into the implications of the Supreme Court denying Cert and Rad Design, we should revisit the Warner Chapel Music versus Neely decision because that case really set the stage for all of this.
Tara: Absolutely. That case started back in 2018 when music producer Sherman Neely sued Warner Chapel Music and Artist Publishing Group. He claimed that Flowrida’s 2008 song, In the Air, contained an unauthorized sample from a 1984 track Neely co-owned the rights to. Now, that’s a fairly typical copyright infringement claim, but what made this case different was the timing.
Scott: Right. So Neely had been incarcerated for a number of years, and apparently, they don’t allow radios in the jail or prison that he was in. And he argued that he only discovered the alleged infringement shortly before his filing of his lawsuit, even though the infringement happened decades earlier. The question that ended up before the Supreme Court was whether under the discovery rule, as applied by some circuit courts, a plaintiff could recover damages for acts of infringement that happened more than three years before the lawsuit was filed.
Tara: And that was a hotly contested issue. Some circuits, like the Second Circuit, applied a very strict three-year cap on damages, even when a claim was deemed timely under the discovery rule. That rule came up from the Supreme Court’s prior language in Petrela versus MGM, where Justice Gainsberg wrote that a successful plaintiff can gain retrospective relief only three years back from the time of suit. In contrast, the ninth and 11th circuits had taken the opposite view. They allowed damages to go all the way back to the first act of infringement, so long as the claim itself was timely under the discovery rule.
Scott: And in Neely, the Supreme Court resolved that split, writing for the majority, Justice Kagan held that if a plaintiff’s claim is timely under the discovery rule, then there’s no statutory cap on damages. So the court said that the Copyright Act’s remedial provisions, Section 504 and Section 505, do not impose a time-based limit on damages. They simply state that an infringer is liable for either statutory damages or actual damages and profits without any mention of a three-year time limit on those damages.
Tara: And the court also criticized the logic of the Second Circuit’s hybrid approach, where a plaintiff could file suit based on discovery but still not recover damages beyond three years. Kagan basically said, That’s incoherent. If a claim is timely, it’s timely, and the plaintiff should be entitled to full relief.
Scott: But, and this is a big but, the court explicitly declined to decide whether the discovery rule itself is valid under the copyright Act. Justin Kagan noted that both sides had assumed that the discovery rule applied, so the court didn’t reach the question of whether that assumption was legally correct. That’s where Justice Gorsuch came in.
Tara: Yeah, Gorsuch wrote a sharp dissent, and that was joined by Justice’s Thomas and Olito. He argued that the discovery rule has no place in copyright law unless there’s fraud or concealment by the defendant. He pointed out that the Copyright Act contains no discovery language and that for most of its history, courts applied a straightforward rule. The clock starts taking when the infringement happens. Gorsetch essentially said the court should have dismissed the case and waited for one that properly raised the discovery rule issue.
Scott: That’s why RAD Design was seen as the next shoe to drop. Rad Design directly asked the court to decide the validity of the discovery rule itself, which the court had ducked in nearly. But instead of taking taking that opportunity, the court decided to duck that one again, and they just let it go.
Tara: Let’s talk about the RAD Design case.
Scott: Sure. In RAD Design versus Michael Greckeau Productions, it was a professional photography company, sued RAD Design for allegedly using its copyrighted images without permission. Rad Design argued that the claims were time barred.
Tara: The Second Circuit applied the discovery rule, saying the case could go forward if the plaintiff only recently discovered the use. Rad Design then petitioned the Supreme Court to rule that the discovery rule has no place in copyright law.
Scott: And what did the court do? Nothing. It denied certiority, effectively passing on the opportunity to resolve the circuit split or the question as to the applicability of the discovery rule or legitimacy of the discovery rule. So now we’re left with conflicting rules in different parts of the country.
Tara: And we’re left with uncertainty. Businesses with a national online presence could be sued under very different standards depending on where a plaintiff files the case.
Scott: But there’s more at stake here than just legal theory. Several amakey, including MBA teams like the Pacers, Nuggets, and Magic, filed briefs supporting RAD Designs, warning that the discovery rule is being abused.
Tara: These teams pointed out that they’ve been sued for old social media content, videos posted years ago with arena back background music. The lawsuits allege infringement based on music barely audible in the clips, and yet plaintiffs are seeking damages years after the fact.
Scott: And that’s what makes the discovery rule dangerous in practice. It allows plaintiffs, sometimes opportunistic copyright enforcers or trolls, as they’re pejoratively referred to, to delay their claims, drive up damages, and strike when the defendants are least prepared.
Tara: And it’s one thing when the rule protects a genuinely unaware plaintiff. But in the digital age, when tools like the wayback-machine make it easy to find online content, it’s hard to justify a rule that allows indefinite delay.
Scott: Yeah. Based on all my viewings of prison movies. I’m darn sure that Neely had music in whatever prison he was in. All right, all jokes aside, let’s take a moment to explore how we got here. The discovery rule originated in general tort law, especially in fraud cases. Courts recognize that it would be unfair to timebar claims when a plaintiff didn’t know that they had a claim.
Tara: And over time, courts started applying that logic to copyright cases, too, particularly where the infringement wasn’t obvious. But the Copyright Act does not codify this rule, and that’s the problem.
Scott: The Petrella versus MGM decision made things even murkier. Justice Gainsberg wrote that Latches isn’t a defense to damages under the Copyright Act, but she also reaffirmed the three-year limitation on damages. Then the discovery rule crept back in through the lower courts.
Tara: And Neely really cracked that door wide open by allowing damages going back decades, as long as the claim was timely under the discovery rule. That’s why Justice Gorsuch was so frustrated. He sees the situation where the court’s past statements were being being undermined by a rule it never really endorsed.
Scott: All right, so let’s talk about practical implications. So here’s a practical question. What does all this mean for copyright enforcement and for copyright defense?
Tara: If you’re a copyright owner, the discovery rule, at least in some circuits, gives you more flexibility. But don’t abuse it. Courts can still look at whether you should have discovered the infringement earlier. And if your delay looks strategic, then that could blackfire. Right.
Scott: And I joke about Neely in the music in prisons, but that’s going to be an issue in discovery, right? Whether or not that particular prison allowed radios, whether radios were played, And that’s all about, if you’re a defendant, document everything. And if you get sued, utilize the discovery process to try to uncover whether or not the plaintiff should have discovered the infringement earlier. Archive your post, keep metadata, track when licenses were obtained or expired. You may need to show that any alleged infringement was public and was very discoverable for years.
Tara: Yeah, and in litigation, challenge the discovery roll head-on. In circuits that haven’t explicitly adopted it, a strong motion to dismiss may succeed, especially if the plaintiff had access to the content long ago.
Scott: In settlement negotiations, highlight the unfairness of retroactive claims. Judges are increasingly aware of copyright trolls. We see that all the time in these cases that we cover. And some are very skeptical of late-breaking claims for ancient posts. Well, I think that’s it for this episode of The Briefing. I think I’ve made enough fun of Neely. Thanks, Tara, for joining me today. And thank you, the listener, for listening to this episode. We hope you enjoyed it. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
Who really owns WallStreetBets? The man who created the subreddit, or the platform that hosted it?
In this episode of The Briefing, Scott Hervey and Tara Sattler dive into the trademark showdown between Jaime Rogozinski and Reddit, and why both the District Court and the Ninth Circuit said no to Rogozinski’s claim of trademark ownership.
This case is a cautionary tale for creators and entrepreneurs about what really counts as “use in commerce” under trademark law. Just coining a catchy name or launching a community isn’t enough. If you’re not the one offering goods or services under the brand, you don’t own the trademark. Watch this episode here. Show Notes:
Scott: He created the subreddit. He coined the name. He even filed a trademark application for it. But when Jamie Rogosinski took reddit to court to enforce his claim over the Mark Wall Street bets, both the district Court and the Ninth Circuit told him the same thing. Just because you created the name doesn’t mean you own the trademark. I’m Scott Hervey, a partner with the Law firm of Weintraub Tobin, and I’m joined today by my colleague, Tara Sattler. We are going to talk about Trademark use, ownership, and the Reddit battle over Wall Street bets on this installment of The Briefing. Tara, welcome back to The Briefing. Thanks for being here today.
Tara: Thanks for having me. Always glad to be chatting with you, Scott.
Scott: So this one’s a real interesting I think almost everybody knows about the subreddit Wall Street Bets. Can you give us some background on this whole dispute?
Tara: Yes, absolutely. So the story starts with Jamie Rogosinsky, and I really hope I’m pronouncing that right. So my apologies if I’m not. But Jamie Rogosinsky, the man widely credited with launching the subreddit feed Wall Street Bets back in 2012. And What began as a niche community for high-risk trading chatter exploded into really a cultural phenomenon in 2021 during the Gamestop and AMC Short Squeez. Right.
Scott: Sensing an opportunity to commercialize the brand. Rogusinski filed a trademark application for Wall Street Bets in 2020, covering merchandise and other goods. But Reddit, which owned and hosted the subreddit platform, wasn’t on board with that. It removed Rogusinski as a moderator for violating its policies and later filed its own trademark application for the same name, this time for an online forum service.
Tara: So Rogusinski sued Reddit in early 2023 in the Northern District of California and asserted claims for trademark infringement, unfair competition, and declaratory relief, arguing that he, not Reddit, owned the Wall Street Beats brand.
Scott: Let’s talk about who actually used the mark. So to understand why both the District Court and the Ninth Circuit rejected Jamie Rogosinski’s trademark claim over Wall Street bets, we have to look closely at what each party actually did with the trademark, and more importantly, how the law defines, quote, use in commerce.
Tara: Right. So Rowe Kuzinski argued that he was the originator of the mark. He created the subreddit, Wall Street Bets in 2012, moderated it for eight years, and even shaped the visual identity of the community itself. So according to him, he wasn’t just a user, he was the brand in the brand space.
Scott: And to bolster that claim, he pointed to several activities movies. First, he published a book in January 2020 that he called Wall Street Bets: How Boomers Made the World’s Biggest Casino for Millennials. He linked it to the subreddit, and he Wall Street Betts’ name directly in the title.
Tara: He also announced plans to launch Wall Street Betts’ branded merchandise and even promoted a real money esports trading competition, all under that Wall Street Bets’ name. He highlighted his growing media presence and public persona, and he claimed the public really associated him with the mark and not read it.
Scott: But here’s the legal problem. None of Isn’t that moderating a subreddit feed, writing a book, announcing merch ideas, remember, announcing merch ideas, becoming recognizable, counted as trademark use in commerce under the Lanham Act?
Tara: Exactly. Courts require that to establish trademark rights, you must be the first in commerce to use the mark in connection with actual goods and services, and that the use needs to be real, public-facing, and commercial, not just conceptual or community-based.
Scott: Now, Reddit, on the other hand, didn’t just host the subreddit. It actively operated it. They controlled the platform. They served millions of users and provided forum services under the Wall Street Bet’s name, beginning in 2012. That qualified as commercial use of the mark.
Tara: And both the District Court and the Ninth Circuit agreed. Reddit’s provision of online forum services under the Wall Street Betts name constituted a bona fide use in commerce. Owners, long before Rogosinsky’s book or other merch plans ever hit the market.
Scott: Both courts looked at Rogosinsky’s actions and said, You didn’t use the mark as a source identifier for any goods or services, at least not in the way trademark law requires. In fact, the very platform you were using, Reddit, was the one actually offering services under that name.
Tara: So, let’s take a look at the District Court’s decision. Judge Maxine Chesney dismissed Rogosinsky’s trademark claims under Rule 12(b)(6), holding that he failed to allege sufficient use in commerce to establish trademark rights. And that’s the key here, the use in commerce.
Scott: Exactly. Under US Trademark Law, specifically the Lanham Act, a trademark is owned by the party who first uses that mark in commerce in connection with specific goods or services. Just being the first to create a name or idea about a name doesn’t automatically for ownership rights. You need to use the mark in a way that identifies you as the source of the goods or the services in the marketplace.
Tara: And Judge Chesney noted that according to Rogosinsky’s own complaint, it was Reddit that created and provided the services associated with the Wall Street Betts Mark, the online discussion forum, not Rogosinsky. He may have moderated and participated, but Reddit was the one offering the forum and the services of the forum to the public.
Scott: And further, the court emphasized that Rogosinsky never alleged that he personally provided any goods or services under the Wall Street Betts Mark before Reddit’s use. And later Other attempts, like writing a book or selling merchandise occurred well after Reddit’s platform was already operating under that name.
Tara: So then Rogusinski appealed, but the Ninth Circuit, in a memorandum opinion, issued in June of affirmed the district Court’s dismissal, and they doubled down on the importance of the trademark use in commerce.
Scott: Right. The Ninth Circuit Panel agreed that Rogosinsky didn’t plausibly allege priority of use. The court said that even though he created the subreddit and coined the name, that didn’t qualify as use in commerce under trademark law.
Tara: The Ninth Circuit found that it was Reddit, not Rogosinsky, that had used the Wall Street Bet Smart in commerce by providing the forum services under that name. And that was really enough to establish Reddit’s priority.
Scott: Right. And it’s a clear message. Creation of a name or even administering an online community doesn’t count as using commerce unless you’re the one providing the commercial goods or services under the mark.
Tara: Let’s talk about what use in commerce actually means. The USPTO defines it pretty clearly in the Trademark manual of examining procedures. Or the TMEP. For goods, the mark must appear on the product or packaging, and the product must be sold or transported in commerce. Then for services, the mark must be used in advertising or the performance of those services, and the services must be rendered in commerce.
Scott: Right. And the use must be bona fida use, not just token use or internal use. For example, launching a website that shows the mark and offers services to the public can count. But being a moderator on someone else’s platform or coining a term that others use, that does not count.
Tara: In Rogosinsky’s case, even if he was synonymous with Wall Street bets in the early days, He didn’t control the platform or offer the forum services. It was Reddit that did that. And that distinction is what killed his trademark claim.
Scott: So let’s talk about what brand creators can take away from this case. So There’s a couple of things. First, you have to use it or you’re going to lose it. You must use the mark in commerce to acquire trademark rights. Just creating or coining a term isn’t enough. You need control. The services or the goods must come from you, not somebody else. Hosting or moderating a platform that belongs to another entity won’t establish ownership. Lastly, filing. Filing a trademark registration application is ownership. You can file a trademark application based on an intent to use, but that doesn’t confer rights until you actually use the mark in commerce and prove that use by filing a proper specimen with the USPTO.
Tara: That’s a great point. Intent to use application can be a really smart way to stake an early claim in a trademark. But if you can’t follow through with that bona fide use in commerce within that a lot of time period, then the application would just go abandoned.
Scott: Another lesson, if you’re building a brand on someone else’s platform, whether it’s Reddit, YouTube, or Instagram, you may not own the brand, even if the audience sees it as yours. You need to carefully consider where and how you’re building a brand.
Tara: That really is a key point for creators and community builders. You might have started something, but if you build it on someone else’s infrastructure or in someone else’s platform, and you don’t control the commercial use, then you don’t own the trademark.
Scott: It’s not enough to be first, and it’s not enough to be well known. You have to be the first to use the mark in commerce in connection with goods or services, meaning that you need to sell the goods or render services under that brand in the marketplace.
Tara: So while Rogosinsky may have been the creative mind behind Wall Street Bets, Reddit’s continuous operation of the forum that name gave them the edge. And the court said it, Reddit owns the mark.
Scott: That’s a tough result for Roguzinski, but a strong reminder of the fundamentals of trademark law. If you’re not the one commercially using the mark, you don’t own it no matter how great your idea is.
Tara: Yeah, that’s right, Scott. So at the end of the day, Rogusinski may have started Wall Street bets, but Reddit used it in commerce. And That’s really what Trademark Law is all about.
Scott: Whether you’re launching a startup, building a creator brand, or founding an online community, remember, trademark rights come from commercial use, not just the creative spark. Well, that’s all for this episode of The Briefing. Thanks to Tara for joining me. Thank you, the listener, for listening to this episode. We hope that you enjoyed it. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we today, please leave us a comment.
In this episode of The Briefing, Scott Hervey and Richard Buckley dive into Pepperdine University v. Netflix, a trademark showdown over the use of the name “Waves” in the Netflix series Running Point. After Pepperdine’s attempt to block the series’ release was denied under the Rogers test, the university is back—this time arguing that the Jack Daniel’s Supreme Court decision changes everything.
Watch this episode on the Weintraub YouTube channel.
Show Notes:
Scott: What happens when a Christian university’s proud athletic legacy collides with the creative freedom of Hollywood? That’s the question at the heart of Pepperdine University versus Netflix, a trademark dispute centered around the name Waves. Pepperdine lost its initial attempt to block the release of Netflix basketball comedy ‘Running Point.’ Very funny television show. But the fight is far from over. Now the court must decide whether Netflix use of the Waves mark is protectable artistic expression or actionable infringement. And it all comes down to a legal test some thought was subtle law until the Supreme Court rocked the waters in Jack Daniels versus VIP Products.
I’m Scott Hervey, a partner at Weintraub Tobin, and I’m joined today by my partner, Richard Buckley. We are going to unpack this battle over brand identity, free speech, and college sports on this episode of the Briefing. Richard, welcome back to The Briefing. Good to have you.
Richard: It’s great to be here again.
Scott: Yeah. Did you watch Running Point?
Richard: I have not.
Scott: Okay, well, you are missing out. You should watch it. It’s quite funny.
Richard: I feel like I must now.
Scott: All right, let’s get into this. So let’s start with the basics. What’s this case about, Richard?
Richard: So Pepperdine’s athletic teams have been known as the Waves since 1937. Netflix and Warner Brothers released a scripted comedy series called Running Point, featuring a fictitious professional basketball team named the Los Angeles Waves. The university sued, claiming trademark infringement and false designation of origin under the Lanham act, among other things.
Scott: Pepperdine raised several issues in the complaint. First, they argued that the fictional Los Angeles Waves team, which, by the way, is not a collegiate team. It’s a like an NBA league team, uses the word Waves with a strikingly similar font to Pepperdine’s registered marks. Pepperdine also contended that the colors used by the fictional team were similar to Pepperdine’s and that both marks were used in athletic context. Pepperdine specifically pointed out that an image in the Running Point trailer included a frame jersey with the number 37, which they believe references Pepperdine’s founding year of 1937. Coincidence? I don’t know. But perhaps most importantly, Pepperdine was concerned about reputational harm. They argued that the themes and Running Point, including excessive alcohol and substance use, sexual innuendos in imagery and foul language and other content, didn’t align with Pepperdine’s Christian values and would negatively impact the university’s reputation.
Richard: So Pepperdine sought a temporary restraining order, a tro, to block the release of Running Point, which premiered on February 27, 2025. The university argued that the use of Waves, along with similar color schemes in a jersey number 37, would confuse viewers and damage Pepperdine’s reputation. As you previously mentioned, the court denied the TRO for finding that Pepperdine was unlikely to succeed on the merits of its trademark claims because the use of Waves fell under the Rogers test, which protects expressive works unless the use is irrelevant or is explicitly misleading.
Scott: Right. We. We previously covered the court’s ruling on the tro, so we’re not going to delve into that too deeply. You can. We’ll include a link to that episode in the show notes here. So. So after the show aired, Pepperdine filed a First Amendment complaint to incorporate new allegations, including claims of widespread use of the Waves mark in marketing. For example, Pepperdine alleged and in the First Amendment complaint included pictures showing Netflix’s use of Waves on tickets for the series premiere. Pepperdine also alleged consumer confusion with regard to third-party sales of Wave merchandise linked to Running Point.
Richard: Shortly after Pepperdine filed its First Amendment complaint, Netflix filed a motion to dismiss the first amended complaint based mainly on the argument that the Rogers test still applied and shielded them from liability because Waves, the use of waves, was part of an expressive work and it was not misleading.
Scott: Right. And so that brings us here to Pepperdine’s opposition to Netflix’s motion to dismiss. All right, so Pepperdine, in their opposition, argues that Jack Daniels versus VIP products. That decision changed everything. In that case, the Supreme Court ruled that when a trademark is used as a source identifier, Rogers does not apply, even if the use has. Has expressive elements. Pepperdine claims that Netflix used Waves not just expressively, but as branding as a source identifier for the Running Point series. Pepperdine pointed to extensive use of the mark in the series and in marketing of the series, social media, posts, merchandise, and Netflix referring to itself as, quote, home of the Los Angeles Waves.
Richard: And Pepperdine argues that that’s enough to knock Rogers out of play, thus triggering the traditional trademark analysis and the likelihood of confusion test under Jack Daniels.
Scott: All right, so where does this leave us? So, Richard, what’s your take on how the court might rule?
Richard: Hard to say. Pepperdine’s amended complaint is strong on its face. They’ve alleged that Netflix used the WAVES mark pervasively and commercially as a brand identifier, and that could persuade a court not to apply Rogers at this early stage. That said, it’s not a slam dunk. Netflix can argue credibly that Waves is part of the show’s world-building and that viewers aren’t confused about who made.
Scott: The show right I agree with you, but I think my prediction here, my prediction is that the court denies the motion to dismiss. At this stage, Pepperdine just needs to plausibly allege source identifying use. And I think based on the use of the WAVES mark outside of the program, I think that Pepperdine may have done just that. Whether Pepperdine will ultimately win on likelihood of confusion, that’s a whole different question.
Richard: So with regard to fan made unofficial Waves merchandise that can’t be pinned on Netflix, as you know, Scott, because you’re helping some of your clients with this very issue, that being counterfeit merchandise that includes marks and even images from programs all over sites like Etsy and redbubble. However, I just have to ask, why do you think Netflix printed tickets for the series premiere with the Waves mark on it? And relatedly, why would Mindy Kaling, one of the creators of the show, include as a tag on her Instagram page, home of the Los Angeles Waves this arguably a gift to Pepperdine?
Scott: No. Oh, I totally agree with you. I mean, you’re the litigator. You tell me, how would you deal with this situation where you, you defeat, you defeat a tro. Temporary restraining order motion for a temporary restraining order, right? Where, where basically, you know, so goes to tro, usually, so goes the case, but the judge kind of left it open for, for Pepperdine to show use of that mark outside of the program. And, and, and here it is. Now. How do you, as a litigator, if you were handling this case, like how do you deal with that or how would you deal with that?
Richard: I think as a general rule, when you have a favorable ruling on a TRO where there is a prediction that’s offered as to likelihood of success on the merits, I think that the, the general advice in all circumstances would be just, you know, hold serve, do, don’t do anything that would, you know, give anybody a chance to revisit these arguments. New ammunition, you know, revisit previously made arguments, just stay cool is generally what I would advise in a situation like that.
Scott: Yeah, but I guess according to the timeline in the First Amendment complaint, remember the First Amendment complaint was filed and then Netflix filed its, well, network file this motion to dismiss.
Richard: The TRO prior.
Scott: Yeah, it was prior. So it’s interesting, right? Netflix, Pepperdine may not have had this additional evidence. They may not have had this evidence of Netflix’s use of the Waves outside of its use in the television program. So let’s. Okay, that, this is an interesting question. Had, had Pepperdigm brought its TRO after filing its first amended complaint with evidence of use of waves outside of the creative context of the program and arguably showing use as a source identifier, where do you, how do you think the court might have ruled? What do you think might have happened?
Richard: That’s a great question. It’s very difficult to say, but I think that there would have been some distinction and analysis of, you know, expressive, artistically protected conduct and commercial conduct, which in its opposition to the motion to dismiss, Pepperdine draws a distinction between, you know, know, those two types of conduct. Assuming it had made that argument before and that the cop, that the court had bought into it, then they maybe get a TRO on the commercial activity and, you know, they move forward with their lawsuit in the face of pleading challenges.
Scott: Yeah, I think I agree with you. I think what, I think the more likely thing that would have happened had Pepperdine brought TRO after it filed its First Amendment complaint, or if it had this evidence before it filed its initial complaint and brought its tro, I think that the court would probably have found Rogers not applicable, but it would not have enjoyed the airing of the series. I think the court probably could have said, look, you’re, you can, you can recover damages and monetary, you know, you can recover monetary damages. And that’s sufficient because the, you know, the, the weighing of the, the, the, the benefit versus the harm to Netflix, I think the harm would definitely outweigh any benefit that Pepperdine could receive. And plus, I think that it’s, the harm suffered could be covered through economic damages, possibly. I think Pepper and I might argue that his reputational harm couldn’t be covered by economic damages, but I don’t know. I think we find that most things are most, most things can be addressed through money.
Richard: Agreed. And I think that if the court had the opportunity to, and it has the opportunity now, I suppose, with the motion to dismiss, but to address the distinction between artistic and commercial activity and to treat them differently, you know, apply Rogers to one and not the other, you know, then you kind of get into like a more realistic look at what is really going on here. I don’t think Pepperdine can credibly argue that when you watch that show, you think that Pepperdine endorses it or has produced it, or this is a Pepperdine production. But I do think that when you go to buy a T shirt in a store and it says waves on it in blue and orange, you know, you might think that’s a Pepperdine shirt, but it could be a, a Netflix produced merchandise.
Scott: Yeah, I Mean, I don’t think Netflix. I don’t think it would be wise to produce waves themed merch related to the program. I think they could. I think that’s where you could have some big, big problems. But. But I don’t. But I don’t think that a. A collegiate basketball fan who happens to follow and love Pepperdine Waves, I don’t think that there’s a high degree of overlap between that person and the average viewer of Running Point, because in order to show. In order to show this type of consumer confusion or likelihood of confusion, you have to have. You have to show overlap in the groups of consumers that. That interact with these. With these goods or services. And obviously, this all comes out in expert testimony and survey evidence. And, you know, I’m sure one side will have survey evidence that shows that there is an overlap, and another will have survey evidence that shows that there isn’t an overlap, and it’ll be up to the jury to decide which one they believe.
Richard: So, and if the court, you know, accepts everything that’s been alleged as true for purposes of a motion to dismiss, as it is supposed to do, then the lawsuit goes forward.
Scott: Right. I think there is one takeaway here for lawyers who do what I do, which is advise studios and production companies on issues just like this, is to make sure that your client kind of understands the risk of. Of running with a brand like this. Because I’m. I’m fairly sure that when they did the script report and they noted that this team was named the Waves, that the script report noted that Pepperdine’s basketball team is also named the Waves. And the lawyer would have gotten a copy of that script report, and the lawyer may probably should have flagged the. The studio and flagged for production. Look, okay, we can use this in the show, but let’s make sure that it’s not used in advertisement or promotions, because that’s when we could have problems.
Richard: Right. It’s better to be safe than sorry, and it invites trouble.
Scott: Yeah.
Richard: To do that.
Scott: Oh, yeah.
Richard: Especially with all those sort of coalescing factors.
Scott: Right. Well, this case certainly has the potential to reshape how expressive works are treated under trademark law, especially in the streaming era, where branding and content kind of bleed together. The Jack Daniels ruling sets the tone, and Pepperdine is testing how far courts are willing to go in reigning in Rogers.
Richard: We will certainly be watching this one closely.
Scott: Oh, we will. We’ll definitely report back on the court’s ruling. Well, that’s it for today’s episode of the Briefing, thanks to Richard for joining me today, and thank you, the listener or reviewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please please leave us a comment.
Can a car be a copyrightable character? In Carroll Shelby Licensing v. Halicki, the Ninth Circuit said no — ruling that “Eleanor,” the iconic Mustang from ‘Gone in 60 Seconds,’ lacks the distinctiveness and consistency required for copyright protection.
In this episode of The Briefing, Scott Hervey and Richard Buckley break down the history of the Eleanor litigation, review the district court and Ninth Circuit rulings, and explain what it actually takes for a character to qualify for copyright protection.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: Can a car be a character? Well, that’s the question at the heart of a long-running legal dispute over Eleanor, the muscle car made famous in the movie Gone in 60 Seconds. For years, the heirs of the original film’s producer claimed Eleanor was a protectable copyright character, and they tried to stop others, including Carroll Shelby licensing, from building or selling versions of that car. But the Ninth Circuit has now weighed in and has definitive shut that claim down. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Richard Buckley.
We’re going to talk about Carroll Shelby Licensing versus Halicki and what it takes for a character to receive copyright protection on today’s installment of The Briefing. Richard, welcome to The Briefing. This is a first for you. So, welcome.
Richard: Thank you for having me. It’s a pleasure.
Scott: Absolutely. Richard is one of our litigators, so that means we keep him in the back of the firm and chained up, feed him raw meat every once in a while, just to So not often enough. Keep him ready to battle. All right. This is right up your alley, a piece of long-running litigation with steadfast defendants and steadfast plaintiffs arguing their claim all the way up to the Ninth Circuit?
Richard: It’s a privilege of being older and experienced, I guess. But yes.
Scott: All right. Well, let’s get into this one. So the saga over the car, Eleanor, has been years in the making. It began with the 1974 film, Gone in 60 Seconds, which began as an independent action film written and directed by H. B. Tobi Halicki. In that film, Yellow, 1971, Ford, Mustang Fastback named Eleanor, is the featured car in a climactic 40-minute chase scene. The film became a cult hit, and Eleanor became an underground icon.
Richard: Right. In 2000, the movie, Gone in 60 Seconds, was remade by Disney and Jerry Bruckheimer, this time with Nicolas Cage behind the Wheel. Also in the remake, Eleanor is a Silver 1967 Shelby GT 500 Mustang. Very different look and different era. Still nicknamed Eleanor and still featured prominently.
Scott: Halecky passed away in 1989, and his widow, Denise Halecky, later acquired certain intellectual property rights associated with the 1947 film, including the original script and footage. Denise Halecky, the widow, also began asserting that Eleanor, the car, was a protectable copyright character. Over the years, she and her company sent legal threats or sued individuals and businesses who built or sold Eleanor replicas, or what she claimed to be Eleanor replicas, including muscle car maker, Carroll Shelby, a former race car driver and car designer who was played by Matt Damon in the 2019 movie, Ford versus Ferrari. Great movie, by the way.
Richard: Agreed. Those threats, Scott, culminated in the lawsuit that was filed by Carol Shelby licensing and Classic Recreations in 2020. They sought a declaratory judgment that Eleanor was not entitled to copyright protection and that Hyliki had no enforceable rights to stop them from building replicates.
Scott: So this case has been winding its way through the district Court for the Central district of California and the Ninth Circuit. There have been many starts and stops and twists and turns in this case. But a summary of the proceedings is as follows. So originally, the district Court sided with Shelby in Classic Recreations. The Court found that Eleanor, in both the 1974 original and the 2000 remake, lacked the distinctive attributes necessary for copyright protection as a character.
Richard: The Court emphasized that in the 1974 film, Eleanor was little more than a car with a name and a role in a chase scene. It had no anthropomorphic qualities, personality traits or development. The court also noted that Eleanor appeared differently in the two films, different models, different colors, different eras, undermining the argument that it was a consistent, protectable character.
Scott: Right. Haleke appealed to the Ninth Circuit, where the Ninth Circuit affirmed the lower court, the court reviewed its earlier precedent on character copyright ability, notably the DC comics versus towel case involving the Batmobile, and concluded that Eleanor did not meet the standard.
Richard: That, Scott, is a perfect segue for us to talk about what it takes to copyright a character.
Scott: Right. Let’s do that. Let’s take a look at DC comics versus towel. That’s a 2011 case involving the Batmobile. In that case, the court noted that the owner of a copyright in a work embodying a character can acquire copyright protection in the character itself. In determining whether a copyright protection protection may be afforded to characters, visually depicted in a television series or in a movie, the Ninth Circuit employed the standard known as the character delineation test. If a character is especially distinctive or constitutes the story being told, the character is entitled to receive protection separate and apart from the work in which that character appears. The court noted that characters that have received copyright protection, like and Rocky Balboa, have displayed consistent, widely identifiable traits.
Richard: In that case, the court said that the Batmobile is akin to the Godzilla character, which was the subject of its own copyright lawsuit. Although Godzilla assumed many shapes and personalities in the various Godzilla films, the court found that Godzilla had developed a constant set of traits that distinguished him, him, him, him, him or her or it from other fictional characters, thus meriting copyright protection.
Scott: Right. And not every character is entitled to copyright protection. One of the key findings to whether a character is entitled to copyright protection is whether that character is especially distinctive. To meet this standard, a character must be sufficiently delineated and displayed consistently with widely identifiable traits. The Ninth Circuit, in the Batmobile case, a three-part test to help determine whether a character is entitled to copyright protection. First, the character must generally have physical as well as conceptual qualities. Even if the character does not maintain the same physical appearance in every context. I mean, as we know, the Batmobile changed as did Godzilla. Second, the character must be sufficiently delineated to be recognizable as the same character whenever it appears. There’s no mistaken making Dracula when it appears. This means that the character must display consistent identifiable character traits and attributes, although the character need not have a consistent appearance. Third, the character must be especially distinctive and contain some unique elements of expression.
Richard: This is obviously a fact-specific and involved test.
Scott: Oh, absolutely. This is how the Ninth Circuit applied this test in the Batmobile case. The court found that because the Batmobile has appeared graphically in comic books and as a three-dimensional car in a television series in motion pictures, it has physical as well as conceptual qualities and is thus not a mere literary character, thereby satisfying the first factor. As for the second, the court found that the Batmobile was sufficiently delineated to be recognizable as the same character whenever it appears.
Richard: The court also noted that the Batmobile had maintained distinct physical and conceptual quality since its first appearance in the comic books back in 1941. The vehicle is equipped with high-tech gadgets, weaponry used to aid Batman in fighting crime. It’s almost always bat-like in appearance with bat emblems on the vehicle. The bat-like appearance has been a consistent theme throughout the comic books, television series, and motion pictures, even though the specific bat-like characteristics have changed from time to time.
Scott: That’s right. In addition to its status as Batman’s loyal bat-themed sidekick, complete with the character traits and physical characteristics you just mentioned, the Batmobile also has its unique and highly recognizable name. It’s not merely a stock character. Thus, the court found that the Batmobile is especially distinctive and contains unique elements of expression. So that’s how the court found the Batmobile to be a protectable character.
Richard: So now, let’s look at how the Ninth Circuit applied the toll test to Eleanor. First, the court looked at whether Eleanor is a character with physical and conceptual qualities. Does the character exist beyond a mere literary description? While Eleanor has physical qualities, it lacks any conceptual qualities. Eleanor has no anthropomorphic traits.
Scott: Right. Next, the court looked at whether Eleanor’s appearance is consistent. Is it sufficiently delineated to be recognizable as the same character whenever it appears across multiple works or iterations? I think Batman, right? Whether it’s Adam West or Christian Bale, the essential traits are the same. Here, in this case, the court said the answer is no. Eleanor’s physical appearance changed frequently throughout the various films.
Richard: Lastly, the court looked at whether Eleanor is distinctive and has a unique expression. The character must be more than a stock figure. It has to be sufficiently distinctive to constitute original expression. This is often the hardest factor to prove, and Eleanor failed here, too. The court said that Eleanor is not especially distinctive. Nothing distinguishes Eleanor from any number of sports cars appearing in car-centric action films.
Scott: This case reinforces that the threshold for character protection is high, and it prevents copyright from being used to monopolize common concepts like a fast car in a chase scene. It’s a win for fans, builders, and for creativity. It’s also a reminder that copyright isn’t meant to protect every reoccurring object in a film. All right, let’s talk about what this case means for filmmakers who want to create a protectable character. So let’s talk about some key strategies to keep in mind.
Richard: Okay, first, develop distinctive personality traits. It’s not enough to just give a character a cool name or a memorable name or a cool look. Courts want to see original expressive qualities like unique speech patterns, emotional depth, or consistent behavior. Think of characters like Jack Sparrow or Walee They stand out because they think, they act, and they respond to the world.
Scott: Right. R2d2 and C3PO for sure, or Chuy, Chewbacca. All right. Second, ensure consistency across appearances. If the character appears in multiple works, like R2D2 and C3PO, the core identity must be recognizable. In this case, the fact that Eleanor looked so different in the original film film and the remake undermine the argument that it was the same character.
Richard: Third, give nonhuman characters anthropomorphic traits. Courts are more likely to recognize copyright in a robot or a car if it behaves like a person. That might mean giving it a voice, facial expressions, or agency within the story. The Batmobile in DC comics versus toll passed this test, and in contrast, Eleanor didn’t.
Scott: Right. Fourth, avoid generic designs and tropes. A muscle car and a car chase isn’t enough. Copyright doesn’t protect ideas, only original expression. So even if your character starts with a familiar trope, you’ll need to add something unique to elevate it beyond just a cliché.
Richard: Number five, show, don’t just tell. Giving something a name like Eleanor doesn’t automatically make it a character. You have to show who the character is through storytelling, interactions, and a role in the plot.
Scott: Sixth, make the character central to the story. If the character is just a backdrop or a tool, like a vehicle, a weapon, or a setting, it’s harder to argue for copyright protection. Courts want to see that the character drives some portion of the narrative and has a meaningful arc or function.
Richard: Finally, my favorite step, document your development process. If protectability ever becomes an issue, being able to point to notes, concept art, character Bibles, or draughts can make a big difference in demonstrating originality.
Scott: Richard, spoken like a true litigator. The bottom line, copyright protection for characters is possible, but you have to earn it through distinctive, expressive storytelling. The ruling in Carroll Shelby Licensing versus Halicki reinforces that courts won’t extend protection lightly, and that’s a valuable lesson for every creator. Later. Well, that’s all for today’s episode of The Briefing. Thank you, Richard, for joining me today. And thank you, the listener or a viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe and leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please leave us a comment.
If your company relies on online reviews, influencer partnerships, or digital marketing strategies, it’s important to be aware of FTC Rules and the distinctions between real reviews and paid ads. Scott Hervey and Jessica Marlow discuss the dos and don’ts of consumer reviews on this featured episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:On August 14th, 2024, the Federal Trade Commission announced a final rule that will combat fake reviews and testimonials. All parties involved in influence or marketing or companies that have significant e-commerce businesses need to know about these rules, what they prohibit, and the consequences for violating them. Joining me to break down these new rules is fellow Weintraub partner Jessica Marlow on today’s installment of The Briefing.
Jessica, welcome back to The Briefing. It’s been a while.
Jessica:It has. Thank you for having me.
Scott:Good to have you back. We’re talking about one of your favorite topics, influencer marketing.
Jessica:Absolutely. FTC, they’re coming up with new rules all the time, so I’m excited to dig in.
Scott:Yeah. Well, so let’s start out with a rule that I think a number of online brands, companies that have significant online businesses, will find maybe problematic. So the FTC says that it’s an unfair or deceptive act or practice and a violation for a business to provide compensation or other incentives in exchange for the writing or creation of consumer reviews expressing a particular sentiment, whether negative or positive, regarding a product, service, or business that is the subject of the review. In other words, no pay-to-play for consumer reviews. Now, according to the FTC notes, this section doesn’t address testimonials such as a blogger or an influencer paid review. This section only applies to consumer reviews. Also, the FTC pointed out that this section doesn’t prohibit paid or incentivized consumer reviews, only those where the compensation is provided in exchange for expressing a specific sentiment.
Jessica:What about a campaign where a brand solicits positive feedback on a product in exchange for a discount on a future purchase? Something like, Tell us how much you loved our product, and we’ll give you 10% off your next purchase.
Scott:The FTC that just because a business expects a review to be positive doesn’t mean that there is an express or an implied requirement that the review needs to be positive to obtain an incentive. The condition that the review needs to be of a particular sentiment in exchange for the incentive, it needs to be expressed or implied by the circumstances. However, let’s be clear that review gating, where a business only asks for positive reviews for customers while filtering out negative views, is itself illegal.
Jessica:The rule also says that companies are prohibited from creating, writing, or selling fake reviews or testimonials. This would prohibit reviews attributed to a person that doesn’t exist. This would include AI-generated fake reviews, but not necessarily AI-generated summaries of actual reviews or reviews by real people who do not have actual experience with the business, its products, or its services, or that maybe misrepresent their experience of the person giving it. The rule also prohibits businesses from buying fake reviews or testimonials or disseminating such reviews or testimonials when the business knew or should have known that the reviews or testimonials were fake or false. Something to think about for brands or agencies that contract directly with influencers. Make sure that your agreement requires actual use of the reviewed product and that the review reflects the reviewer’s actual experience.
Scott:Yeah, I agree with that. I think having that rep and warranty in an agreement is a way that a business can say, Well, there’s no way that I should have known that these testimonials given by this person are fake. They had no personal knowledge of the product or these reviews or testimonials did not actually reflect their own personal experience because the contract had these reps and warranties that said that the person giving the testimonial had to use it and that they could only give their personal experience as a testimonial. That’s a really good point. The prohibition on fake reviews also extends the company insiders or their relatives. The rule prohibits procuring or disseminating a review from a company insider or their relative when that review is about the business or one of its products or services, when the business knew or should have known that the reviewer, either materially misrepresented, either expressly or by implication, that the viewer exists. So one, it’s a review by a fake person, or two, that the reviewer did not have actual experience with the business or its product or service, or that the review misrepresents that reviewer’s actual experience.
Jessica:The prohibition does not apply to reviews or testimonials that resulted from a business making generalized solicitations to purchasers to pose reviews or testimonials about their experience with the product or service or the business, or that appear on a website or platform as a result of the business merely engaging in consumer review hosting.
Scott:We mentioned above that businesses can’t create or sell fake testimonials. But the flip side of that coin is that The rule also says that businesses cannot buy consumer reviews or disseminate reviews or testimonials that are fake, either that they’re from a fake reviewer or that they materially misrepresent the reviewer’s experience with a the product or the service. They also can’t provide compensation or incentives for reviews expressing a particular sentiment.
Jessica:The rule also addresses insider reviews. The rule prohibits an officer or a manager of a business from writing or creating a consumer review or consumer testimonial about the business or one of its products or services unless there is a clear and conspicuous disclosure of the officer’s or manager’s material relationship to the business. If the relationship is otherwise clear to the audience, then in the case of consumer testimonials, this disclosure isn’t necessary. Officers, managers, employees, or the relatives must disclose their relationship to the company when writing reviews, and companies must ensure that such disclosures are made when they know about these relationships as well.
Scott:It’s quite frequent to see insiders provide some type of product review on TikTok or Instagram. Sometimes, there’s a disclosure about their relationship with the company and their employment status with the company. Other times there isn’t. But companies take note, if your head of social media marketing is also a generator of your TikTok or Instagram content, you need to make sure that you disclose the fact that this person is a company insider. There are some review websites that misrepresent their relationship to a business being reviewed. These rules prohibit a business from materially misrepresenting, either expressly or by implication, that a website, organization, or entity that it controls, owns, or operates provides independent reviews or opinions, other than consumer reviews, about a category of business products or services, including the businesses or one or more of the products or services that it sells.
Jessica:The role also prohibits review suppression. So, companies can’t use unfounded legal threats, intimidation, or false accusations to prevent or remove reviews. And they also can’t misrepresent the displayed reviews represent most or all of the submitted reviews if negative reviews are being suppressed.
Scott:The rule also includes a prohibition against the use of fake social media influence indicators. Businesses are prohibited from selling, distributing, purchasing, or using fake indicators of social media influence, like number of followers, number of subscribers, likes, etc, for commercial purposes.
Jessica:Let’s talk about the impact of this rule on companies and brands that have some online focus.
Scott:Sure. The first is review management. Companies need to be extremely cautious about how they manage their online reviews. They can’t artificially inflate positive reviews or suppress the negative ones.
Jessica:And how about transparency? There’s an increased need for transparency, especially when employees or affiliates are the ones leaving those reviews.
Scott:Right. And that ties into marketing practices. Social media marketing strategies need to be authentic, avoiding the use of fake followers, fake likes, or fake engagement metrics.
Jessica:Let’s focus for a second on customer feedback. Companies should really focus on genuine customer feedback rather than incentivized or manipulated reviews.
Scott:Then let’s not forget the lawyers. Legal compliance Compliance. Online businesses need to establish clear policies and training to ensure compliance with these rules across all digital platforms. Might I suggest maybe an audit of these practices every year or so because as we know, the FTC is always either changing rules or adopting existing rules to fit current times.
Jessica:Absolutely. I think that plays into platform responsibility. If a company hosts reviews on its platform, it needs to ensure representation of all reviews.
Scott:Influencer partnerships. When working with influencers or celebrities, companies must ensure proper disclosure of relationships and the authenticity of the testimonials given by those influencers or celebrities. Agreed. Now, these regulations aim to create a more honest and transparent online marketplace. At least that’s the goal of the FTC. This could potentially level the playing field for businesses, but it requires more diligence to in managing a business’s online presence and managing both negative and positive customer feedback.
Thank you for joining us for today’s episode of The Briefing. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
What happens when a business built on a celebrity’s name no longer controls the name itself? In this episode of The Briefing, attorneys Scott Hervey and Jessica Marlow break down the Nicklaus Companies v. GBI decision and what it means for venture funds, PE firms, and brand-driven businesses.
They discuss how Jack Nicklaus was able to legally walk away from the company bearing his name—and start competing—because the company failed to secure critical rights to his name, image, and likeness.
Scott and Jessica examine the key legal documents that every investor should review when financing a business tied to personal branding, and the structures that can help prevent this kind of brand exodus. Whether you’re a creator behind a growing company, venture financing an influencer, a sports icon, or a lifestyle mogul, this is a must-listen for anyone putting money into a business that leverages a personal brand.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: It’s not unusual for celebrities and influencers to build an empire around their personal brand. But what happens when they sell a piece of that empire and later want back in the game? That’s the question at the heart of a recent New York Supreme Court decision in Nicholas Companies versus GBI Investors and Jack Nicklaus. The court had to determine who owned the commercial rights to the name and image of one of golf’s most iconic figures, and whether he, Jack Nicholas, could compete against the very company he helped create.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. We are going to talk about branding rights, post-sale competition, and the high-stakes world of influencer-built businesses on today’s installment of The Briefing.
Jessica, welcome back to The Briefing.
Jessica: Thank you. Thank you for having me. Excited to talk about this very timely topic.
Scott: Yeah, I think it is really, really timely with the continued evolution of the creator economy and some of their businesses just getting bigger and bigger and huge financing transactions for a number of them. I think this is a timely lesson, both for influencers and for those that are buying or financing those businesses.
Jessica: Absolutely. I don’t I don’t think there’s any slow in this business, so better for everyone to get on the same page and avoid some of the pitfalls that we’re about to talk about.
Scott: Right. Well, let’s dive right into it. So in 2007, Jack Nicklaus and GBI Investors, it was a company owned and controlled by Jack Nicklaus, entered into an agreement with Nicklaus Companies, LLC. This was a company that was formed by a real estate magnate, Howard Milstein. And Nicklaus Companies, for $145 million, purchased certain assets of GBI, which included a substantial portfolio of trademarks and applications, wealth registrations and applications related to Jack Nicklaus’s name and his signature and the Golden Bear nickname in the United States and various other countries around the world, more than 600 in the US and 50 other countries. It also included in the purchase was the exclusive right to the golf course design service business that was rendered by GBI and marketing, promotional, and branding businesses of GBI, which included the right to use Jack Nicklaus’s name, image, and likeness. The complaint alleges that Nicklaus Companies became the sole owner of all of the rights to use all of the intellectual property related to Jack Nicklaus. GBI and Mr. Nicklaus became members the company, and Mr. Nicklaus became a manager.
Jessica: Fast forward to 2022, Jack Nicklaus retires from his day-to-day involvement with Nicklaus Companies, but then started to pursue deals for the use of his name, likeness, and trademarks, including personal endorsements outside of the Nicklaus Companies, which included Jack Nicklaus being paid to promote a European tour golf tournament and the tournament’s right to use certain Nicklaus IP. Nicholas Companies sued him, alleging breach of contract, among other claims, and seeks to stop him from competing and using his name.
Scott: Early in the litigation, Nicklaus Companies filed for a temporary restraining order and argued that the 2007 transaction, the $145 million transaction, resulted in the purchase of all golf course design services branded and identified under Nicklaus, Jack Nicklaus, and Jack Nicklaus’s signature brands, the various marketing, promotional, and branding activities involving the use and licensing of Jack Nicklaus’s persona in endorsements, other commercial rights, publicity rights, and intellectual property rights related to his identity and history as one of the most recognizable public figures in golf. So essentially, they claimed that they owned absolutely everything.
Jessica: And in opposition to the temporary restraining order, Jack Nicklaus argued that he is free to conduct his own business because the non-compete agreement he signed in connection with the 2007 transaction expired when he left Nicklaus Companies in 2017. Nicklaus argued that it was GBI that sold the assets and businesses to the plaintiffs, not him personally, and that he was only bound by the non-compete.
Scott: Yeah, that’s right. And after a three-day hearing, the New York Supreme Court issued a preliminary injunction prohibiting Nicklaus from using his name and likeness from competing with the Nicklaus companies. Although Jack Nicholas can compete with the Nicklaus companies for golf course design jobs, he can’t use his name and likeness in doing so. And that’s what the court said. While the non-compete has expired, the ownership of the Jack Nicklaus intellectual property is with the Nicklaus Companies, and that isn’t something that expires, the judge said in ruling on the TRO. The exploitive value of his name as an endorser of products and the like is where the line is drawn, so said the court.
Jessica: But the court also made clear that the conclusions underlying the court granting a plaintiff’s TRO were preliminary and could be revisited based on additional evidence available, whether after the conclusion of the discovery on summary judgment or at trial.
Scott: And that brings us here. The court’s ruling on the party’s cross motion for summary judgment. The court examined the agreements from the 2007 transaction and analyzed whether GBI, as a matter of law, had the authority to convey to Nicklaus Company the rights to Jack Nicklaus ‘s name, image, and likeness, being exclusive to the Nicklaus Companies, even against Jack Nicklaus himself. Based on the evidentiary record, the court found that Nicklaus Company had not demonstrated that GBI had that authority.
Jessica: And specifically, the court noted that the purchase and sale agreement was between Nicklaus Companies and GBI and not Jack Nicklaus himself. Therefore, any rights transfer were limited to what GBI legally possessed. The court concluded that Nicklaus Companies failed to demonstrate that GBI had the authority to grant exclusive rights to the Nicklaus’ name, image, and likeness that would bind him personally.
Scott: Right. And as a result, the court granted Jack Nicklaus’ motion for summary judgment, effectively dismissing all of the claims brought by Nicklaus Companies. The decision allows for Jack Nicklaus to use his name, image, and likeness in his business ventures moving forward. Okay, this case does provide some takeaways for influencers and branding transactions, wouldn’t you say?
Jessica: Absolutely. There’s a lot to pull from this ruling and apply going forward. And from the perspective of Jack Nicklaus, the individual, the court’s decision reflects a successful preservation of his right to control and exploit his own name, image, and likeness, despite the existence of a seemingly expansive intellectual property sale involving his personal brand.
Scott: Yeah, expensive is one way to say $145 million.
Jessica: $145. Yeah.
Scott: Okay, so this approach included both strategic strengths and legal risks on Nicklaus aside. So let’s break those down. Let’s first start with what Jack did write.
Jessica: Sure. He did not personally to find a way his name, image, and likeness rights. So despite the 2007 transaction, Nicklaus never executed a personal assignment transferring his name, image, and likeness to the Nicklaus companies. This was critical. The court emphasized that only GBI was a party to the PSA, and individual rights of publicity must be conveyed personally and explicitly. As a result, he retained control of his personal brand because the contractual paper trail did not bind him individually.
Scott: Right. He used a corporate vehicle, GBI, as the seller. So structuring the deal through his wholly owned entity gave him this layer of separation between himself and the assets that were sold. While GBI might have owned IP assets like trademark registrations and applications or licensing rights, it did not own his full personal publicity rights. This structure allowed him to sell assets but avoid personally limiting his future autonomy. A savvy move for someone with ongoing business ambitions.
Jessica: Savvy indeed. He also allowed the non-compete to lapse and then waited to act. So rather than immediately competing or challenging Nicklaus Company’s use of the brand, he waited for the non-compete period to end before reentering the marketplace. This demonstrated respect for the terms of the original 2007 deal and helped bolster his position that he did not intend to abandon his name, image, and likeness rights permanently.
Scott: Right. Okay. There were some risks to the strategy that he took. Let’s talk about what he did and the aspects of what he did that had significant potential risks. So first, he allowed for this ambiguity over the 2007 documents, what they really did or did not do, to persist for years. For over a decade, he operated under a structure that led Nicklaus companies to, some would say, reasonably believe that they had the exclusive rights to his brand and name, image, and likeness. While that ambiguity ultimately worked in his favor, it could have easily backfired had the court found implied consent or detrimental reliance.
Jessica: Absolutely. The second part is Jack benefited from the company’s use of his name and goodwill. During the years that the Nicklaus Company operated using his name, image, and likeness, Nicklaus allowed this association without objection, potentially risking a waiver of the stop will argument. A more aggressive enforcement of boundaries earlier might have prevented the litigation altogether.
Scott: Right. The reliance on GBI as a corporate proxy was clever, as we discussed previously, but it was fragile. Gbi’s transfer of assets was a legally thin premise for transferring broad name, image, and likeness rights. If a court had found that GBI effectively functioned as an alter ego or that Nicklaus implicitly ratified the transfer, personally, the outcome could have been different. Okay, so we talked about what he did right, we talked about what he did wrong or risky. Let’s talk about what he could have done differently. So So he could have clarified in writing that he was retaining his personal NIL rights. Even a simple reservation clause stating Jack Nicklaus retains the right to use his name, image, and likeness for personal and commercial purposes outside of this agreement after the non-compete period would have saved litigation costs and risk. But I dare say it probably would have lowered the purchase price.
Jessica: I think so. He could have entered into a parallel licensing agreement instead of an implied assignment. So rather vaguely permitting the company to use Jack’s name, image, and likeness, he could have structured it as a time-limited license with defined termination and renewal rights, and this would have solidified that Jack remained the ultimate rights holder.
Scott: Right. He could have also documented the expiration of his non-compete and his future plans. By communicating his intentions when the non-compete lapsed, he could have helped avoid claims of bad faith or surprise when he began to compete again. All these, though, I think, would definitely lead to a reduction in the purchase price. I think the fact that Nicklaus Companies believed that they were purchasing all these exclusive rights was really what resulted in such a large purchase price. I think otherwise, if they were just getting a license or if they knew that after a particular period of time, Jack Nicklaus would compete with Nicklaus Companies, I don’t know But there’s not much value then to the purchase, really.
Jessica: Right. I have to imagine they believed 145 million was a complete and exclusive buyout.
Scott: Right. No, I believe that. Okay, so this decision reveals several steps by Nicklaus companies in structuring the purchase and sale agreement and the broader transaction. Let’s talk about what went wrong and what they could have done differently to better protect their interest, particularly in acquiring and enforcing rights to Jack Nicklaus’ name, image, and likeness. Okay, so I think the first and most obvious mistake was that they contracted only with GBI and not with Jack Nicklaus personally. The purchase and sale agreement, the IP assignment agreement, all these related documents were executed between Nicklaus Companies and GBI, a corporate entity that was wholly owned by Jack Nicklaus, but Jack Nicklaus himself was not a party to the PSA. So let’s Let’s talk about why this matters. GBI cannot assign rights that it does not own. The court found that there was no evidence that GBI independently owned the rights to Jack Nicholas’s name, image, and likeness, including his personal rights of publicity or any enforceable trademark rights beyond those already in use or already registered or pending by GBI. I don’t know. I think I chalk this up to really bad due diligence, where a company is is based on an individual’s brand.
Scott: You want to make sure that those assets sit within the company that you’re buying.
Jessica: Well, next, there was a lack of a personal assignment of NAL rights from Jack Nicklaus. While Jack Nicklaus was involved in the transaction and held roles within the company, he never executed a personal assignment of his name, image, and likeness or signature as commercial property in a way that bound him. And why this matters? Rights of publicity and privacy are inherently personal. So if an individual doesn’t personally transfer those rights in writing, then any purported ownership by a third party is vulnerable to challenge. And that’s exactly what occurred here.
Scott: There was a lot of ambiguity about exclusivity in the scope of IP rights in this transaction. And if you’re the buyer selling out $145 million, even if you’re selling out $50 million, ambiguity is not your friend. The PSA was vague. It seems like due diligence might have been not as due or diligent as it should have been. They really didn’t dig into the exclusivity and the scope of the IP rights being transferred. Even when branding rights were mentioned, the documentation failed to specify that Nicholas himself would be restricted from using his name, image, and like this in future business activities. So why does this matter? Well, without clear language about exclusivity, courts will not infer that a person has given up the rights to exploit their identity, especially when they’re not a party to the agreement.
Jessica: Absolutely. So let’s talk about now what the Nicklaus Company could have done differently to prevent some of these issues.
Scott: Yeah, great. So first, Nicklaus Companies could have required Jack Nicklaus to personally sign a rights assignment agreement or some similar agreement, explicitly transferring all of his name, image, and likeness rights, including his voice and his signature for specified commercial uses. Ideally, it would have been irrevocable and with clearly defined business sectors.
Jessica: Certainly would have helped. Another thought is, Nicklaus Company could have included a personal services agreement or a spokesperson type agreement as part of the transaction, and that agreement It would have had language that said something along the lines of Jack Nicklaus will act exclusively through the Nicklaus companies for any public appearance, endorsements, branding work. This would have created a performance obligation and not just a straight asset sale.
Scott: Right. That would have been a good strategy. Some states do have a statutory limit on the length of a personal service contract. California imposes a seven-year cap on certain personal service contracts. I know the agreements in this case had both Florida and New York choices of law, and I don’t believe that either of those states have a similar type of cap on the length of a personal service agreement. So that might have worked under either Florida or New York law. Okay. Nicklaus companies had a better non-compete with Nicholas. The non-compete… It’s odd how they structured it. The non-compete with Jack Nicholas, it had a 13-year term. If Nicklaus companies didn’t want Jack competing, they probably should have negotiated for a longer term. Now, granted, the scope of a non-compete has to be reasonable, both in terms of length and the scope, the geographic scope. But that’s always in the context of the amount of the purchase price and the size of the transaction. So, I think for a transaction of this size and given the context of the transaction, they probably could have gotten away with asking for a much longer non-compete. Agreed. Okay. So in the creator economy, we are seeing a lot of interest in businesses that creators have built, based in part on leveraging their personal brands.
Scott: Whether that’s a purchase transaction or a financing, there are some deal pitfalls, this case highlights, that the buyer or the financier of such a company needs to be aware of.
Jessica: Let’s start with the basics. Who actually owns the brand? Has the individual legally transferred their NL rights, their name, their image, their likeness, their voice, their signature? Have they transferred all of this to the company? If not, what you’ve really got is a license, and a license can expire, or worse, they can be revoked.
Scott: Exactly. And you want to see a perpetual exclusive irrevocable license, or better yet, an outright assignment of those personal branding rights to the company. And if you’re stuck with a license, make sure it has teeth, strong renewal rights, a clear scope, and the ability to enforce it against third parties.
Jessica: Absolutely. And then there’s the non-compete. The only thing stopping Jack Nicklaus from going back into business under his own name was a 13-year non-compete, which expired in 2020. Once that was gone, there was nothing stopping him from launching something new.
Scott: Right. That’s a huge lesson. Non-competes expire. So investors need to secure talent deals with ongoing incentives for exclusivity, performance-based equity, earnouts, or other golden handcuffs to keep the talent committed.
Jessica: And also, don’t overlook the personal services agreement. If the brand relies on the personality being visible, whether it be on socials, on TV, at events, you need those appearances contractually nailed down. How many, how often, what happens if they don’t deliver? That should all be in the contract.
Scott: Right. And finally, make sure the IP actually lives inside the company. That includes trademarks, domain names, social media handles, even catch phrases. You’d be surprised how many of those are still held in the founder’s personal LLC or or worse, unregistered entirely. If the investors behind Nicklaus Companies had required a signed assignment of Jack’s name, image, and likeness rights, not just the non-compete, we might be She’s having a very different conversation, Jessica.
Jessica: Absolutely. That’s right. For investors backing brand-driven businesses, that’s a story worth learning from.
Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Jessica for joining me today. Thank you, the listener or viewer, for tuning in. We hope that you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
After nearly 30 years of litigation, a federal court has canceled General Cigar’s U.S. trademarks for COHIBA cigars — all because of a little-known treaty and a Cuban brand once favored by Fidel Castro. What does this mean for U.S. trademark law and the future of the COHIBA brand? Tune in to this week’s episode of The Briefing as Scott Hervey and Jessica Corpuz unpack this high-stakes decision.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: It’s a battle decades in the making. Two cigar companies, one Cuban and one American, locked in litigation over one of the most iconic cigar trademarks in the world, Cohiba. And in a recent decision, a federal District Court in Virginia upheld a ruling canceling the US trademark registration long held by General Cigar. The reason? A rarely used international treaty and the trademark’s Cuban origin.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpuz. We’re going to talk about the Cohiba Trademark decision and what it means for brand owners on today’s installment of The Briefing. Jessica, welcome to The Briefing. It’s been a little while, but it’s good to have you back.
Jessica: Thanks for having me, Scott.
Scott: So this case isn’t It’s new. In fact, this dispute has been going on for nearly 30 years, and it’s between Cigar General, which is a US company, and Cuba Tobacco, a Cuban state-owned enterprise. Both claim rights to the Cohiba trademark. Have you ever had a Cohiba cigar?
Jessica: Not personally, no. Have you?
Scott: I have, yes. Outside of the United States, of course. Cigar General in the US, which held the Cohiba trademark, and Cuba Tobacco, which held that trademark in Cuba.
Jessica: Yeah, that’s right. So it all started in the late 1990s, when Cuba Tobacco applied to register Cohiba in the United States. The problem was that General Cigar already had registered the Cohiba marks, a wordmark and a stylized version, both used for cigars. Cuba Tobacco asked the USPTO to cancel General Cigar’s registrations, claiming it had prior rights under international law.
Scott: Right. Initially, the ETTAp suspended the cancellation case while Cuba Tobacco pursued litigation in federal court. That case made its way all the way up to the Second Circuit, which blocked Cuba Tobacco from getting injunctive relief, saying that any court-ordered transfer of the trademark to a Cuban company would violate US sanctions under the Cuban Assets Control Regulations.
Jessica: Exactly. But then things shifted. The federal circuit later said that Cuba Tobacco could still pursue cancellation Installation of General Cigar’s marks at the T tab under a separate theory. Article 8 of the Inter-American Convention, sometimes known as the Pan-American Convention, a treaty both the US and Cuba are parties to.
Scott: Okay, so let’s pause here for a second and let’s unpack a few things. First, let’s get some background on the Pan-American Convention. The Pan-American Convention, now you know why they call it the Pan-American Convention, is formerly known as the General Inter-American Convention for Trademarks and Commercial Protection. That’s a long one, was signed in 1929 and entered into force in 1931. It was one of the earliest multinational efforts to create a uniform protection system for trademarks and commercial names across the Americas. And this was at a time when international trademark protection was really still developing. The convention was groundbreaking for expanding reciprocal rights among member nations and recognizing foreign trademark rights that went way beyond traditional territorial principles.
Jessica: Yeah. So the convention’s core goal was to protect legitimate business interests and prevent unfair competition across national borders. It sought to establish a framework whereby companies in one signatory country could assert rights against conflicting registrations in another. This included not just registration-based protections, but also protections based on prior use and legal recognition in the country of origin. Article 8, which is the key provision issue in the Coheba litigation, reflects that exact purpose, allowing a trademark owner in one contracting state to cancel conflicting mark registered another if it had prior legal protection and the registrate had knowledge of the original use.
Scott: While the Pan-American Convention has often taken a back seat to more prominent treaties like the Paris Convention or the TRIPS Agreement, the Pan-American Convention remains in force and has been recognized by US courts as self-executing, meaning that it becomes US law upon ratification without the need for additional legislation to actually implement the treaty. That status gives it the same force as federal law. And as the Cohiba case shows, it can be a powerful tool in cross-border trademark disputes, especially among countries, well, primarily among countries that are parties to the treaty like the United States and Cuba.
Jessica: So, Scott, what other countries are members of the Pan-American Convention?
Scott: In addition to US and Cuba, member states include Mexico, Guatemala, Honduras, Nicaragua, Costa Rica, Panama, Colombia, Venezuela, Peru, Brazil, and Paraguay.
Jessica: It’s really too bad that China isn’t a member, huh?
Scott: Right. Given the problems US brands have in China with Chinese actors filing for Chinese trademarks that belong to a growing brands in the US before those brands file in China, the ability to use Article 8 in China to cancel a trademark would be a wonderful thing.
Jessica: It would be great. But here, let’s talk about Article 8. So it allows a trademark owner in one contracting state, in this case, Cuba, to cancel a mark registered another here in the United States if two key elements are met, right?
Scott: Right. And the first element is that the foreign mark was protected in the country of origin prior to the US registration. And the second is that the US registrant had knowledge of the foreign mark’s use before the filing in the US. The idea is to prevent companies from racing to the trademark office in another country to grab a brand that they know is being used abroad, exactly like they do in China. In this case, Cuba Tobacco had registered its Cohiba mark in Cuba in the early 1970s and had been selling the cigars since 1970, including diplomatic gifts and retail outlets for foreign nationals in Havana. And yes, Cohiba really was Fidel Castro’s favorite cigar, and he often gave it to dignitaries as gifts.
Jessica: Well, the court actually found that General Cigar knew all of this. In fact, internal memos from 1977 referred to Cohiba as, Castro’s Cigar, and noted that it was used in Cuba. Still, General Cigar pushed ahead with its application in March of 1978, apparently deciding that securing a US registration was more important than avoiding a conflict.
Scott: So the TTAB ultimately canceled General Cigar’s registration under Article 8, finding both legal protection of the Cuban mark and knowledge on the part of General Cigar. And when General Cigar appealed to the federal court in Virginia, the court upheld the TTAB’s decision.
Jessica: So, General Cigar tried to argue that the cancellation itself was a prohibited transfer of property under US embargo laws. But the court disagreed, finding that the Cuban Assets Control Regulations didn’t bar the T-Tab from canceling the registration because a cancellation, unlike a court order transferring a mark, doesn’t hand property over to a Cuban entity. It simply removes the registration.
Scott: Right. Now, that’s right. And that’s an important distinction and one that could have broader implications. This ruling reinforces that international treaties, even lesser-known ones like the Pan-American Convention, can create real, enforceable rights in US trademark law.
Jessica: Yeah. And it also underscores the importance of good trademark hygiene. If a company knows about an existing foreign brand and still tries to register it here without disclosure, it may be vulnerable under Article 8.
Scott: So Jessica, what do you think? Is this the end of the line for General Cigar and its use of Cohiba?
Jessica: Not necessarily. The ruling doesn’t actually give Cuba tobacco the US rights yet. It just clears the way. Whether Cuba tobacco can actually register and use the market in the US still remains to be seen, especially since the embargo is still in place and the CACR limits Cuban companies’ ability to acquire US trademarks.
Scott: Okay. So let’s talk about what happens now for a General Cigar, given that its trademark registration for Cohiba has been canceled. Cancellation doesn’t automatically mean that General Cigar has to stop using the mark. In the United States, trademark rights are based on use, not just registration. That means that General Cigar could, in theory, continue using the Coheba brand in commerce just without the benefit and legal presumptions that come with federal registration.
Jessica: Yeah, but that comes with some serious risk. Without a federal registration, General Cigar loses the legal presumption of ownership, the to enforce the mark in certain venues and keep protections like nationwide constructive notice. More importantly, Cuba Tobacco, now holding a potential priority claim under Article 8 of the Pan-American Convention, may be in a stronger position to argue that general cigars continued use of cohiba actually constitutes infringement.
Scott: So could Cuba tobacco sue for trademark infringement in the United States? Possibly, but there’s a catch. The US embargo against Cuba still bars many commercial transactions, including the transfer of trademarks. The Second Circuit, as we know, previously held that giving ownership of the Cohiba mark to Cuba tobacco through a court order would violate the Cuban asset control regulations. So unless Cuba tobacco obtains a specific license from the US Treasury Department’s Office of Foreign Asset Control, it may still be blocked from enforcing or benefiting from trademark rights in the US, even if it technically has priority.
Jessica: Yeah. In short, General Cigar is in a complete legal gray zone. It can still sell cigars under the coheban name, but it does so without the protection of a federal registration and with a potential infringement claim looming, if and when US sanction policy changes or if OFAC issues a license. It’s really a stark reminder here that trademark law doesn’t operate in a vacuum and that the geopolitical forces can shape even the most brand-driven legal battles.
Scott: I guess one could say that general cigars use of Coheba is somewhat smoky and cloudy right now. That was terrible. Well, thanks for joining me today, Jessica. That’s all for today’s episode of The Briefing. Thanks to Jessica for joining me. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment..
Warner Music Group just sued DSW for using 200+ hit songs in social media ads—without permission. Those TikToks could now cost $30M. On this episode of The Briefing, entertainment and IP attorneys Scott Hervey and Tara Sattler break down the legal firestorm and what every brand needs to know before hitting “post.”
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: A major music label just did the legal equivalent of a mic drop on one of America’s best-known shoe retailers. Warner Music Group has filed a lawsuit against Designer Brands Inc, the parent company behind DSW, accusing them of using more than 200 hit songs by artists like Cardi B, Fleetwood Mac, and Lizzo in TikTok and Instagram videos without a license. And they’re not just suing for direct infringement, they’re going after DSW for contributory and vicarious infringement tied to the influencer content.
I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. We’re going to talk about the DSW lawsuit and the lesson for brands that engage and Influencer Marketing on today’s installment of The Briefing.
Tara, welcome back to The Briefing. We’ve got another, I don’t know, A scary piece of influence or marketing gone wrong here on the docket today.
Tara: Yeah, we definitely do. I’m looking forward to talking about it with you.
Scott: So earlier this month, Warner Music Group filed a federal lawsuit against DSW, claiming that over 200 of its copyrighted songs were used in social media ads on TikTok, Instagram, and other platforms without getting permission.
Tara: Yeah, this isn’t about just one rogue post. The complaint alleges that DSW DSW’s marketing team, its influencers, and its in-house content creators, produced and shared branded videos that featured hit songs like Up by Cardi B and Barbi World by Nicki Minaj without securing proper licenses.
Scott: The complaint alleges that DSW knows all about licensing music for advertising and that it had previously licensed music for use in its traditional ads. The complaint alleges that DSW knew exactly what it was doing when it skipped the licensing process for its influencer marketing ads.
Tara: Right. In the complaint, Warner Music Group states that DSW, like many retailers, has shifted much of its marketing focus from traditional advertising to promoting its products through social media platforms like Instagram and TikTok, as well as through paid partnerships with well-known social media influencers.
Scott: And as you and I discussed on a different episode, as we know, more than 50% of advertising spend has moved from traditional TV to social media. From my experience with my own brand clients, it seems that brands find social media advertising more effective and less expensive than traditional advertising. Well, I mean, less expensive when you don’t get named as a defendant in a claim like this.
Tara: Right. Here’s what Warner Music Group is doing for. First, direct copyright infringement based on DSW’s posts. Second, contributory copyright infringement based on the content created for DSW by the influencers. And third, vicarious copyright infringement because DSW benefited financially from the infringing influencer content and had the ability to control or remove the content.
Scott: Right. So this is where this type of advertising campaign gets more expensive than traditional media. Warner Music Group is asking for statutory damages of up to $150,000 per work. That’s $30 million if they win on the 200 songs. Now, the judge has discretion whether to award up to the full amount of statutory damages. But still, it’s a substantial… This is going to be a substantial bill to pay either way.
Tara: Yeah, that definitely is expensive. So let’s take a step back and briefly talk about copyright infringement. Management and the different claims made by a Warner Music here.
Scott: Sure. Copyright law protects creative works like music, videos, photos, and more. It gives the copyright owner the exclusive right to reproduce, distribute, publicly perform, and publicly display that work. When a brand or an influencer uses a copyrighted work, whether it’s a song or an image in a post without permission, technically, that’s infringement. And unless the use qualifies as fair use, which is very narrow in a commercial context, the copyright owner has a claim.
Tara: And we’ve covered numerous cases of celebrities being sued for posting a photo that wasn’t taken by them, even where that post wasn’t part of an integration. Using a photo or music on TikTok or Instagram may seem casual or informal, but the Copyright Act doesn’t make exceptions for viral marketing or these types of posts.
Scott: Right. No, that’s a really good point. All right, so let’s break down the three claims that Warner is making. Let’s start with the claim for direct copyright infringement. This is the most straightforward. Warner says that DSW itself posted videos on its own official social media accounts using the copyrighted music without a license. It’s similar to airing a commercial on TV with a Beyoncé track you didn’t pay for. If you post it, you’re liable.
Tara: Yeah. The second claim is a claim for a contributory copyright infringement, and this covers the influencer angle. Warner Music alleges that DSW encouraged, collaborated with, and paid influencers to create videos featuring its products and the copyrighted music. Even if the influencer technically uploaded the video, if DSW helped plan or promote it and knew about the infringement, DSW can also be held viable.
Scott: Right. Lastly, Warner Music alleges that DSW engaged in vicarious copyright infringement. This one is all about control and profit. If DSW had the right and ability to supervise the content and directly benefit it from it through increased sales or through brand visibility, it can be held vicariously liable, even if it didn’t know about the infringement at the time. So it’s a serious trifecta of liability here.
Tara: That’s exactly right. I think this DSW lawsuit It is definitely a wake-up call for brands relying on social media marketing.
Scott: Right, and a lot of brands do. Here’s the bottom line. If you’re using music in a video, and if that video promotes your product or your brand in any way, you need a license. This is true whether you post a video yourself or whether you repost an influencer’s content that was made for your brand.
Tara: Also, it doesn’t matter whether the video or photo runs on the brand’s channels or on the influencer’s social channels. If the video is the result of an integration and it just runs on the influencer’s channels, the brand may still be liable for contributory copyright infringement.
Scott: It doesn’t matter if the music is only a 15-second clip. I get that a lot, and I’m sure you do, too. The client-client will say, What I only use two seconds? Or my understanding is, If you only use five seconds, it’s fair use. No, there’s no magic number that equals fair use. Fair use is, as you know, if you listen to this podcast, it’s a multifactor test, and it’s much more than the amount and substantiality of the work that’s used. Also, it doesn’t matter if it’s trending, and it definitely doesn’t matter that TikTok or Instagram provided the video or audio unless they state in their license that it is available for use for commercial purposes. It’s your responsibility to make sure that that the work, the music or video, is cleared for commercial use. To help avoid lawsuits like this, here’s a checklist of terms every brand should include in its influencer agreements.
Tara: Okay, here we go. First, consider including a music usage clause. Require influencers to use only music that is licensed by the brand, royalty-free, or from a platform’s cleared for Commercial Use Library and require the influencer to show proof of licensing. Also, prohibit use of any commercial tracks without prior written approval. Lastly, have influencers warrant that their content is not infringing of any third-party IP rights.
Scott: The brand should also have content review rights, retain the right to review and approve all videos before publication, and have the ability to require the influencer to make changes after the video is posted. Also, disclosure obligations. This one is a pretty basic requirement, but your contract should require compliance with FTC guidelines on sponsored content and make sure that the influencer is required to provide proper disclosure.
Tara: Also, influencer agreements should have an indemnification clause. So include provisions requiring that influencers indemnify the brand for any legal claims arising from unlicensed content that they create or post. However, don’t over rely on the indemnification clause. If the influencer is agreeing to indemnify the brand and doesn’t really have the financial capacity to do that, then the brand still has significant exposure.
Scott: Right. That’s a great point, Tara. Also, brands should have takedown requirements in their agreements. Require influencers to promptly take down any content if the brand request that it be done, especially if there’s a legal claim that arises. Lastly, licensing education. Now, this is not a bad idea, and I don’t know if it’s regularly done by the brand, but provide influencers with basic education or guidelines about music licensing, especially what not to do. Now, the downside of this is that this type of information could be used against the brand in litigation like this. So maybe, I think in the contract, just having more discussion about the requirement of music licensing and maybe have a phone conversation with the influencer if they’re not quite sure about exactly what this means.
Tara: Yeah, and I think one other thing to do is that If an influencer acknowledges to a brand that they have licensed to a music library, the influencer might not appreciate or fully understand that there are different tiers of licensing and that a basic license may not cover certain uses commercial uses. So brand should require influencers to confirm that they understand that platform music libraries are not automatically created for branded content.
Scott: Right. I think this is part of a growing trend that shows that labels and other content owners are watching what brands do on social media, especially when it involves popular music or maybe a popular meme or some other type of trend. The fact that something is viral doesn’t mean that it’s legal. And the casual, fast-paced nature of influencer content doesn’t excuse copyright violations. So if you’re a brand working with influencers, take a hard look at your contracts, your approval process, and Most importantly, your understanding of music licensing. Because in this new era of marketing, a 50-second TikTok with one song can come with $150,000 price tag.
Tara: Well, I think that’s right, Scott.
Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Tara for joining me. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions or any comments about the topics we covered today, please leave us a comment.
A class action lawsuit has been filed against ALO Yoga and several influencers for failing to disclose that various social media campaigns were actually paid ads. Weintraub attorneys Scott Hervey and Tara Sattler break down this lawsuit and what brands should do to avoid costly FTC violations like this in the future.
Watch this episode on the Weintraub YouTube channel.
Scott previously discussed the risks of social media marketing and FTC compliance in a two-part series with IP attorney Jessica Marlow. Tune in to episode one and episode two now.
On this episode of The Briefing, Scott Hervey and James Kachmar break down the Supreme Court’s decision to pass on the McGuckin v. Valnet case—and how it keeps the legal confusion swirling around the “server test” for embedding online content. With courts on opposite coasts taking different stances, what does this mean for publishers, bloggers, and social media managers? They talk about the risks, what you can do to stay safe, and why your location might matter more than you think.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:The Supreme Court rejected a challenge to the Ninth Circuit server test, the test that the Ninth Circuit adopted in 2007 in the case of Perfect Ten versus Amazon, and it’s used for determining copyright liability when photos are embedded online. Because the server test has been rejected by the Southern District of New York, this refusal by the Supreme Court will continue to create a split among circuits and confusion among copyright litigants.
I’m Scott Hervey, shareholder with the law firm of Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We’re going to discuss this case and how to best navigate this issue on this installment of the briefing.
James, it’s good to have you back on the briefing. It’s been a while. Thank you for coming on today.
James:Thanks for having me, Scott.
Scott:Okay, so let’s talk really briefly about the case that was up for a petition for cert to the Supreme Court, and it’s the case of McGuckin versus Valnet. And that case arises from Valnet, the operator of the website thattravel. Com, being accused of infringing 36 of McGuckin’s Instagram photos by embedding them in various online articles. A California federal court applied the server test and dismissed McGuckin’s suit, and the Ninth Circuit affirmed that decision in 2024. In affirming the dismissal, the Ninth Circuit referenced its 2023 decision of Hunt versus Instagram. This was a case that we covered here on the briefing in which the Ninth Circuit held that Instagram was not secondarily liable for copyright infringement when websites use Instagram posts to embed photos.
James:Right, Scott. Why don’t we start with the basics? The server test is a legal rule used to determine whether embedding an image or video into a website constitutes direct copyright infringement. Embedding is the process of copying unique HTML code assigned to the location of a digital copy of the photo or video published to the internet, and the insertion of that code into a target web page or social media post so that the photo or video is linked for display within the target post. Under this test, a website only infringes a copyright if it hosts the copyrighted file on its own server. If you’re simply embedding a photo or video that is stored on someone else’s server, like linking to a Instagram post, you’re not displaying the content under the Copyright Act. You’re just the HTML code that tells the user’s browser where to go look to get the content.
Scott:That’s a really good description, James. The server test arises from the 2007 Ninth Circuit case of Perfect 10 versus Amazon. In that case, Perfect Ten, they were a publisher of adult content. They sued Google for linking to and displaying thumbnail versions of their copyrighted images. Google didn’t host the full size images itself. Instead, it linked to them or embedded them from Perfect Ten’s website. The court held that because Google wasn’t storing the infringing images on its own server, it wasn’t displaying them in the legal sense. See, under the Copyright Act to Violate the Public, display, right? An infringer must, quote, display copies of the copyrighted work. Under the server test, embedding in a website that does not also store an image or video on its own server, does not communicate a copy of the image or video, and thus does not violate the copyright owner’s exclusive display right. Under Perfect10, an alleged infringer displays an image in violation of a copyright holder’s rights only if a copy of the image is stored on the computer’s server, on its hard disk or other storage device.
James:That’s right, Scott. The server test is the law of the land, at least in the Ninth Circuit. However, it’s been rejected by a court in the Southern district of New York. There, the seminal case in the Southern district of New York is Goldman versus Breitbart News Network. There, in that case, several media companies embedded a tweet that contained a copyrighted photograph without the photographer’s permission. The defendants tried to get that case dismissed based on the server test. However, the court explicitly rejected the server test, holding that embedding an image, even if hosted on another server, can constitute a display for purposes of finding infringement under the Copyright Act.
Scott:Right, that’s right. In that case, the court reasoned that the Copyright Act defines display broadly and makes no mention, the Copyright Act makes no mention, of server location. Therefore, what matters is the end user experience, whether the copyrighted work is perceptible to the user on the site doing the embedding. The judge in the Goldman case stated, When defendants caused the embedded tweets to appear on their website, their actions violated plaintiff’s exclusive display rate.
James:Right. Here we are, at least for now, with a split between courts in these two circuits, one on the West Coast, one on the East Coast, that probably deal with the majority of online media cases. Where does that leave online publishers, bloggers, and social media managers? I think one of the key takeaways is that embedding content may not be risk-free, especially outside the Ninth Circuit.
Scott:Right. No, I agree with you. I agree with you. That is the key takeaway. All right, so how do we navigate Why don’t we cover some practical advice for online publishers, bloggers, and social media managers? I think the first bit of advice is, when in doubt, seek permission from content owners or use platforms that provide properly licensed media, like content libraries or other sites like that. Another bit of advice would be embedding from services whose terms of use expressly address press embed licensing, where a party posting photos agrees to the platform, granting an embed license to third parties. But even then, I think there’s a risk of challenges to the platform’s terms and the enforceability of those terms.
James:That’s right, Scott. I think it’s also important that you avoid embedding images from unknown or untrustworthy sources. If the original source does not have the rights to the image, embedding could still expose you to claims of infringement. Publishers should also weigh the risk of being sued in New York if your content targets readers in that area, or if your company is based outside the Ninth Circuit, you’re more likely to face scrutiny under the Goldman approach than the server test.
Scott:Right. If I may add, I think it’s always a good idea to have a written content policy that’s been vetted by counsel. I think media companies Companies and bloggers and media managers should really have established clear internal guidelines for how your organization handles third-party images and embeds, especially in user-generated content marketing.
James:That’s right, Scott. Until the Supreme Court takes up this issue or Congress amends the Copyright Act to clarify what display really means, this legal gray area will continue to pose risks for online publishers.
Scott:Right, I agree. If you’re embedding content knowing the jurisdiction you operate in and having a smart content strategy, it really could make all the difference.
James:That’s right, Scott.
Scott:Well, that’s all for today’s episode of The Briefing. Thanks to James for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, believe us or review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Lady Gaga’s “Mayhem” tour has sparked legal trouble. In this episode of The Briefing, Scott Hervey and James Kachmar analyze a trademark infringement lawsuit filed by surf brand, Lost International, which claims Gaga’s use of “Mayhem” on merchandise violates their long-standing rights. The discussion explores the strength of Lost’s trademark, the likelihood of consumer confusion, and key legal takeaways for brands navigating crowded trademark landscapes.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:
Lady Gaga brought her Mayhem tour to the 2025 Coachella Music Festival. While her performance was a critical success, there is someone who is not a fan of hers. At a minimum, not a fan of the name she chose for her tour. I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We’re going to talk about the trademark lawsuit filed by the surf and lifestyle brand Lost International against Lady Gaga for her use of Mayhem on today’s episode of the Briefing.
James, welcome back to the Briefing. It’s been a while.
James: Yes, thanks for having me back, Scott. Like you, I’ve been following this Lady Gaga case, and it certainly raises some interesting trademark law questions.
Scott: Oh, absolutely, absolutely. So why don’t we start with the basics? So, according to the complaint, Lost International, they’re a California company that was established in 1985 as a surf and lifestyle brand. They claim to have been using the mark mayhem since 1988 in connection with surfboards, surf equipment, accessories, surf videos, and clothing. Lost owns a registered trademark for Mayhem in the United States, and it was issued on August 11, 2015, and it covers various clothing items like beanies, caps, jackets, pants, sandals, shorts, and, you know, other typical beach surf wear. This particular trademark registration is for a wordmark, which means that it covers the word Mayhem without having any particular font, style or color requirements.
James: That’s right, Scott. The complaint alleges that Lady Gaga released a music album called mayhem in March 2025 and announced a worldwide concert tour under the same name. Furthermore, Lost claims that prior to the album’s release, Lady Gaga and associated parties began selling T shirts and other clothing items with the Mayhem mark prominently displayed, allegedly with a nearly identical design to Lost’s own Mayhem products. They’ve even included a side by side comparison of the clothing and their Mayhem logos in their complaint.
Scott: So LOST is seeking some significant remedies.
James: Yes, they are. Lost is asking the court for a judgment that Lady Gaga has infringed their trademark rights. They are seeking monetary damages and also want an accounting of Lady Gaga’s proceeds, which will result in a possible disgorgement of her profits. They want punitive and exemplary damages, interest costs, and attorney’s fees. Lost is also crucially seeking injunctive relief to stop Lady Gaga from using the Mayhem mark in connection with her merchandise and promotions.
Scott: Okay, so let’s dive into the legal arguments. So the complaint asserts nine causes of action. Nothing like a big complaint, right? So these. These causes of Action include federal and common law trademark infringement, false designation of origin, and false advertising under the Lanham act, false advertising under California state law, and federal and state trademark dilution, as well as unfair business practices and common law unfair competition. So I think that the federal trademark claim is going to take center stage in this lawsuit, so let’s focus on that. So in California, a court analyzing a trademark infringement claim is going to look at the sleek craft factors, which are the following. The strength of the plaintiff’s mark, the similarity of the marks at issue, the similarity or relatedness of the goods, the similarity of the marketing channels for those goods, the degree of care likely to be exercised by the consumer of those goods, any evidence of actual confusion, the defendant’s intent in selecting the mark, and likelihood of expansion of the product lines.
James: Yes, that’s right, Scott. So why don’t we start at the top? Let’s look at the strength of Lost mark.
Scott: Great. Yeah. Okay, So I think Lost has a strong mark. Lost as a federal trademark, registration for Mayhem as a word mark in connection with clothing. The registration provides them with certain presumptions of ownership. The right to use the mark nationwide in connection with the goods, and because it’s on the principal register, the fact that the mark is distinctive, the mark has become incontestable, and they seem to have a long history of using the mark since 1988 in connection with clothing.
James: Okay, Scott, but let me play devil’s advocate here. There are many other federally registered trademarks for clothing that include mayhem, which suggests that the term mayhem might not be exclusively associated with Lost in the broader marketplace, and this potentially weakens their claim to having exclusive rights to that mark.
Scott: Yes, but those other trademarks include Mayhem with some other words like Miami Mayhem or Mayhem on the mat, and that’s significant.
James: Yes.
Scott: Now, James, you have to agree with me that the next two factors, similarity of the marks and relatedness of the goods, tend to favor a finding of infringement.
James: Let’s hear your argument on that, Scott.
Scott: Okay, so determining similarity of the marks involves comparing the the appearance, sound, and meaning of the two marks. Lost complaint emphasizes that the mark Mayhem is identical on both Lady Gaga’s merchandise and Lost merchandise, as we saw above, and that the stylized form, as we saw, is substantially similar, if not nearly identical. And as for the goods at issue, Lady Gaga is selling T shirts and other items of clothing with the mark prominently displayed on it, with, as the complaint alleges, and as we saw, a nearly identical design as used by Lost on its own products. The same type of goods for which LOST has a registered trademark.
James: I’m not sure I agree with you, Scott, because I went on Lady Gaga’s website and the uses of Mayhem that I see are used as part of a multi word mark such as I am mayhem and mayhem in the desert. And I think that may go into this analysis as well. Now, why don’t we talk about the channels of trade, because I think loss claim has some real problems here. So this factor examines how and where the respective goods and services are advertised and sold. Loss claims their products have been and are likely to be marketed in the same or similar stores, channels or outlets, and advertising similar media, and that both parties use the Internet for marketing. I don’t know how accurate this is given that it’s just alleged in the complaint. The Lady Gaga website specifically says that the Mayhem merchandise was available at the festival. Fans buying Lady Gaga merchandise at Coachella or even through her website are not going to confuse it with Loss or with a surf and lifestyle apparel product. The core of the trademark infringement claim, I think, is really going to come down to demonstrating a likelihood of consumer confusion as to the source of the product.
James: And if Loss cannot sufficiently prove this confusion, I think their claim may fail.
Scott: It is true that courts do not treat the Internet as a single undifferentiated channel of trade, and they do look at how and and where on the Internet goods and services are sold or marketed and to whom. And I think it’s the to whom where Lost has a good claim. I think it’s fair to assume a significant overlap between consumers of Lost clothing and fans of Lady Gaga. And I’m sure we are going to see evidence of that introduced in this case.
James: That’s right, Scott. I mean, proof of this overlap will come out in discovery and usually it’s through competing survey evidence. While Lost alleges, without any support in its complaints, that the use of the mark by Lady Gaga has led to instances of actual confusion in the marketplace among or by members of the consuming public. If survey evidence shows that a LOST consumer is not a Lady Gaga listener, they may have trouble establishing an overlapping consumer base.
Scott: Since the last factor expansion of the product lines will probably not play a significant role here. Let’s talk about the intent of the defendant in selecting and using this mark. So this will consider whether the defendant, Lady Gaga, adopted the mark with the intent of trading on Lost goodwill. Lost alleges that Lady Gaga appropriated the name and identifiable logo Mayhem to identify similar products. Even though Lady Gaga, at least LOST is alleging, is well aware of that Lost owns the mark and that this was done to derive benefit from the reputation of Lost Mark. And further, knowing and intending to cause a likelihood of confusion and loss doesn’t.
James: Offer any grounds supporting this claim that Lady Gaga was aware of their mark.
Scott: Well, you know as well as I do that they don’t have to do that at the complaint stage, James, but I’m sure this will all play out in discovery that Gaga’s team was aware of Lost Mark. I think it’s fairly safe to assume that Gaga’s team ran a trademark search before search report before selecting this mark. And if they did, they certainly would have seen Lost Mark. Let’s briefly touch on some of the other claims. So, regarding false advertising, Right. Lost argues that Lady Gaga’s use of Mayhem falsely suggest an affiliation, connection or sponsorship with Lost for trademark dilution. They contend that Lady Gaga’s use impairs the distinctiveness of their famous Mayhem mark.
James: Right. And the success of these claims generally hinges on the strength and fame of the original mark and the likelihood of blurring or tarnishing, which again ties back to the distinctiveness and exclusivity of of Mayhem in the marketplace. Given the number of other Mayhem trademarks, proving their mark is famous and distinctive in the legal sense for dilution purposes might be challenging.
Scott: So what’s your overall take on the strength of Lost’s case?
James: Well, I think while Lost has a registered trademark and a long history of use, the existence of numerous other Mayhem trademarks and the likely different trade channels for Lady Gaga’s merchandise may present significant hurdles to lust. The strongest part of their argument likely lies in the direct overlap of using a similar logo on clothing.
Scott: Right, but that factor may be complicated by the other clothing related mayhem marks and the inability to establish overlapping channels of trade or consumers.
James: Yes. So, Scott, are there any practical takeaways from this case for businesses and individuals regarding products like this?
Scott: Yeah, that’s a great question, James. There are. So this case shows the importance of trademark registration, right? Lost International’s lawsuit heavily relies on its ownership of a federally registered trademark from Mayhem. This registration provides them with certain legal presumptions and rights. The fact that LOST registered the mark in 2015 and even filed a declaration of incontestability in 2021 highlights the proactive steps a business can take in protecting their brand names. Registering your trademark provides a strong legal basis for infringement claims.
James: Yes. And context matters in trademark use. Lost registration for clothing would generally not automatically block Lady Gaga from using Mayhem for her album and tour titles. This indicates that the context in which a mark is used is crucial. Using a similar mark in a completely unrelated industry or for a different type of product or service may not necessarily constitute infringement due to a likelihood or a lower likelihood of consumer confusion.
Scott: That’s right. One caveat though, that might constitute trademark dilution depending upon whether or not that first mark is a famous trademark. Here’s another pointer. A crowded trademark landscape can make it more difficult to claim infringement and establish the strength of your mark. The fact that there are other active trademarks involving mayhem for clothing could really weaken lost claim of exclusivity. This underscores the importance of conducting a thorough trademark search before adopting a brand name.
James: Those are really good points, Scott. Thanks for having me on this podcast.
Scott: Yeah, good to have you, James. And that’s all for today’s episode of the Briefing. Thanks to James for joining me today, and thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable, and if you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. And if you have any questions or comments about the topics we cover today, please leave us a comment.
Is traditional Hollywood facing an existential crisis? Deloitte’s 2025 Digital Media Trends report reveals a massive shift in how Gen Z and millennials consume content. Scott Hervey and Tara Sattler break down the data and explore what this means for studios, creators, and the future of storytelling on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: Deloitte released its 2025 digital media Trends earlier in March. It is a comprehensive look at the seismic shift rocking the media and entertainment landscape. Are traditional studios facing an existential crisis against these hyper scale and hyper capitalized tech giants? And with Gen Z and millennials finding social media content more relevant than TV and movies, what does this mean for the future of storytelling and celebrity? I’m Scott Hervey, partner in the entertainment and media Department of Weintraub Tobin. And today, I’m joined by my partner, Tara Sattler. Stick with us as we analyze these trends and what they mean for both the traditional and new media players navigating this rapidly evolving digital world in today’s installment of The Briefing. Tara, welcome back to The Briefing. It’s good to have you back.
Tara: Thanks, Scott. Thanks for having me back. It’s always great to be here.
Scott: Yeah. I thought this one was going to be particularly relevant for both you and I because Our practice area is we both straddle both traditional media representing studios and production companies. And also we have another foot really squarely set in the creator economy, digital media, YouTube space, podcast. I think you and I have the benefit of seeing both sides of this. That’s why I thought you’d be the perfect co-host for this one.
Tara: We do, Scott. I think you’re right. I’ve been looking through this report. It’s really quite eye-opening. The shifts are significant, especially for the traditional media players who you and I both work with a lot.
Scott: Yeah, absolutely. This report makes one thing abundantly clear, and I think it’s something both of us have been talking to our clients about for a while. Social video platforms are becoming a dominant force in media and entertainment, and they do present a challenge to the traditional Hollywood model. So today we’re going to summarize the key findings and discuss what opportunities exist for both traditional Hollywood studios and content producers and the content creators on platforms like YouTube. So let’s dive in. So the report itself, the headline here is that social platforms are becoming the new center of gravity for media and entertainment. According to Deloitte, these platforms are drawing more of consumers’ time and more of advertisers’ money away from traditional media.
Tara: Yeah, the report found that US consumers are spending about six hours daily on media and entertainment, and that number isn’t growing. What’s changing is how that time is distributed. Younger generations, especially Gen Z, are spending significantly less time watching traditional TV and movies and more time on social media platforms with user-generated content.
Scott: Right. And Those numbers are pretty striking. Gen Z respondents are spending about 54% more time, so that’s about 50 minutes more per day on social media platforms and watching user-generated content than the average consumer. They’re spending 26% less time, so that’s about 44 minutes less per day, watching TV and movies than the average person.
Tara: It’s not just about time spent. The report found that 56% of Gen Z and 43% of millennials say social media content is more relevant to them than traditional content like television shows and movies. Plus, about half of these generations feel a stronger personal connection to social media creators than they do to TV personalities or actors.
Scott: Let’s now talk about the advertising piece of this because it really is quite huge. The report shows that social platforms are winning the ad battle, too. Gen Z and millennials are much more likely to say that ads on social media influence their purchasing decisions. That’s great for some of our clients who run ads on these platforms and also are creators in their creator economy who live off of these ads. That’s a major source of their revenue. For Gen Z, it’s about 63%, while ads on streaming services come in at about 28%.
Tara: That’s a big problem for SVOD platforms that are trying to shift to ad-supported streaming models. They’re competing against platforms that have spent years prospecting their ad technology and their algorithms for recommendations.
Scott: Exactly. Meanwhile, traditional distributors and studios are caught in a really tough spot. Paid TV subscriptions continue to decline, down to 49% of consumers from 63% three years ago. Streaming services are facing challenges, too, with 41% of consumers saying the content available isn’t worth the price. Not me, though. Up to five percentage points from 2024.
Tara: Yeah, I keep paying, too. And those subscription costs, they just keep going up. They do. And then, SBOD subscribers report paying an average of $69 a month for four services, which is up 13% in just one year. For Genzy and Millenials, they have an average of five paid services, and those costs are up about 20%.
Scott: You know, with the password sharing crackdown, it’s actually no wonder that you’re seeing a decrease in the younger generation’s usage of SVOD services. And that’s also no I don’t know why we’re seeing this really high churn rate. The report notes that 39 % of consumers canceled at least one paid streaming service in the last six months, with the number jumping above 50 % for Gen Z and millennials. All right. What does this report mean with regard to opportunities for traditional Hollywood? Let’s talk about this.
Tara: I think there are several potential paths forward. First, the report Deloitte suggests that studios need to embrace ad technology and AI. They’re moving to the center of content economics, and studios need to invest heavily in these areas to understand them and to be able to compete.
Scott: Deloitte suggests that strategic partnerships might be the way to go. Many studios simply don’t have the in-house expertise to build competitive ad tech platforms.
Tara: Yeah, so that consolidation is another opportunity. The report suggests that studios should gather larger audiences, potentially through mergers and acquisitions or clever aggregation, to really be able to achieve the scale needed to compete with the social media platform.
Scott: We’re already seeing some of that with bundling deals between streaming services, but the report seems to suggest that they might need to go much further than this.
Tara: Yeah, technology adoption another opportunity so studios can leverage virtual production and AI to enable cheaper and faster production or use generative AI for dubbing and translation and even implement AI capabilities that automate certain operational functions. Especially this day and age, this doesn’t come without controversy.
Scott: Oh, that’s very, very true. The report also highlights an interesting opportunity, engaging with social platforms rather than just competing with them. Traditional studios could learn from social platforms about content, creativity, and advertising capabilities, while platforms can benefit from premium storytelling, which really is the strength of traditional Hollywood studios.
Tara: That’s exactly right, Scott. I have really been thinking about that for quite a while. This report notes that 56% of younger generations watch TV shows or movies on streaming services hearing about them from creators online. Marketing efforts really should start to lean in to these social platforms.
Scott: I think there’s also a distribution play there, too. I think traditional Hollywood or independent Hollywood, maybe some of the smaller, more independent studios, could be looking at and should be looking at and thinking about multi-platform deals. Because now more than ever, you really need to squeeze every dollar out of it. Your content. I think just committing to one single platform might not really be the answer. I found it interesting that the report challenges the fear that short-form content doesn’t work for premium IP. Studios could get creative and publish the social platforms, as I said, through a multi-platform approach, using social videos not only to help promote their TVs and movies, but also maybe to distribute original short-form content.
Tara: There’s also an opportunity to work with content creators. Those content creators can be powerful advocates for studio content, help engage audiences with greater authenticity, and help with the potential to unlock virality.
Scott: Right. In essence, traditional Hollywood needs to adapt by embracing technology, considering consolidation, and engaging with rather than just competing against social platforms. It’s about finding new models that work in this changing landscape shape. But what’s in it for the media creators? What’s in it for your traditional YouTube creators? Let’s talk about the opportunities that exist for them looking to grow their business in this environment.
Tara: For creators, I think this report really contains some positive news. The influence of creators is growing, especially with younger audiences. According to the report, about 50% of Gen Z and millennials say they feel stronger personal connection to social media creators than to TV personalities and actors.
Scott: I think when you say the influence of creators is growing, I think we just need to look back at a couple of the big deals over the last couple of months. Miss Rachel, Mr. Beast, Dude Perfect. They are the next studios, and their influence is really growing. And these creators are now seen as legitimate entertainment competitors to traditional media. The report notes that for younger generations, especially, trending social videos are often like the new hit TV show, and creators are the new stars.
Tara: That right there creates several growth opportunities. First, there’s the potential to cross over into traditional media. Some Some creators have made the leap to network television, streaming platforms, films, and this really secures lucrative contacts for them but also grows their audiences.
Scott: Though, interestingly, the report found mixed responses to this. While 29% of consumers say they’d be more willing to watch TV shows or movies starring their favorite creators, 30% feel creators lose their authenticity when featured on TV. But it’s interesting. I didn’t see any I think part of that report that talked about when that content creator’s own show that’s on YouTube is also available on a streaming service or a fast channel, what that impact is. Because I think that’s probably correct. When you take the creator out of the environment in which they’re known to the viewer, it’s not authentic any longer.
Tara: Yeah, I think that’s right. I think that the production methods and what is entailed with making longer form content is also different. That may be where the viewer perceives that as a loss of authenticity, but it’s really just what’s needed in order to produce the content at hand. But in any event, this all suggests that creators really need to be careful about how they approach these crossover opportunities and really think about maintaining their authenticity. That seems really important.
Scott: There may also be a business need to expand beyond that single platform that they have become associated with. With YouTube always rejiggering its algorithm, and this always seems to result in the devaluing of library content, it may be economically necessary to repackage older content into newer long-form episodes and seek out licensing opportunities with SVOD or AVOD platforms or explore the benefit of launching a branded fast channel. The report also highlights the growing role of AI tools for creators. Social platforms are extending generative AI tools to help creators run their businesses, create content, target audience and advertisers, and match with brand sponsors.
Tara: Yeah, so all of this AI technology really creates opportunities for creators to scale their opportunities and grow their businesses more efficiently.
Scott: Brand partnerships are another significant opportunity, and it’s the lifeblood for a lot of creators. Creators offer credibility and authenticity to brands and advertisers who may be trying to reach millions of followers. The report notes that younger generations are much more likely to say that ads or product reviews on social media influence their purchasing decisions. Specifically, the report found that Gen Z and millennials, so 63% of Gen Z and 49% of millennials, are more likely to say that ads or product reviews on social media are most influential to their purchasing decisions. That’s really quite stunning, and I think quite a boost for our partner, Jessica Marlo, who basically runs creator brand integration business for the firm. Also interesting is the impact social media has on TV viewership. A significant percentage of younger generations, so 56% of Gen Z and 43% of millennials, watch TV shows or movies based on recommendations from social media. And by the way, I think we were all talking about this in a department meeting last week, the traditional movie and television industry has done a really bad job of engaging in social media advertising and using creators to advertise the content.
Really, social media should be a central part of TV and movie marketing strategies targeting these demographics. If it works for cosmetics and other goods, it’s going to work for movies and television.
Tara: Well, and I think we saw an example of that with the Barbenheimer explosion on social media, which by all accounts, was really to social media and was not planted or instigated at all by the distributors behind those films. I think that that’s a perfect example, and I totally agree with you and with the report in that regard, Scott.
Scott: The report also suggests that there’s value in cross-platform presence. We just talked about that a little bit earlier here. Creators who establish themselves across multiple platforms can build more resilient businesses and reach different audience segments. By the way, as we’ve always said, it’s always a risk to rely on a single platform because that platform can change its algorithm as it’s entitled to, and that can have a devastating economic impact on your business. If you are just on a single platform.
Tara: Finally, I think there’s an opportunity for creators to leverage their personal connection with audiences. That parasocial relationship, as the report calls it, drives engagement and keeps people coming back. Creators who cultivate those connections can really effectively build a sustainable business.
Scott: Let’s wrap up with some final thoughts. The report clearly shows it The media landscape in transition with social platforms gaining ground at the expense of traditional media distribution. Both Hollywood studios and individual creators need to adapt to this new reality. I think the creators are more apt to to adapt quicker and take advantage of this changing landscape.
Tara: I definitely agree with that. Another key takeaway is that neither traditional Hollywood nor social media creators can stand still. For Hollywood, it means rethinking business models, embracing technology, and finding ways to engage with rather than just compete against social platforms.
Scott: For creators, it means leveraging their authenticity and personal connections with audiences while exploring new revenue and potentially even crossing over into traditional media.
Tara: Yeah, the media landscape is being reshaped. Those who adapt most efficiently will be the ones who thrive. It’s a well-tested and long-running concept that we all know a lot about.
Scott: You’re right. Adapt or die. Well, a little grim, but that’s it for today’s episode of The Briefing. Thanks, Tara, for joining me today. Thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
Can HBO be sued over a T-shirt? Scott Hervey and Tara Sattler unpack Duke University’s beef with ‘White Lotus’ after a character wore a Duke tee on screen. Does this cross the legal line—or is it just creative expression? They’re talking trademark, the Rogers test, and what it all means for studios on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:
Scott: In a recent episode, Timothy Ratliff is grappling with possible criminal liability for his involvement in a money laundering scheme. He thinks about taking his own life in a graphic scene where he holds a gun to his head while wearing a Duke University T-shirt. HBO didn’t get permission from Duke, and Duke publicly expressed its displeasure with the situation in a statement with the New York Times. I’m Scott Hervey, a partner with the law firm Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We are going to break down the potential of Duke’s trademark lawsuit against HBO on this installment of The Briefing. Tara, welcome back to The Briefing.
Tara: Thanks for having me here, Scott. I do love the White Lotus series, so let’s talk about this one.
Scott: Yeah, I love the White Lotus series, too. But this is something you and I deal with a lot in our representation of television studios and production companies. I think this one is really relevant for you and me and also relevant for a lot of our audience. Okay, jumping in. Duke really is not happy about the situation. I’m really not happy. Duke’s vice president for communications shared a statement with the New York Times, which stated as follows, Duke appreciates artistic expression and creative storytelling, but characters wearing apparel bearing Duke’s federally-registered trademarks create confusion and mistakenly suggests an endorsement or affiliation where none exists. He wrote that in an email. He also said, White Lotus not only uses our brand without permission, but in our view, uses it on imagery that is troubling, does not reflect our values or who we are and simply goes too far.
Tara: Like you said, Duke really isn’t happy happy at all. But let’s break down whether Duke really has any type of case against HBO besides just being unhappy. The shirt that was worn by the character had the name Duke on it, but it didn’t have any design elements, logos, anything like that. We’re really only talking about a trademark claim.
Scott: Right. Yeah, it’s not a copyright claim. Okay, with it being just a trademark claim, what do you think? Does Duke have a case?
Tara: No, I really don’t think that they do. As much as Duke may dislike the use of its T-shirt, all the things that the representative said, this is really exactly the situation that the Rogers test is meant to address.
Scott: For us. For those that listen to this podcast, know that we talk about the Rogers test a lot. The Rogers test comes from a 1989 Second Circuit case, Rogers versus Grimaldi. It essentially creates a special framework for analyzing trademark claims when they involve expressive works protected by the First Amendment. Under the traditional Rogers test, the Lanamack doesn’t apply to an expressive works use of a trademark unless that use has no artistic relevance to the underlying work or explicitly misleads consumers about the source or content of the work.
Tara: That Rogers test went through a pretty significant change in 2023. We’ve talked about this a lot, too. Then the Supreme Court decided the case Jack Daniels Properties versus VIP Products. That case involved a dog toy called Bad Spaniels that parodied a Jack Daniels whiskey bottle. The court there significantly clarified when the Rogers test should apply.
Scott: Yeah, the key distinction the Supreme Court made was that the Rogers test doesn’t apply when a mark is used as a source identifier, regardless of whether it is also used to perform some expressive function.
Tara: In other words, a third-party trademark is being used to identify the source of a product to tell consumers who made it, then the Rogers test doesn’t apply, and traditional trademark infringement analysis should be used. But if the third-party trademark is being used as part of an expressive work and not to identify who made the work, then the Rogers test does apply.
Scott: I agree with you, Tara, that the Rogers test would apply since HBO wasn’t using the Duke Mark as a source identifier for the series. It just used it on a character’s wardrobe. It’s part of the creative, not a designation of who made the show. With Rogers being applicable, the first question is whether the use of Duke has any artistic relevance to the work. Then we’ll have to look at whether that use explicitly misleads consumers about the source of the content.
Tara: For the first prong about whether Duke has any artistic relevance to the work. The Ninth Circuit has a very low bar. The artistic relevance just needs to exceed zero. The Timothy Ratliff character is a financier from Durham. Duke is located in Durham, North Carolina. Clearly, HBO was using the brand of T-shirt to establish at a minimum that Ratliff was from Durham.
Scott: Right. Duke claimed that HBO’s use creates confusion and mistakenly suggests an endorsement or affiliation where none exist. The second prong of Rogers is supposed to look at whether the use is expressly misleading. Tara, what do you think?
Tara: I really don’t think it’s misleading. I can’t see this use explicitly leading consumers to think that Duke was involved with the series or endorsed the series in any way because it’s one character wearing one shirt from a prominent university, from a town that he’s from. It all ties back to that one character. Anybody watching the show, it’s pretty clear that the entire show and the entire series doesn’t really have any other affiliation or otherwise seem to be endorsed by Duke, really, at all.
Scott: Right. Going back to the creative relevance of the use, I think it also went towards not only just establishing where this guy was from, but also his prominence as a financier. He’s supposed to be a prominent, upstanding member of the community, a pillar of the financial community, a pillar of the financier community, yet he’s under criminal investigation for money laundering. I think that the use of Duke as a reflective of being a top-tier university, I think it was used for that very purpose. There’s been a lot of banter about this. This has gotten a lot of traction and a lot of talk in our industry. Thankfully, or not thankfully, most of the talking heads who have talked about this have come out with the same analysis that we have that Duke may be upset, but they don’t really have a case. I think that’s also necessary for the type of work that you and I do and the type of work that our clients do, right?
Tara: Yeah, I agree. That’s often part of the analysis is Where is the differentiation between somebody being upset that their mark or product, et cetera, has been used and where that use would actually cross the line into giving rise to a where the other party would prevail over the production. We talk about that a lot.
Scott: It’s important and necessary for our clients to create a realistic environment, an environment that its viewers can relate to. If you have to fake brands for every single thing, that environment becomes unrelatable. Then it doesn’t. Consumers, viewers, won’t really buy into it. Thank you, Roger’s test. Thank you, Second Circuit and Ninth Circuit. I guess that’s it. I don’t think there’ll be a case. I don’t think, unlike Pepperdine, which filed their lawsuit. I don’t think Duke is going to file a lawsuit here, but stranger things have happened, so we’ll see, right?
Tara: Yeah, we’ll see.
Scott: Well, that’s it for today’s episode of The Briefing. Thank you, Tara, for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Is ‘The Pit’ a spinoff, sequel, or something else entirely? Scott Hervey and Tara Sattler break down the lawsuit over ‘ER’ and whether ‘The Pit’ crosses the legal line into derivative territory on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:A legal battle is in full swing over the hit medical drama, ER and the Pit, a new medical drama set in Pittsburgh. The agreement between the creator of ER, Michael Crichton and WB, says that any sequels, remakes, spinoffs, and/or other derivative works require the approval of Crichton, Amblin, and Warner Brothers. So, is the Pit any of those things? I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We are going We’re going to discuss ER versus the Pit. What is the Pit? On this installment of The Briefing. Tara, welcome back.
Tara:Hi, Scott. I’m happy to be here, especially talking about this topic. I really love all these medical traumas and was a big fan of ER back then, so this is going to be a fun one.
Scott:Right. Did you do your homework this weekend?
Tara:I did.
Scott:Yeah, I did, too. I think Binge about five episodes of The Pit.
Tara:And I liked it.
Scott:Yeah, it was good.
Tara:It was easy to do.
Scott:I got to say, I Before we get into it, I am amazed at how the actors really sell themselves as doctors. I’m not a doctor, so probably maybe when a doctor is watching this, they probably look at it and go, They did that all wrong. We do when we watch legal traumas and we’re like, This is wrong, all wrong. But from a layman, non-doctor, it looks quite, quite impressive.
Tara:I agree.
Scott:Well, so we previously reported in an episode where we broke down the initial skirmish between Crichton and W. B. And how Sherry Crichton survived Warner Brothers’ attempt to shut down the lawsuit, her lawsuit, against Warner Brothers with an anti-slap Today, we are going to look at what will likely be next for Sherry Crichton, and that is establishing that the pit is some type of derivative of E. R. The 1994 agreement between Michael Crichton and Warner Brothers regarding the hit series E. R. Specifically freezes any subsequent productions. The exact wording used in the 1994 agreement is as follows, Any and all sequels, remakes, spin in-offs and/or derivative works shall be frozen, with mutual agreement between Creighton, Amblin, and Warner Brothers being necessary in order to move forward in any of these categories.
Tara:That’s really the crux of Creighton’s case against Warner Brothers. What exactly is the Pit?
Scott:Right. Let’s go through that part of the 1994 agreement, and let’s start with the question of whether the Pit is a sequel of E. R. I think the place to look at for the definition of sequel is probably the Writers Guild of America Minimum Basic Agreement. Under the WGA, a sequel, at least pursuant to the WGA MBA, it’s defined as a film or a picture where the principal character of the original film or picture participate in a new and different story.
Tara:On Noah Wiley played Dr. John Carter, and on the Pit, Noah Wiley plays Dr. Michael Robbie Rabinovitch. Are those characters essentially the same, or is Robbie really John Carter, 15 years later?
Scott:Yeah, that’s a tough one. On the surface, it seems that the answer is going to be no, because the two characters, they have different names. We don’t really know too much Dr. Robbie’s backstory yet. We know a little, but we don’t know five episodes in. We don’t really know a whole heck of a lot. But I don’t think it’s going to be that simple of an inquiry?
Tara:Probably not, but I do think it’s safe to say that the Pit isn’t a remake of ER. Again, going back to the WGA, for definitions, a remake is substantially similar to a prior motion picture or television program regarding principal characters, setting, plot, storyline, tone, events, and structure.
Scott:Right. Yeah. It’s very true looking at that. The Pit is not a remake of ER at all. But is the Pit a spinoff? As you know, there’s two types of spinoffs. We have a generic spinoff and a planted spinoff.
Tara:Right. A planted spinoff is commonly understood to be a new series in which the main or characters of the new series are not regular characters in the first series, but is someone who’s introduced in the original series for the specific purpose of creating a new series with that character. An example is Melrose Place, which is this planned spin off of Beverly Hills 90210, as the characters in the new series, Melrose Place, were introduced in the original series, specifically to spin off into the new series.
Scott:Yeah, I’m going to thank the WGA/MBA specifically for that example, but I will say that they probably need to update it because I bet you a lot of our listeners and viewers are like, What’s Melrose Place? What’s Beverly Hills 90210? All right. A generic spinoff is commonly understood to be a new series using continuing characters from the first series. I’m going to give you an example. Thankfully, these shows are They’re still being broadcast, mostly on fast channels now, but they’re still out there. For example, Fraser is a generic spinoff of Cheers as the character of Frasher was a regular character on the earlier series. If the Pit was going to be anything, it would be a generic spinoff. The argument here would be that the character Noah Wiley plays on the Pit, so Dr. Ravi Rabinovitch, is Dr. John Carter, 15 years later. I guess the problem is, though, he’s not called John Carter on the Pit. He’s called Ravi Ravinovitch.
Tara:I think that’s a big problem. I think that’s a big problem with that argument. Another thing to look at is whether the fit is some other derivative work. Let’s look to the Copyright Act there to define derivative works. The Copyright Act says a derivative work is a work based upon one or more pre-existing works such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or other form of work which may be reactive, transformed, or adapted. That’s a lot of examples, but I think that is helpful in our analysis.
Scott:Yeah, I don’t know. I think that’s more words than helpfulness. I think it might be more helpful for us to look at it this way. One way to figure out if a work is a derivative is to ask, if the second work was made without permission, would it be an infringement? Because a derivative is basically a work that would be infringing of the original copyright, except that you have permission to make it from the original copyright holder. I think that’s the easier way to look at it.
Tara:That’s a lot more It’s accessible. Let’s do that.
Scott:Yeah. Let’s look at the PIT and ER through that framework. Would the PIT be a copyright infringement of the ER? In order to state a claim for infringement, a plaintiff must show substantial similarity between the work’s protected elements. Now, determining whether works are substantially similar involves a two-part analysis consisting of the The extrinsic test and the intrinsic test. The extrinsic test assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, whereas the intrinsic test examines an ordinary person’s subjective impression. Although a plaintiff must prove both to establish substantial similarity, a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury.
Tara:To apply the extrinsic test, you need to first filter out elements that are not protected under copyright law. These are things like facts, ideas, then there’s a fair, which are situations and incidents that naturally and necessarily flow from a certain plot, and other stock elements. Then make a determination after filtering out certain elements that are not protected, whether the two works are or are not substantially similar.
Scott:Right. So I spent my weekend doing my homework, as did you, and watched a number of episodes of The Pit. Look, obviously, there are similarities between The Pit and ER. Both are medical traumas. Both take place at a teaching hospital, and both are set in the emergency room. Both have Noah Wiley as a star, and they also have the same writer, Scott Gramell, who was a writer. I hope I’m pronouncing his last name correctly. He was a writer on ER. He created The Pit. They also have John Wells, the showrunner and executive producer of ER. He was also an executive producer on The Pit.
Tara:But there are also some big differences. The Pit utilizes a real-time format, meaning the show unfolds in real-time, like the show 24 with Kiefer Sutherland, and unlike the more episodic structure of ER. The Pit also focuses on what it’s like working in a post-COVID healthcare setting, an exploration into the complexities of the healthcare system and the bureaucracy of working in a hospital.
Scott:Right. So let’s subtract the unprotectible elements. The basic concept of a medical drama set in an ER, that is a unprotectible element. Let’s also take away the basic concept of a show set in a teaching hospital.
Tara:Yeah, and there are also other medical shows set in a teaching hospital. In fact, a lot of hospitals are teaching hospitals.
Scott:Right, that’s right. According to a very quick Google search, there were a lot. Grey’s Anatomy, Scrubs, The Good Doctor, House, The Resident, New Amsterdam, Saint elsewhere, Code Black, and private practice. A lot more than I thought.
Tara:Yeah, and I can think of some that even aren’t on that list. Let’s take those things away and analyze What’s similar?
Scott:Not a lot, right? I think not a lot. That’s what the argument is going to look like, and that’s what it’s going to come down to. I’m sure both sides will come up with lists of differences and similarities, but having just spent the weekend binging five or six episodes of the pit, I really don’t see much crossover other than the unprotectible elements that we talked about above here.
Tara:I agree with you, Scott. I think another thing that the court is going to have to think about is what precedent would they be setting if they do deem the pit to be some derivative work of ER because we have a lot of medical traumas, we have a lot of legal traumas, there’s a lot of emergency crew type traumas. What would we do to the landscape of television if we’re taking something like medical drama and starting to really muddy those waters.
Scott:Right. I mean, look, the Pit really could have been a prequel to ER. I mean, if this was John Carter, and if it were in Boston, and if it were the same ER, but just the same settings, was post-COVID, the hospital had gone through a M&A, and maybe it was more corporate, and dealing with the economic pressures, okay, then it definitely would have been a prequel. Not a prequel, sorry, a sequel. But also you can take those elements. It’s a teaching hospital, it’s ER. You’re dealing with a very stressed-out doctor, figuring how to navigate health care delivery post-COVID, dealing with private care and private pay, and and all of the consolidation in the health care industry and the lack of economic resources, you can make that a new television show, I think. I think so.
Tara:I think so, too. And just because there’s a lot of the same people involved, part of the reason that I’m sure they’re involved is because they’re familiar with how to run a successful medical drama show. That doesn’t mean that it’s necessarily infringing or derivative. Right.
Scott:I agree with you. Well, look, let’s see what happens with the Sherry, Kreight, and Warner Brothers case. It will be interesting. We will definitely keep an eye on that case because that impacts a lot of what you and I do.
Tara:Absolutely.
Scott:Well, that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, or if you disagree with us, please leave us a comment.
The estate of ‘ER’ creator Michael Crichton is suing Warner Brothers, claiming their new medical drama ‘The Pit’ is a derivative of ‘ER.’ IP and Entertainment attorneys Scott Hervey and Jessica Corpuz discuss this case on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Scott: A legal battle is unfolding over the hit medical drama, ‘The Pit,’ which the estate of Michael Crichton claims is the unauthorized successor to ER. The estate, represented by a roadrunner, JMTC LLC, has sued Warner Brothers television over The Pit, a new medical drama set in Pittsburgh. Warner Brothers attempted to shut down the lawsuit by using California’s anti-slap statute, arguing that the case threatened their free speech rights, but the court didn’t bite. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpuz.
We are going to talk about the court’s decision to deny Warner Brothers’ anti-slap motion and what this means for contract rights in the entertainment industry on today’s installment of The Briefing. Jessica, welcome back to The I’m glad we could get my people to call your people and get you booked again.
Jessica: Thanks so much for having me, Scott.
Scott: Thanks. Well, why don’t we jump right into this?
Jessica: Thanks, Scott. So today we’re unpacking a high-profile case in the entertainment world, Road Runner: JMTC/LLC versus Warner Brothers Television, which involves the estate of legendary author and screenwriter Michael Crichton, the long-running medical drama, ER, and a new TV show called The Pit.
Scott: That’s right. This case revolves around claims of breach of contract, interference with contractual relations, and whether the pit is a derivative of ER. Warner Brothers attempted to shut down the lawsuit with an anti-slap motion under California law, but the court denied it. So let’s break it down, starting with some background on the parties.
Jessica: So Michael Crichton, of course, is best known for Jurassic Park, but he also co-created ER, the wildly successful medical drama that ran for 15 seasons. After his passing, Crichton’s widow, Sherry Crichton, on behalf of his estate, represented in the dispute that we’re talking about today by Roadrunner J. M. T. C. Lllc, has been involved in legal efforts to protect his contractual rights as the creator of ER. Warner Brothers television, on the other hand, is a dominant force in TV production, and they’re behind The Pit, a new medical drama set in Pittsburgh. The estate argues that the Pit is a derivative work of ER, and that Warner Brothers breached the 1994 agreement between Crichton Warner Brothers, concerning the ER pilot and the series.
Scott: That’s right. The 1994 agreement between Crichton and Warner Brothers specifically freezes any subsequent productions. The exact wording used in the 1994 agreement is as follows, Any and all sequels, remakes, spinoffs, and/or other derivative works shall be frozen, with mutual agreement between Crichton, Amblin, and Warner Brothers being necessary in order to move forward in any of these categories.
Jessica: Okay, so that’s the contract. But let’s talk a little bit about the facts surrounding the party’s discussions about the pit, since those facts play a really big role in this outcome we’re talking about today.
Scott: Yeah, you’re right. They really do. So the complaint says that around Thanksgiving 2022, Sherry Crichton got a call from John Wells. Wells was one of the producers of ER, who purportedly told Sherry that there was going to be a big press release on deadline within days announcing an ER reboot, starring Noah Wiley, and that Wells would be producing it with Warner Brothers television for the HBO Max streaming service. According to the complaint, Warner Brothers made an offer, Crichton made a counter offer, and that included a guaranteed created by credit for Michael Crichton. The complaint alleges that Warner Brothers basically said that Crichton’s estate would have to basically take it or leave it, that there would be no improvements upon the offer that was made. So Crichton told Warner Brothers that they were going to leave it and that they were not going to grant permission for the pit.
Jessica: So supposedly after this, Noah Wiley contacted Sherry in an attempt to find some way to move the project forward. The complaint includes an excerpt from an email that she sent to Wiley. It’s a very long email, but a portion of it says, and I’m quoting here, I deeply appreciate your classy note to me today, and also for your efforts to find a bridge between the parties that would allow for the series to go forward. The idea of you returning in your signature role as Carter, which, as you know, was based on Michael’s own life, with John as the showrunner, is exciting and filled with tremendous potential. But ultimately, all of this rests with Warner Brothers. If Warner Brothers wants to reengage a fair and appropriate negotiation for a series as successful as ER and treat us respectfully through the process, my representatives stand ready to talk.
Scott: Right. After that, there continued to be some negotiations with Welles, and Wiley, taking the lead. They, Welles, Wiley, and Sherry, seemed to reach terms acceptable to Sherry, and this included a commitment to support a created by credit for Michael Crichton before the WGA and a $5 million guarantee in the event the WGA did not accord Crichton, the created by credit. However, it seems that, at least according to the complaint, once Warner Brothers came back into the picture, those two essential deal terms went away, and Warner Brothers then claimed, after they couldn’t come to an agreement, that the project was dead.
Jessica: Well, was it really, though? So according to the complaint, the project wasn’t dead at all. The complaint states that shortly after Warner Brothers claimed that the ER Reboot was dead, the Pit was announced. It has the same producers, the same star, and is on the same network as the project proposed to Sherry Crichton. The main difference, according to the complaint, is that the Pit is set in Pittsburgh rather than Chicago. Go.
Scott: Right. In a press release, the Crichton team says that changing the show’s name does not change the fact that The Pit, which has exactly the same premise, structure, themes, pace, producers, and star, is ER through and through. Warner Brothers countered with its own press release, which called the suit Baseless, and claimed that the Pit is a new and original show.
Jessica: So we know that Sherry Crichton sued Warner Brothers and others for breach of contract. Warner Brothers moved to dismiss the lawsuit under California’s anti-SLAP statute, and SLAP stands for a strategic lawsuit against public participation. The court heard oral arguments on the motion, which I bet were probably as dramatic as the first episode of The Pit.
Scott: Yeah, I bet you they were. So, okay, this brings us to the legal issues at play, the anti-slap motion. California’s anti-slap statute under California Code of Civil Procedure, Section 425. 16, is It’s designed to prevent lawsuits that aim to silence free speech, particularly in matters of public interest. It’s a two-step process. First, the defendant, Warner Brothers, in this case, must show that the claims arise from protected activity like free speech or petitioning. If the defendant succeeds, the burden then shifts to the plaintiff, so Crichton’s estate in this case, to show that they have a probability of prevailing on the merits of the claim.
Jessica: Yeah, that’s exactly right. Here, Warner Brothers argued that producing the pit is a protected form of speech. Here, the court agreed that creating a television show qualifies as free speech, meaning that Warner Brothers met the first prong of the anti-slap analysis. However, the estate, the plaintiff, countered that their claims really weren’t about protected activity, a public discussion of the challenges in urban medicine, but rather a breach of contract, specifically a violation of the frozen rights provision from a previous agreement regarding in the ER.
Scott: Right. That was a really interesting attempt to try to parse that claim and take it out of the scope of California’s anti-slap statute. But ultimately, the court agreed with Warner Brothers and cited the case, Newman versus Ross, a case about a writer who sued a producer and others, alleging that they stole her idea for a television show and used it for a spinoff series. The Norman Court found that the breach of contract and the intentional interference with contract claims that issues in the matter were both premised on the protected activity of making the television show.
Jessica: Yeah. So because Warner Brothers prevailed on the first prong, the court then went to the second prong. Could Crichton show a probability of prevailing And this is where Warner Brothers lost its argument.
Scott: That’s right. The court found that Crichton had submitted enough evidence to meet the minimal merit standards to show that a prima facia case, that the pit was derived from ER and that Warner Brothers could have violated their prior contractual obligations.
Jessica: Yeah. This is a great illustration of how anti-slap motions aren’t a silver bullet. They’re meant to stop frivolous lawsuits that stifle free speech, but they can’t be used to escape legitimate breach of contract claims. But what if things were a little bit different? What about an alternative scenario where the parties had previously negotiated over an ER reboot? What do you think?
Scott: Yeah, that’s an interesting hypothetical. If there had There had been no prior discussion between the Crichton estate and Warner Brothers. I think Crichton’s case would have been much weaker. The estate’s argument hinges really on the prior negotiations between the parties, the crossovers between the proposed reboot of ER and the pit, and the relatively short period of time between Warner Brothers telling Crichton that ER reboot was dead, and the announcement of the pit. I mean, those facts just don’t look good for Warner Brothers. Warner Brothers could have more easily defended the pit as an entirely new and independent work rather than something derived from ER, had there never been a discussion with Sherry Crichton. At least that’s what I think.
Jessica: I agree completely. So the initial framing of the project by Wells and Wiley as an ER reboot and the history of negotiations between Warner Brothers, Wells, and Wiley played a huge role in this case in allowing it to survive the anti-slap stage. It’ll be really interesting to see how this plays out moving forward.
Scott: Yeah, absolutely. I think that’s where we’re going to have to leave it for today and see what happens next. So thanks, Jessica, for joining me today. And thank you, the viewer, for tuning in to the briefing. Don’t forget to subscribe and to follow us for more deep dives into the legal side of the entertainment industry. If you enjoyed this episode, please leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
In this installment of The Briefing, Scott Hervey & Jessica Corpuz cover the landmark defamation case Copeland v. Netflix—dissecting the high bar for public figures to prove defamation and the critical concept of “actual malice.” From the Surviving R. Kelly documentary to First Amendment protections, they unpack the legal complexities surrounding public figures and media reporting.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott: Surviving R. Kelly was a Netflix documentary series that delved into the extensive allegations of sexual abuse, misconduct, and predatory behavior leveled against the R&B singer R. Kelly. Diana Copeland, Kelly’s former personal assistant, claims she was falsely portrayed in the documentary as being essentially a co-conspirator in Kelly’s alleged sex crimes. Copeland sued Netflix and the producers of the documentary, Lifetime and A&E for defamation. There was a recent decision in Copeland versus Netflix, one that emphasized the stringent First Amendment protections for media when reporting on a public figure. How high is the bar for a public figure to prove defamation against the media outlet? And what does the legal concept of actual malice truly entail in such case? I’m Scott Herbie, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpus. Stay tuned as we dissect this significant decision and its implications for producers of programming of this type on this installment of the briefing. Jessica, welcome back. It’s good to have you.
Jessica: Thanks so much for having me, Scott.
Scott: This one, I think, is going to be quite interesting. I always like defamation cases because there’s always a lot to unpack.
Jessica: Oh, they’re very exciting cases. We get this question a lot, and having to educate people about the standard of defamation happens all the time in our world, so it’s good to talk about it.
Scott: Yeah, and more and more, you’re seeing defamation claims come out of not just documentaries, but scripted, essentially, fictional docudramas. But today, we’re looking at the R. Kelly documentary. And this is the recent decision in Diana Copeland versus Netflix. And it comes out of the United States district Court for the district of Delaware. That’s a district we don’t hear from very often, but we’re hearing from them today.
Jessica: So this decision comes as a result of Netflix’s motion to dismiss. A motion to dismiss in federal court is called a Rule 12(b)(6) motion, and it’s where a defendant moves to dismiss the complaint because the plaintiff has failed to state a claim upon which relief can be granted. In other words, the defendant is arguing that even if everything that the plaintiff claims is true, those claims still don’t provide a legal basis for the court to grant them any relief.
Scott: Well said. So this case centers on a lawsuit brought by Diana Copeland, who was the personal assistant for the singer R. Kelly. Following R. Kelly’s arrest and charges relating to sexual abuse, Lifetime Entertainment produced a documentary series called Surviving R. Kelly. Copeland did not participate in the documentary. However, she alleges that an episode contained several false and defamatory statements about her, portraying her as a co-conspirator in Kelly’s crimes. She subsequently sued Netflix, which distributed the series, along with its producers Lifetime and A&E, for defamation.
Jessica: Those defendants moved to dismiss Copeland’s claims. Netflix based its motion on the following arguments. First, that the fair report privilege protects the statements. Second, that the statements are non-actionable opinions based on disclosed facts. And three, that Copeland is a public figure and that she failed to plea that defendants published the statements with actual malice.
Scott: That’s right. Now, the court said it didn’t need to address the first two arguments advanced by Netflix because Copeland failed to meet the actual malice standard.
Jessica: So just a little bit of history here behind the actual malice standard might be good.
Scott: Yeah. No, I agree. Why don’t you go for it?
Jessica: So the actual malice standard in defamation law originates from the landmark Supreme Court case of New York Times versus Sullivan. That case established that the First Amendment protects even defamatory speech against public figures, as long as the speech was not made with, quote, actual malice. To establish actual malice, a plaintiff must show that a defendant either knew that the statements were false or acted with reckless disregard for whether or not they were true. This standard provides a significant shield for publishers when reporting on public figures involved in matters of public controversy.
Scott: Right. And in cases like this, cases where the claim is based on the portrayal of an individual in a documentary or a docudrama, we have seen the court focus on whether the producers deliberately portrayed the plaintiff in the hopes of insinuating a defamatory import to the viewer or whether the producers knew or acted in reckless disregard as to whether the portrayal would be interpreted by the average viewer as a defamatory statement of fact.
Jessica: Now, this requirement of establishing actual malice only applies to defamatory statements against public figures. Here, Copeland was Kelly’s personal assistant, hardly a position that one generally considers to be a public figure. So let’s talk a little bit about how and why the court found Copeland to be a public figure in this case.
Scott: Sure. So for the purposes of establishing actual malice, there are essentially two types of public figures. The first one is the general purpose public figure, an actor, a movie star, a well-known politician, someone that has achieved widespread fame or notoriety, meaning that their name and actions are matters of legitimate public interest wherever they go and whatever they do. The other is a limited purpose public figure, and that’s someone who voluntarily thrust themselves into the vortex of an existing public controversy or engages the public’s attention in an attempt to influence its outcome.
Jessica: In order to determine whether someone is a limited purpose public figure, courts usually ask whether the alleged defamation involves a public controversy, and if so, how involved the plaintiff is in that controversy.
Scott: Right. So here the court determined that Copeland was a limited purpose public figure. To reach that conclusion, the court applied that to test whether the alleged defamation involves a public controversy, and if so, how involved was the plaintiff in that controversy? So the court found that the allegations against Art Kelly involved sex crimes and child abuse, and those were undoubtedly a public controversy.
Jessica: Yeah, that seems very clear in this case, given the serious nature of those charges and the extensive public attention.
Scott: Right. And then the court examined Copeland’s involvement. Despite initially declining to participate in the surviving R. Kelly documentary, she later gave a brief interview on Good Morning, America about her experiences with R. Kelly. In this interview, she discussed making travel arrangements for R. Kelly’s girlfriend and her observations about their behavior. The court reasoned that by voluntarily going on national television to discuss R. Kelly, Copeland voluntarily injected herself into the public discourse surrounding this controversy and invited public attention, comment, and criticism.
Jessica: So in other words, her own decision to speak publicly on the matter played a key role in the court’s determination that she was a public figure for the limited purpose of this controversy.
Scott: Precisely right. Once the court classified Copeland as a limited purpose public figure, the legal standard required her to plausibly plea that the defendants acted with actual malice. This means she had to demonstrate that Netflix either knew the statements in the documentary were false or acted with reckless disregard as to whether they were true or false.
Jessica: So the court here provides some good guidance on how to make allegations of actual malice. The court says that actual malice focuses on the publisher’s mental state. While a plaintiff can sufficiently plea actual malice through using circumstantial evidence, it must be enough for the court to draw the reasonable inference that each of the defendants knew the actionable statements were false or that they had acted with reckless disregard as to whether or not they were true.
Scott: That’s right. And the court found that Copeland failed to plausibly plea actual malice. While Copeland alleged that the defendants were reckless, deliberate, and malicious, and that they had access to the truth, yet chose to ignore it, the court considered these allegations to be conclusory and unsupported by sufficient factual detail.
Jessica: Copeland did include some specific factual allegations in her complaint. She argued that producing had a bad motive or vendetta against her because she chose to do Good Morning America instead of their documentary. She also alleged that the producers asked two former Kelly employees, who allegedly had personal vendettas against Copeland, to appear on the documentary and that the producers encouraged other former Kelly employees to say negative things about Copeland.
Scott: Right. And as to this, the court said that at most this just suggests a bad motive or ill will, but that’s not equivalent to actual malice. The focus of actual malice is the publisher’s state of mind regarding the truth of the statements, not their feelings toward the plaintiff, whether ill or positive.
Jessica: Yeah, this is a really important distinction. Even if the defendants harbored negative feelings towards Copeland, that wouldn’t satisfy the actual malice standard if they believe the statements that they published were true.
Scott: Right, right. The court further noted that Copeland provided no basis to infer that the defendants seriously doubted the veracity of their sources or the accuracy of the information presented in the documentary. She didn’t allege that the defendants knew their sources were unreliable or had any specific reason to distrust them.
Jessica: You know, it seems like the court is emphasizing significant protection the First Amendment affords to publishers when reporting on public figures involved in public controversies, and therefore requiring a really high bar to prove defamation.
Scott: Absolutely. So here the Court explicitly stated that the First Amendment shield publishers from lawsuits when they report inaccurately about public figures involved in public controversies, as long as they do so without actual malice. Now, some claim and argue that this protection aims to ensure a robust and open discussion of matters of public concern. Others believe that New York Times versus Sullivan is a bad case, and the requirement of establishing actual malice basically leads to poor reporting and a lack of follow-through on the part of reporters.
Jessica: Yeah, I absolutely agree. Here in this case, because Copeland did not plausibly please to actual malice, the court dismissed her defamation claim and her other related tort claims that relied on the same allegations, such as false light, invasion of privacy, and intentional and negligent inflection of emotional distress. The court also dismissed her claim for appropriation of her name and likeness. However, the complaint was dismissed without prejudice, meaning that Copeland has the option to refile her complaint if she can present more substantial factual allegations to support her claims.
Scott: Right. That’s a key point for Copeland. While this round didn’t go her the court has left open the possibility of a renewed legal effort with more concrete evidence.
Jessica: Absolutely. So what are the crucial takeaways from Copeland v. Netflix for our listeners?
Scott: Well, this case really highlights the heavy lift for public figures to win a defamation lawsuit against media entities. The actual malice standards has a very high legal threshold. Plaintiffs must demonstrate that the publisher had actual knowledge of the falsity or had a reckless disregard for the truth. Simple negligence or even ill will just won’t work.
Jessica: And the determination of public figure status is very fact-dependent. Voluntarily engaging in public discourse on a matter of public controversy can lead to being classified as a limited purpose public figure, even if that public engagement is limited.
Scott: Right. And finally, this case underscores the necessity for plaintiffs and defamation cases involving public figures to plea specific factual allegations of actual malice, rather than just stating legal conclusions. A plaintiff needs to provide details that suggests that the publisher had serious doubts about the truth of what they were publishing. This case serves as a reminder of the robust protections for free speech, or at least the high pleading requirements required, particularly when it comes to reporting on individuals involved in matters of public interest.
Jessica: It’s going to be really interesting to see if Copeland will file an admitted complaint here.
Scott: Yeah, it will be. We’ll keep an eye on this case and certainly report back. Jessica, thanks for joining me today.
Jessica: Thanks for having me.
Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Jessica for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.
A petition is calling for the Supreme Court to decide on the validity of the “discovery rule,” which allows copyright claims long after the alleged infringement. NBA teams like the Indiana Pacers and Denver Nuggets are even weighing in, worried that social media posts from years ago could be used as grounds for lawsuits. Scott Hervey and Tara Sattler dive into this game-changing copyright case in this installment of The Briefing.
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On the latest episode of The Briefing, Weintraub attorneys Scott Hervey and Jessica Corpuz break down the court’s decision in Pepperdine’s trademark fight with Netflix over the name “Waves” in the new series Running Point. Tune in for insights on this case and how the Jack Daniel’s ruling is reshaping trademark law in entertainment.
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Did you know the popular Stanley Travel Cup is tied to Stanley Black & Decker? A lawsuit is brewing over trademark rights and branding disputes. Is PMI overstepping, or is Stanley Black & Decker overreaching? Weintraub Tobin attorneys Scott Hervey and Tara Sattler discuss the legal battle over the iconic cup on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:ScottMost people who have spent any time in a Home Depot, a Lowe’s, or an Ace Hardware are well aware of Stanley Black & Decker Company. They’re a manufacturer of a wide variety of tools and equipment. Well, did you know that the very popular Stanley Travel Cup is manufactured in connection with an agreement with Stanley Black & Decker? Well, I didn’t know of this relationship. Well, it seems that that relationship is soured, and there’s some trouble brewing in that Stanley insulated Stanley Black & Decker, which has filed a lawsuit against the Cupmaker Pacific Market International for trademark infringement and breach of contract. I’m Scott Herbie, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. We’re going to talk about this case and some issues related to Stanley Black & Decker’s claims on this installment of the briefing. Tara, welcome back to the briefing.
Tara
Hi, Scott. Always great to be here.
Scott
Do you own a Stanley Cup?
Tara
I do. I have one sitting right here on my desk out of the screen.
Scott
I have one as well. Okay, so that’s why I picked this case for us to talk about because I think everybody has a Stanley Cup. Let’s set the stage here. Stanley, Black & Decker, let’s just refer to them as Stanley. They were founded way back in 1843 and built a solid reputation over nearly two centuries. They have a family of trademarks associated with Stanley, many of which have become incontestable.
Tara
Now, Pacific Market International’s predecessor, Aladdin Industries, started selling Stanley-branded insulated containers in 1913 when William Stanley Jr. Developed the revolutionary vacuum flask. The complaint alleges that beginning in 1966, Stanley and Aladdin entered into a series of agreements which sought to limit Aladdin’s use of the Stanley trademark.
Scott
These agreements, at least as it’s alleged in the complaint, restricted Aladdin and the company that bought Aladdin, Pacific Market International, we’ll just call them PMI, their use of Stanley to specific goods. Fast forward to 2012, the parties entered into another agreement to address PMIs, then allegedly non-use of Stanley, which exceeded the scope of the previous agreement. This new agreement, according to the complaint, again further limited PMI’s use of the mark to insulate food and beverage containers and placed requirements on how Aladdin and PMI could use the Stanley name in advertising and online.
Tara
Okay, so then what triggered Stanley to file a complaint?
Scott
Well, according to the complaint, PMI has been willfully and intentionally disregarding the 2012 agreement. Specifically, Stanley accused PMI of dropping PMI in its company name, that it changed its company name to just Stanley. Stanley also says PMI expanded its product offerings beyond food and beverage containers to include items such as apparel.
Tara
The 2012 Agreement expressly limits PMI’s use of Stanley solely to use as a trademark to promote and sell insulated and non-insulated containers for food or beverages and carrying cases for transporting the same.
Scott
Right, that’s what the complaint says. The complaint also accuses PMI of using the domain name www.stanley1913.com without prominently displaying PMI, and also failing to include PMI prominently in advertising materials and on products, including point-of-sale displays.
Tara
It sounds like Stanley Black & Decker is claiming PMI essentially tried to rebrand themselves as just Stanley in order to capitalize on the brand recognition.
Scott
Exactly. That’s what the complaint essentially says. That lines up with the allegations that PMI stopped, including PMI and its company name, and changed its name to Jess Stanley.
Tara
The complaint also goes on to say that PMI’s actions have caused negative press associating Stanley with things like lead poisoning and burn hazards and a recall of 2. 6 million travel months.
Scott
Right. Let’s break down the specific allegations. Stanley, Black & Decker is claiming that PMI breached the 2012 agreement by using Stanley as a company name, violated restrictions on advertising and product marketing, expanded product offerings beyond food and beverage containers, as was restricted in the 2012 agreement, failed to properly identify itself as PMI in advertising and in press releases, and use social media in a that infringes on Stanley’s trademark rights.
Tara
The legal claims brought by Stanley based on PMI’s actions are a breach of contract, alleging PMI violated the 2012 agreement, unfair competition, claiming PMI’s actions create confusion among consumers, trademark infringement, asserting PMI is using the Stanley trademark without authorization, or Connecticut Common Law claims. For trademark infringement, management, and unfair competition under state law in Connecticut.
Scott
Right. And this is the relief that Stanley is seeking. So, they want PMI to stop using Stanley in ways that violate the 2012 agreement or infringe on their trademarks. They want a court order for PMI to comply with the 2012 agreement. They want a court order requiring PMI to issue statements clarifying the relationship between the two companies. They want damages, including actual enhanced punitive damages, as well as attorney’s fees.
Tara
So then it seems pretty straightforward, doesn’t it?
Scott
It does, but we all know that disputes are never straightforward, and companies only present one side of the story. So, let me break it down. It appears that PMI actually owns a number of federally registered trademarks that incorporate Stanley. This includes the mark Stanley, and Stanley since 1913 with the winged bear logo for insulated food and and beverage containers, both of which have been registered since 2014 and 2020, respectively. Now, the complaint alleges that PMI breached the 2012 agreement by not using PMI on its products. PMI contends that Stanley is overreaching and trying to prevent PMI from using its registered and incontestable trademarks.
Tara
The complaint didn’t include a copy of the 2012 agreement, so it is tough to assess the breach of contract claims. But Scott, what are your thoughts on the trademark claims?
Scott
It’s interesting, right? Stanley owns a number of trademarks as well, but they’re all related to tools and building-type products. I didn’t see any trademarks covering goods that are related to food or beverage containers. And I don’t think that an insulated beverage container or a food container is related to hand tools or power tools. I don’t see Stanley’s trademark claim for those goods, for the insulated cups and the insulated food and beverage goods. However, Stanley does own a trademark for Stanley covering work clothing. PMI’s use of its mark Stanley for clothing could potentially be problematic.
Tara
In a press release, PMI said the companies have distinct market positions, customer segments, and marketing approaches. PMI claims it has grown Stanley into a global lifestyle brand with a focus on innovative food and beverage containers. In contrast, according to its annual report, Fouled the SEC, Stanley holds itself out as a global provider of hand tools, power tools, outdoor products, and related accessories. PMI claims the difference between these two companies and their brands is pretty stark.
Scott
Right. I guess PMI said that it will vigorously defend the suit. It’s yet to file an answer. This probably isn’t the last that we are going to hear about this dispute. PMI, the manufacturer of the Stanley insulated mugs and other products, they’ve built their brand like Yeti, as an outdoor lifestyle brand, or at least a lifestyle brand. So they’ve got a lot to protect. And in building their brand as a lifestyle brand, they’ve got a lot of real estate opening up in front of them for brands selling new branded products. They do need to be pretty aggressive in defending their turf or the turf they want to take. Otherwise, they may be just restricted to the insulated mugs and other things and related to insulated mugs and food containers. There’s probably a broader universe of merchandise that they could take advantage of if they weren’t regulated by Stanley, Black & Decker.
Tara
Yeah, and I wonder, when they entered into this, if they even thought that this potential real estate in front of them was something that they may be interested in. Maybe they didn’t. Now, here we are trying to deal with two different companies in the same name.
Scott
I really wanted to read a copy of the 2012 agreement. Usually, when a plaintiff alleges a breach of contract claim, they have to file the contract as an attachment to the complaint. I didn’t see that in the filings. I assume they’ll probably file it at some point in time, and then we’ll have an opportunity to read it and see what it says because I am curious what the actual restrictions in the 2012 agreement are because we really are at this point only getting one side of the story. But because I own a Stanley mug, I thought this was an interesting topic to cover. Also, probably, depending on what the 2012 agreement says, there’ll probably be some good takeaways for drafters of agreements of that type.
Tara
Yeah, I definitely agree. This will be an interesting one to keep an eye on.
Scott
Okay. Thanks for joining me today, Tara.
Tara
Thanks, Scott.
Scott
Thanks for listening to this episode of The Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Major AI copyright ruling – The Delaware District Court’s decision in Thomson Reuters v. Ross AI could have huge implications for AI training and copyright law. On this episode of The Briefing, Weintraub attorneys Scott Hervey and Andy Tan break down the case, its impact on the AI industry, and what it means for content creators.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:
This February, the Delaware District Court, in the case of Thompson Reuters versus Ross AI, issued a decision that will have, in all likelihood, profound ramifications on all pending AI copyright infringement cases. I’m Scott Herbie, a partner at the law firm of Weintraub Tobin, and I’m joined today by my colleague, Andy Tan. We’re going to walk through the court’s decision in Thompson Reuters versus Ross AI and discuss how this case will impact the other AI training, copyright infringement cases currently pending. We’ll also talk about what this case could mean, both for the AI industry and the creators of content on this installment of “The Briefing.” Andy, welcome to “The Briefing.” This is your first time on “The Briefing”, so thanks for doing this.
Andy:
Thanks, Scott. It’s an honor to be part of it. I’ve been a long-time fan and watcher, so it’s great to be on now.
ScottWell, we’re glad to have you. This case is right up your alley. You do a lot of deals in the AI space, so I thought this one would be appropriate for you to do with me.
AndyYeah, it’s definitely coming up, and AI is the hot topic in the legal world for the foreseeable future, I think.
ScottYeah, that’s for sure. Well, let’s start. Why don’t we start with the facts of the case because this case, it’s got some interesting twist and turns. Andy, can you take us through the basic facts of the case?
AndyYeah, I would be happy to. I’ll run through the basic facts of the case. If you want a more in-depth discussion, you should check out the November 9, 2023, episode of The Briefing, where Scott and our colleague Tara go over it in detail. I’ll just go over the facts Again. But so, who are the players? Reuters owns West Law. It’s one of the primary legal research tools. Ross was a legal research AI startup. I say was because Ross AI closed down as an operating company in 2020. They said it was due to the Thompson Reuters lawsuit, but its insurance coverage probably allowed it to continue to defend the Thompson Reuters lawsuit, so we’re not sure that’s the reason. Ross hired a subcontractor to create memos memos with legal questions and answers. Now, these questions were meant to be those that a lawyer would ask, and the answers were direct quotations from legal opinions. They used these memos to train Ross’s AI legal research tool so that when a user asks a legal question, Ross’s tool responds with relevant judicial opinions, which Reuters is saying is similar to Westlaw’s headnotes. Reuters, the provider of the Westlaw Service, contended that these questions were essentially Westlaw case notes, and the court found, as a matter of law, that Ross copied portions of the Westlaw headnotes.
AndyRoss challenged Reuters’ copyright in the headnotes and raised a fair use defense.
ScottThat’s right. This case is particularly interesting because it features something rare in federal courts: a judge reversing his own prior summary judgment ruling. Let’s start with the procedural history because that It’s unique. This case, as you said, began in 2020 when Thompson Reuters sued Ross in Delaware district Court. In 2023, Judge Bibas issued a summary judgment opinion that largely denied Thompson Reuters’ motions on copyright infringement and fair use. But then something unusual happened. As the case was heading towards trial that was scheduled for August 2024, Judge Bibas took a closer look at the materials and had what you might say is a judicial epiphany. The judge continued the trial date and invited the parties to renew their summary judgment briefings.
AndyThat’s pretty remarkable. From what we’ve seen, it’s rare for a judge to admit that they might have gotten something wrong.
ScottThat’s right. But if a judge is going to make a mistake or have second thoughts about something, there’s no better topic than the evolving world of AI. The judge actually said, A smart man knows when he’s right, and a wise man knows when he’s wrong. Wisdom does not always find me, so I try to embrace it when it does, even if it comes late as it did here. That’s pretty self-deprecating and funny for this judge. The judge does a complete reversal, and let’s dig into the legal analysis. First, there was the question of copyright validity. As part of the court’s original decision, the court initially said that it was going to leave this to the jury to determine whether Westlaw’s headnotes and its key number system had enough originality to be protected by copyright. Initially, Judge Bibas thought that originality depended on how much the headnotes overlap with the underlying court opinions. Now, this analysis was relevant because in doing an infringement analysis, you need to separate the non-protectable elements from what is protectable, and then you analyze the protectable elements and their similarities. In the recent opinion, the judge said he didn’t think this was the right approach.
ScottThe key insight was that even if a head note quotes from an opinion verbatim, the very act of selecting which portion to excerpt involves creative judgment. The judge drew from the Seminal Supreme Court case of Feist. That’s the telephone bookcase that we all learn about in law school, which held that factual compilations are original works of authorship, protectable under copyright if the compiled makes choices as to selection and arrangement using just a minimal degree of creativity. Based on that, the court found that the notes and key number system were original enough to be protected by copyright.
AndyThat’s right. As for the infringement aspect, the court handled that quickly. They noted that while they slogged through all the headnotes and determined that out of 2,830 headnotes, the court granted summary judgment findings of actual copying of 2,243 of the headnotes. They made this determination only where copying was so obvious that they said no reasonable jury could find otherwise.
ScottThat’s right. The court found infringement even after acknowledging that West law had a higher burden of similarities to meet due to the fact that the headnotes contained less protectable expression.
AndyLet’s talk about fair use because this is the part that could have huge implications on other AI infringement cases. Let’s break down the four fair use factors. For factor one, the purpose and character of use, the court found Ross’s use was commercial and not transformative, even though the headnotes didn’t appear in the final product.
ScottRight. Let’s dig into the court’s finding that Ross’s use was not transformative because, essentially, this was the basis on which the court found fair use in 2023 based on transformative intermediate copying. Ross argued that its copying of the headnotes is part of a building of a search engine that avoids human intermediated materials. Ross said that its AI studied the headnotes and opinion quotes only to find language patterns that would allow Ross to develop a search tool that would produce highly relevant quotations from judicial opinions in response to natural language questions and not to replicate Westlaw’s expression.
AndyThe court’s 2023 finding relied heavily on cases like Google v. Oracle and Sony v. Connectix. In those cases, the court found that copying computer code as an intermediate step was fair use. But now, Judge Bibas found those cases inapplicable for two reasons.
ScottRight. That’s right, Andy. First, the judge said that those cases dealt specifically with computer code, which courts tend to treat differently from other copyrighted works because of its functional nature. Second, in those cases, the copying was necessary to innovate and achieve interoperability. You had to copy the code to make the programs work together. The court found that this wasn’t true here. The court said that Ross didn’t need to copy Westlaw’s headnotes to create a legal research tool. Ross could have created their own summaries of court opinions. The court said that Ross’s use was not transformative because it didn’t have a further purpose or different character from Thompson Reuters’ use. Further, the court said that the intermediate copying case the computer cases, were not applicable here. In those cases, the underlying unprotectable ideas of the computer code could only be reached by copying their expression. The court found that that just That was not the case here. The court found that the copying done by Ross was not reasonably necessary to achieve a new purpose.
AndyIf there’s no transformative use, the next two fair use factors are the nature of the copyrighted work and the amount used, and both of those factors favored Ross. However, the fourth factor, the potential market effect of Ross’s use, could have on the value of original work, seemed to primary factor for this court, they found that Ross’s product would compete directly with West law in the legal research market. Plus, Ross competes with a potential market for AI training data that Reuters might want to develop.
ScottRight. I mean, we saw market harm playing a much bigger role than we had seen before in the Supreme Court’s decision in the Warhol case. I think normally, in the past, when doing a fair use analysis, we didn’t really focus so much on market harm, but I think going forward, in light of this case and also just in light of the Supreme Court’s decision in Warhol, market harm is going to play a much bigger role. All right, so let’s talk about the big question: How might this case impact the other pending AI copyright infringement training cases? So, Judge Bibas specifically limited his ruling to non-generative AI. He went out of his way to say that this case is not about generative AI. But several aspects of his analysis could be highly relevant to cases involving generative AI, like the New York Times case or the ongoing cases against Anthropic and Metta.
AndyRight. While the judge did seem to want to limit the applicability of this case, it could still have implications for other pending cases.
ScottThat’s right. First, there’s the court’s analysis of the intermediate copying. The judge rejected Ross’s argument that using copyrighted material as training data should be protected because the material doesn’t appear in the final product. This analysis is crucial because many generative AI companies make the same argument that their models transform the training data so completely that the original works aren’t recognizable in the output. The judge’s analysis in this case could find its way as persuasive authority in the pending generative AI cases.
AndyJudge Bibas focused on whether the copying was necessary to achieve the defendants’ goals, drawing from cases like Google v. Oracle. He found that unlike in Google, where copying was technologically necessary for interoperability, here, Ross could have created its own legal summaries instead of using West call us headnotes.
ScottRight. This could be problematic for generative AI companies in the pending lawsuits involving generative AI companies because they really theoretically could have created their own training data or they could have licensed training data. The fact that it would have been more expensive or time consuming is not a legal justification for copying.
AndyThe market harm analysis could be potentially influential in other cases, though, to your point. The court here found that even though Ross’s final product was different from West Law’s, they were still competing in the same market, which is legal research. For example, in the New York Times case, the publishers might argue that even though ChatGPT produces different outputs than newspaper articles, it still competes in the market for information and news.
ScottRight. However, there are some important distinctions. Generative AI creates new content while Ross really just help users find existing court opinions. That might affect both the transformative use in the market harm analysis.
AndyIt sounds like our conclusion is Judge Bibas explicitly limited his ruling to non-generative AI, but his analytical framework could significantly influence how courts approach generative AI cases.
ScottExactly. I think it will. The specific might be different, but the fundamental questions about fair use, transformative purpose, and market impact are going to be similar.
AndyYeah, it’ll be fascinating to see how other courts handle these same issues. Will they adopt, judge, Bibas ‘s focus on necessity and market competition, or will they create new frameworks specifically for generative AI?
ScottRight. Let’s discuss the broader implications of this case, assuming that the framework Judge Bibas sets up is adopted by the other courts hearing the training data infringement cases. Let’s consider how this case could impact the market and both AI companies and content creators.
AndyYeah, for the AI companies, it probably means more licensing. It could also invest in the creation of original training data. Either way, this could mean potential increases in the cost of data trading.
ScottI agree. But I think a clean data set is going to be necessary if AI companies want to secure enterprises licensed licenses or licenses with companies and not just consumer-facing products. No company is going to enter into a license with an AI company that doesn’t, at a minimum, provide indemnity from infringement claims.
AndyAlso, as a result, you could see AI companies either shifting into models where the focus is broad and more on public domain content or have a more narrow focus in terms of function. Personally, I think the more narrow focus is going to result in a focus on business partnerships rather than general consumer applications.
ScottI agree. In software licensing, the money is in business licenses, as we know. This could also be extremely beneficial to the content industry. The content industry has been dying a slow, painful death, and this actually could be a turnaround. You could see new opportunities to create AI training-specific content. Those opportunities do already exist. I already know of a couple of companies in this space that are AI training content brokers, matching content producers with AI companies that need specific types of video content to train AI. But it’s not as big or as mainstream as it could be. There can be a real marketplace for custom data set creation and cleaned annotated data collection. A training data as a service model is what I see can be possible.
AndyYeah, in this case could be the leverage that major content owners have been looking for. Then the larger the content owner’s library, the greater that potential leverage.
ScottInterestingly, this could start the rise of content cartels or content collectives, or maybe more M&A in the content space being driven by either traditional content companies with the focus of greater leverage in content licensing. You could also see acquisition and vertical integration of large content companies by AI companies, and giving them some type of exclusivity in a particular content space.
AndyDefinitely. The business and legal ramifications of what we’ve been talking about are probably going to reshape how all of society thinks of data ownership and copyright.
ScottRight. Maybe this could be the lifeline for traditional media as we know it today. Who knows? Because one thing that we don’t really think a lot about is the need for training AI, it’s not static, it’s constant. It constantly needs to be updated. This might result in a continuous revenue flow for traditional media content creators like news that they just haven’t seen for quite some time.
AndyDefinitely agree.
ScottAndy, thanks for joining me today. I hope you enjoyed it, and we look forward to having you on in the future.
AndyAbsolutely. Thanks a lot, Scott.
Scott:
That’s all for today’s episode of “The Briefing.” Thanks to Andy for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe and leave us a review, and also share this episode with your friends and colleagues. As always, if you have any questions about the topics we covered today, please leave us a comment.
In the case of Sydney Nicole vs. Alyssa Sheil, a federal district judge ruled that certain vibes and aesthetics can be protected under copyright law. Weintraub attorneys Scott Hervey and Tara Sattler break down this decision and what it means for content creators and brands in the digital age on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:In December of last year, we talked about the report and recommendation of a magistrate judge that would hold that a vibe or a look could be protected under copyright law. That report was adopted by the district Court for the Western district of Texas. So, it seems, at least in the Western district of Texas, that copyright law extends to protection of ideas, concepts, or general styles. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, I’m joined today by my partner, Tara Sattler.
Given the adoption of the Magistrate Judges recommendations, we are going to discuss the potential implications of this case, Sydney Nicole versus Alyssa Sheil, on the creator marketing industry on this installment of the briefing. Tara, welcome back to the briefing.
Tara:Hi there, Scott. Always great to be here.
Scott:Good to have you again, Tara. I think this is going to be a real interesting discussion here. As a quick recap, this case involved a dispute between Sydney Nicole, a content creator, and Alyssa Sheil, another creator, accused of copying Nicole’s online content. Sydney Nicole alleged that Sheil’s work closely mimicked her original content, including the themes, style, and presentation of her videos. However, she’ll argue that she was merely drawing on a general model and idea and concept that copyright law has traditionally deemed unprotectible. Namely, this Clean Girl look, a very popular look among content creators and the creator marketing community. Adopters of this look include the likes of Hailey Bieber, Bella Hadid, Selena Gomez and Kim Kardashian, to name just a few.
Tara:The federal magistrate judge issued a report and recommendation, which was later adopted by the district court, siding with Nicole. The ruling found that Sheil’s content bore sufficient similarity to Nicole’s protected expression rather than just her general ideas, effectively expanding the scope of what might be considered copyright infringement in the digital content space.
Scott:So we’re not going to analyze the decision itself. For that, I recommend our listeners check out our previous episode on this case back in December. We’re going to put a link in the episode description to make it easy for you to find. What I want to talk about today are the critical issues for content creators and brands and the broader creator economy because of this case. So The first thing I want to talk about is that the finding of this case potentially blurs the line between protecting expression and protecting ideas.
Tara:I definitely think you’re right, Scott. One of the foundational principles of copyright law is that it protects the specific expression of an idea, but not the idea itself. However, this ruling raises concerns that court may be moving towards an approach that grants de facto protection to certain creative concepts, especially within digital content creation.
Scott:That’s right. The similarities in this case were largely thematic or conceptual. I think there’s a chance that this decision risks chilling the very creative development that copyright law has meant to foster. Creators often build upon common trends and esthetics and industry norms, and if those elements can be locked down as protected expression, it could deter new entrance and limit creative evolution.
Tara:That’s right. This case could also open the door to secondary liability for brands that work with influencers. If an influencer unknow post content that closely resembles another creator’s work, there is a distinct possibility that brands that sponsor or collaborate with those creators could be held secondarily liable.
Scott:Yeah, I can certainly see that under a theory of vicarious liability. So vicarious liability is generally found where the defendant has the right and ability to control the infringing activity, and the defendant derives a direct financial benefit from the infringement. So for example, where a brand hires or contracts with an influencer to create content, and that brand has the ability to review or direct that content, the brand might be found vicariously liable if the influencer infringes somebody else’s vibe and the brand benefits from it, which they will be deemed to because this is an advertisement.
Tara:Courts have historically been cautious about extending liability in such cases. But as influencer marketing becomes a dominant advertising strategy, we may see an increased focus on due diligence and compliance by brands to avoid potential legal entanglements.
Scott:Beyond the legal risk, this increased exposure to liability could also slow the growth of brand spend within the creator economy. If brands fear legal consequences, they may reduce investment in influencer partnerships or ship their budgets to lower risk advertising channels. Additionally, companies may impose stricter content review processes and demand more extensive indemnification clauses and contracts, which could make influencer deals more complex more time-intensive, and less attractive, particularly for smaller creators. In addition to potentially stifling brand spend, this decision could potentially stifle competition in the creator economy.
Tara:I agree. The creator economy really strives on iteration, remixing, and reinterpreting of popular trends. This decision could make competitors wary of engaging in common industry practices out of fear that their work might be deemed infringing. If courts begin interpreting copyright law in a way that grants broader protection to influencer-driven content, it could discourage new creators from entering the market and inadvertently strengthen the position of already established influencers.
Scott:Less competition within the creator economy could lead to a less diverse and not so innovative content landscape. New and smaller creators may struggle to gain traction if they fear illegal consequences for inadvertently producing a similar vibey content to an existing influencer. This could concentrate marketing power among top influencers who, having more resources, are better positioned to assert and enforce their copyright claims, even if those claims are nebulous.
Tara:However, there could be some potential benefits for certain groups. Established influencers and content creators might benefit from increased legal protections that shield their work from being copied in the future.
Scott:True, but this would come at a cost which creates a huge barrier to entry and also would artificially inflate the cost to advertisers. If there are only a handful of creators that would be able to emulate a specific look or vibe, naturally, the cost to work with those creators would increase substantially. Ultimately, while the ruling might provide some advantage for market leaders, it risks stifling creativity and competition, making it harder for emerging creators to build their presence in the industry and making it tougher for emerging brands to use creator marketing to expand their market share. I also think that this case could result in an increase in copyright litigation among influencers. With the rise of social media content creation, this case might embolden more influencers to file copyright claims against their competitors. Could this Can we create an environment where disputes over content style and approach become more litigious rather than fostering creative competition? I mean, we’ve already seen it in this case.
Tara:Yeah, we have, and I agree. It or not, we all know that litigation is a business strategy, and if it makes economic sense to use litigation to whittle down the competitive landscape, more litigation is probably going to come.
Scott:I agree. As lawyers, we are very much in favor of helping our clients use the law to advance their business endeavors. I mean, that’s what they hire us to do. This finding by the district Court is precedent, at least within the Western district of Texas, and it would be 100% acceptable for any influencer to protect his or her rights and business interests in line with this decision. Let’s talk about how this case might have an effect on platform moderation policies. If more courts begin recognizing this broader form of copyright protection for digital content creators, platforms like YouTube, Instagram, and TikTok may need to revise their copyright enforcement policies. This could lead to stricter takedown policies and increased content takedowns. This could also mean more aggressive use of automated copyright filters, which could result in faster and broader removal of content flagged for infringement and less room for creators to dispute takedown claims before their removal.
Tara:You could also see stricter algorithmic policing. Ai-powered copyright detection could become more sensitive, leading to more false positives where non-infringing content, for example, fair use or independently created materials, get flagged and removed.
Scott:That’s right. I could also see platforms expanding the use of content fingerprinting technologies, which could prevent certain styles, esthetics, or trends from being used across multiple creators, even if they are not directly infringing. This could result in preemptive blocking becoming more common where content is not even published if it triggers copyright algorithms.
Tara:All of this really would have a chilling effect on competition within the greater economy. It will be harder for creators to establish originality, and even where they can, the smaller creators who lack legal resources could It can be disproportionately affected as they may struggle to dispute automated takedowns.
Scott:Let’s wrap this up. While this case does not set binding precedent beyond its jurisdiction, there’s a question as to whether or not this is a signal of a potential shift in how courts are now going to analyze copyright disputes in the creator economy space as it may address a esthetic or a vibe. As litigation over digital content continues to grow, creators and brands alike are going to need to pay close attention to how courts balance the need for protection with the imperative to keep creative industries dynamic and competitive. Lawyers like us who advise both brands and content creators within the space are going to have to be aware of this decision and counsel our clients on how to avoid potential liability, and frankly, avoid being the defendant in a lawsuit alleging copyright infringement where the content allegedly infringed is an esthetic or a vibe.
Tara:Yeah, that’s absolutely right, Scott. I think the conversations between brands and creators that already exist about approvals over content and direction given by the brand to the creator are only going to deepen when these types of precedents start to get set because both sides have higher stakes and more worries than they did before.
Scott:Yeah, I agree. We’ll see if this decision goes up on appeal, but until it does, it is at least precedent within the Western district of Texas. Who knows how other courts might view this decision. We’ll definitely need to have our eye on this ball and advise our clients of this potential risk. Thanks for joining me today, Tara.
Tara:Absolutely. It was great to talk to you about this one, Scott.
Scott:Well, that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
On this episode of The Briefing, Scott Hervey and Tara Sattler dive into the landmark Jack Daniels v. VIP Products case that changed trademark law. They break down the Supreme Court’s ruling on trademark infringement vs. dilution and explore how a dog toy parody nearly tarnished Jack Daniels’ brand.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: VIP products versus Jack Daniels’ properties brought a landmark Supreme Court case that forever changed the application of the Rogers Test. However, cross-motions for summary judgment at the District Court following the Supreme Court have provided some degree of closure and finality on the trademark and dilution claims raised by Jack Daniels.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We’re going to talk about a dog toy, a bottle of whiskey, and the Sometimes-murky waters of Trademark Law on this installment of The Briefing.
Tara, welcome back to the briefing. It’s good to have you back.
Tara: Thanks, as always, Scott.
Scott: We’ve talked about this Jack Daniels case as it has affected other cases I think, boy, almost ad nauseam. But there has finally been a resolution itself of the Jack Daniels case. Let me just give a little brief history of the background, and then you can recap the Supreme Court’s decision. This legal battle began all the way back in 2014, so over 10 years ago, when VIP Products, a company that makes dog toys, filed a declaratory relief lawsuit against Jack Daniels, seeking a declaration that their Bad Spaniels dog toy did not infringe on Jack Daniels’ trademarks. The Bad Spaniels toy was designed to mimic a bottle of Jack Daniels’ Black Label Whisky. Jack Daniels counterclaimed, alleging both trademark infringement and trademark dilution. The case has gone through multiple appeals, including a trip to the Supreme Court. Court. The Supreme Court ultimately vacated the Ninth Circuit’s decision and remanded that case back to the District Court.
From there, let’s quickly recap the Supreme Court decision. On June 8, 2023, the Supreme Court decided this case. At the district Court and on appeal to the Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressive works were analyzed under the Rogers test.
Tara: Right. But on appeal, the Supreme Court said that the issue was not whether the dog toy was an expressive work, but rather the nature of the use of the Jack Daniels mark.
Scott: Right. The Supreme Court found that the IP’s use of the marks, while humorous, was for the purpose of serving as a source identifier, a trademark use, in other words. The Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it’s also used to perform some expressive function.
Tara: And then from there, the case was eventually remanded to the district Court to determine Jack Daniels’ Lanham Act claims for dilution and infringement.
Scott: Before we get into the dilution part, let’s briefly touch on trademark infringement. To win on this claim, Jack Daniels needed to show that its trademarks were distinctive and nonfunctional and that there was a likelihood of consumer confusion. The court had previously ruled that Jack Daniels’ trademarks were distinctive and nonfunctional. The key issue was whether VIP’s Bad Spaniels toy would cause a likelihood of confusion about the source of the product. The Or ultimately found that while Bad Spaniels as a toy did evoke the Jack Daniels brand, it was a successful parody.
Tara: That’s right. A successful parody of a famous mark, one that conjures up the original yet creates contrasts from the original so that the message of ridicule or pointed humor becomes clear, is not often likely to create confusion.
Scott: All right. The court waved several factors and determined that due to the parotic nature of the toy, consumers were unlikely to be confused about its source. Therefore, the court found that VIP was not liable for trademark infringement.
Tara: Right. That’s score one for the dog toy. But now let’s get into the, I think, more interesting part of the case, the trademark dilution claim. This is where the court found VIP liable. Trademark dilution is different from infringement. Trademark dilution is about protecting the distinctiveness and selling power of a famous mark, even if there’s no confusion about the source of the infringing product. The Trademark Dilution Revision Act, or TD as it’s called by trademark lawyers, defines dilution as the, quote, whittling away of the value of a trademark when it’s used to identify different products. It prohibits the use of a mark that is likely to cause dilution, either by blurring or by tarnishment. In this case, Jack Daniels argued that the Bad Spaniels toy diluted their trademark by tarnishment.
Scott: To prove dilution by tarnishment, Jack Daniels had to prove three things. First, Fame, that its trademarks were famous before VIP’s use of the Bad Spaniels toy began. Second, Similarity there was a similarity between the Bad Spaniels toy and Jack Daniels trademarks. And third, reputational harm. That the Bad Spaniels toy was likely to harm the reputation of the Jack Daniels trademarks.
Tara: Let’s look at each of these in detail. I’ll start with Fame. I think that was an easy one for the court. The court found that Jack Daniels trademarks were famous, and they are famous, noting the brand’s century-long history, excessive advertising, and massive sales. Vip argued that the old number seven trademark, specifically, was not famous enough, but the court rejected this, stating that it was the overall use of Jack Daniels’ marks in a tarnishing way that mattered. The court emphasized that it was VIP’s use of Jack Daniels’ marks on the dog toy and not the bad spaniel’s name in isolation that caused the tarnishment.
Scott: Okay, so turning to the second factor, similarity. The court found that VIP intentionally designed the Bad Spaniels toy to mimic Jack Daniels’ trademarks and trade dress, including the shape of the bottle, color scheme, and font. The IP replaced Jack Daniels with Bad Spaniels Old Number Seven with Old Number Two, and also Tennessee Whisky with Tennessee Carpet, while retaining other designer elements. The court determined that this was enough to show a similarity.
Tara: As to the third element, reputational harm, the court noted that such harm, the harm to the reputation of the famous Mark, mark arising from the similarity between the famous mark and the junior mark. The court noted that this harm generally arises when the plaintiff’s trademark is linked to products of shoddy quality or where it’s portrayed in an unwholesome or unsavory context, likely to evoke unflattering thoughts about the owner’s products. Jack Daniels argued that the Bad Spaniels toy tarnished their trademark by associating the brand with dog poop. Vips’ toys included phrases like 43% poop by volume and 100% smelly and replaced Old Number 7 with old number two on your Tennessee carpet. To support their argument, I mean, that all just seems funny to me, but to support their argument, Jack Daniels brought in an expert who testified about the negative associations that the Bad Spaniel’s toy was likely to create with Jack Daniel’s whiskey, particularly because the product is intended for human consumption. The court gave prevailing weight to the expert’s testimony, concluding that the toy was likely to tarnish Jack Daniel’s reputation by creating a negative association with dog poop, essentially.
Scott: From there, VIP argued that there was no actual evidence of reputational harm and that their dog toy was not as offensive as other products that have been found to cause tarnishment. But the court disagreed. Importantly, the court emphasized that the TDRA only requires a likelihood of dilution, not actual harm. The court also dismissed VIP’s argument that the old number seven mark itself was not famous enough, stating that the tarnishment arose from the use of the overall Jack Daniels marks on a product associated with dog poop.
Tara: So VIP also raised a First Amendment challenge to the Lanamack’s prohibition on trademark dilution, arguing that it amounted to unconstitutional viewpoint discrimination.
Scott: Let’s remember that under the TDRA, the law provides an explicit exemption for certain uses of a famous trademark, including parity if the use is non-commercial or involves fair use in news reporting, commentary, or criticism. Obviously, this is commercial speech, so it’s not entitled to the statutory exemption.
Tara: Right. The court declined to consider the First Amendment challenge because VIP failed to raise it in their pleadings. This procedural point is important. The court found that because VIP did not formally include this argument in its initial court filings, it was not properly before the court at the time that the court decided the parties’ cross-motions for summary judgment.
Scott: In the end, the court ruled that while the Bad Spaniels toy was a successful parody that did not infringe on Jack Daniel’s trademarks, it did, however, dilute Jack Daniels’ trademarks through tarnishment.
Tara: Right. The court found that the use of Jack Daniels’ trademarks on a dog toy that referenced dog poop was likely to harm the reputation of Jack Daniels’ brand. Now, Now, the court’s dilution finding here, I think, is almost opposite to what the Fourth Circuit found in a 2007 case, Louis Vuitton versus Hot Diggity Dog. In that case, Louis Vuitton, the luxury fashion house, sued Hot Diggity Dog, a company that manufactured and sold a line of parody dog toys called, Ready? Chooi Vuitton. These toys, obviously, mimic Louis Vuitton famous handbags featuring similar design elements like the LV monogram pattern and style. Louis Vuitton argued trademark infringement, trademark dilution, and unfair competition, arguing that the parody toys harmed its brand and diluted the distinctiveness of its trademarks.
Scott: In that case, the District Court ruled in favor of Hot Diggity Dog, finding that the dog toys were a parody and did not dilute or infringe on Louis Vuitton’s trademarks. Louis Vuitton then appealed to the Fourth Circuit, which affirmed the District Court’s decision.
Tara: On appeal, the Fourth Circuit evaluated Louis Vuitton’s dilution claims, specifically whether the Chuy Vuitton dog toy diluted Louis Vuitton’s trademarks through tarnishment. Like Jack Daniels, Louis Vuitton argued that the dog toys could tarnish its brand by associating its luxury image with pet products. The court rejected this argument, emphasizing that the Chuy Vuitton toys were playful and non-offensive. They were not of inferior quality, nor did they create a negative association with the Louis Vuitton brand the court found. The parody was clearly a joke and unlikely to harm Louis Vuitton’s reputation, so said the fourth circuit.
Scott: Then, Scott, does this mean that there is a split in the circuit?
Tara: Probably not. The court’s finding here in the Jack Daniels case is probably a result of the unique procedural nature of that case. Remember, after remand, the parties agreed that the court didn’t need to undertake additional findings of fact in order to decide the matter and that briefings on the remaining legal issues would suffice on cross-motions for summary judgment.
Scott: Theiding of dilution by tarnishment in the Jack Daniels case rests solely on the fact that the dog toy makes jokes about dog poop.
Tara: I mean, that seems to be the case. If the dog toy didn’t include jokes about dog poop or dog pee, then the expert opinion probably would have been different, and we probably would have seen a different result. But I guess we’ll never know. The court gave great weight to the expert for Jack Daniels in their determination that there was a likelihood of tarnishment due to the references to dog poop or pee.
Scott: I think that that’s really the only distinction. But I also think that there’s sure a lot of joking that happens about dog poop and poop in general. It seems to me to be a pretty thin line between Jack Daniels and Louis Vuitton.
Tara: I agree. I mean, I don’t know what the toy company’s expert opinion What it included and whether or not that opinion found that the references to dog poop and dog pee were not likely to cause dilution. We probably won’t know unless we read the docket. But that’s the only thing I think I can hang my hat on here and explain the differences between the two cases because otherwise, we do have a split, and we seem to have a split in the circuit. But I think that the differences rest on the unique facts of these two cases.
Scott: I definitely agree with you. I guess we should all be careful before we make any more dog poop jokes. Let me go, especially if we’re parading a strong brand like Jack Daniels and creating a dog toy. Thanks for joining me today, Tara.
Tara: Thanks, Scott.
Scott: That’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please leave us a comment.
A motivational passage from Keith Bell’s book Winning Isn’t Normal sparks a legal battle after Ole Miss coach Lane Kiffin shares it on Twitter. Scott Hervey and Tara Sattler dive into the lawsuit, exploring how the Fifth Circuit’s ruling raises important questions about fair use, copyright enforcement, and Bell’s “serial litigant” status.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:In 2021, we reported on the copyright lawsuit filed by inspirational book author, Keith Bell, against the defensive back coach for the Miami Dolphins, Jerold Alexander. This was based on the coach’s inclusion of a passage from Bell’s 1982 book, Winning Isn’t Normal, in a social media post, and a federal court’s refusal to dismiss Bell’s lawsuit based on Alexander’s arguments, including fair use. In that case, the Florida federal court judge said that consideration of the fair use defense on a motion to dismiss was not appropriate unless it’s clear, based on the complaint itself, that fair use is applicable. The party The purpose of that case later settled. However, Bell had a much different result in a lawsuit brought against the University of Mississippi football coach, Lane Kiffin.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin and I’m joined today by my partner, Tara Sattler.
We are going to take a look at this particular case and a related case in the Fifth Circuit to try to understand why this federal judge and the Fifth Circuit came to such a different conclusion than the judge in Florida based on essentially similar facts on this installment of the briefing.
Tara, welcome back to the briefing. I think this is going to be a real interesting discussion.
Tara:It definitely is, and it’s really timely with the Super Bowl coming up here.
Scott:It is timely with Super Bowl coming up, but it’s really appropriate that you and I are talking about that Giving all the coverage you and I have done on the Warhol case and the new analysis of fair use. Absolutely. Yeah. So let’s get into this case. Like Bell’s case against Alexander, Bell’s lawsuit against Lane Kiffin, the head football coach at the University of Mississippi, revolves around a passage from Bell’s book, Winning Isn’t Normal. And that passage is known as the win passage. This passage provides motivational advice, and Bell has separately copyrighted that passage. So Kiffin tweeted the passage, the same passage that Alexander had tweeted. However, here, Kiffin included no other commentary or elaborate on the passage while Alexander had.
Tara:As we know from our previous coverage, this isn’t Bell’s first lawsuit over this passage. Bell has filed dozens of copyright lawsuits over similar social media uses of the wind passage. This became an issue in Bell’s lawsuit against the Eagle Mountain Saginaw Independent School district for a similar use. In that case, the Fifth Circuit declared Bell a serial litigant who makes exorbitant demands for damages in hopes of extracting disproportionate settlement.
Scott:I want to talk about the Court’s criticism of Bell’s litigation strategies. But before we have that discussion, let’s talk about the Court’s treatment of Kiffin’s fair use argument. The Kiffin Court cited the Fifth Circuit’s decision in Bell versus Eagle Mountain, Saginaw, Independent School district, which dismissed a nearly, on a motion to dismiss, a 12: 06 So not a summary judgment motion, but a motion to dismiss just based on a complaint itself and the defense is advanced by the defendant. They dismissed a nearly identical claim on fair use grounds. So Let’s remember that this case is a post-Warhol Fair use case.
Tara:Right. The Court’s analysis closely followed the framework established in Eagle Mountain. It applied the four statutory fair use factors codified in the Copyright Act. One, the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. Two, the nature of the copyrighted work. Three, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and four, the effect of the use on the potential market or value of the copyrighted in the war.
Scott:So interestingly, both the Fifth Circuit in the Eagle Mountain case and this court, the Kiffin Court, make no mention of the Supreme Court’s analysis in Warhol, which requires an analysis of whether the purpose of the secondary use is different enough to justify copying. Let’s look at what the court did say in looking at those four fair use factors.
Tara:As mentioned, the court’s analysis closely followed the framework established in Eagle Mountain. First, regarding the purpose and character of the use, the court found Kiffin’s use to be non-commercial and intended to motivate and inspire, a purpose often protected under fair use. Next, to the nature of the copyrighted work. The wind passage was deemed creative, favoring Bell slightly, though the court noted this is generally the least significant factor. Third, the amount and substantiality of the portion used. While Kiffin tweeted the entire win passage, the court here determined this factor was neutral because the passage was already widely accessible online. Finally, with respect to the fourth factor, effect on the market, this was the decisive factor. The court here found no evidence that Kiffin’s tweet harmed the market for Bell’s book or related merchandise. Bell’s claims of potential licensing revenue were speculative at best.
Scott:I have issues with the court’s analysis, and we’re going to get into that in a bit. I think it’s also important to point out, and it’s clear from the Fifth Circuit’s opinion that Bell’s litigation history just highly influenced the court’s decision. The court was critical of Bell’s history of targeting what the court referred to as minor and often harmless uses of the win passage, despite the fact that the uses were not authorized by win. Sorry, not authorized by Bell, calling Bell a serial litigant and comparing his behavior to that of a copyright troll. This bad faith history, as the court calls it, undercut Bell’s argument especially regarding the fair use analysis.
Tara:That’s right. And Scott, you mentioned the issues that you have. So I have some, too. Let’s talk about them.
Scott:Yeah. So let’s start with the court’s analysis of the first factor. The court said that anyone reading Kiffin’s tweet would assume that the post was Kiffin simply saying in effect, quote, Somebody said this, and I thought it was worth sharing. The The Court said that this is the contribution to the exchange of ideas which the copyright law should be very hesitant to find unlawful, particularly when the quote in question is of such a harmless and non-commercial nature as the wind passage. We’ve covered a number of copyright cases that stem from the post of a photo that a person didn’t take. I mean, think of the numerous celebrity photo cases that we’ve covered. I don’t ever recall any other court applying a similar analysis. Could you imagine the argument? Some photographer took this photo of me and I thought it was worth sharing. I just don’t agree with the court’s analysis here.
Tara:That’s true. I agree with We have never seen this, and I can’t imagine that this type of an argument would really go over very well in any other case or any other type of situation.
Scott:The court noted that Kiffin’s use was intended for motivational and inspirational purposes. Kiffin shared this post for the same reason that all the other coaches and sports organizations have shared this passage, motivation and inspiration. Now, Bell is an internationally recognized expert in sports psychology and performance enhancement. The purpose behind his book and its content is to motivate and inspire. Now, while Kippen’s use may have been non-commercial, the purpose was the exact same purpose as Bell’s purpose for publishing his book.
Tara:I agree with you, Scott. For all the analysis that we’ve done in this post-war hall world, the purpose typically carries quite a bit of weight. This is a very interesting position that the court took here, in my opinion.
Scott:Right. And the court never asked the Warhol question whether the purpose of the secondary use is different enough to justify a copying. In both Kiffin and Eagle Mountain, they just reproduced the passage, the passage that is separately protected by copyright without any additional commentary or anything else. I don’t know how that use could be different enough to justify the copying done by Kiffin or the school district.
Tara:Yeah, I agree with you, Scott. Let’s talk about the third factor now, the amount and substantiality of the work used. Bell does hold a separate copyright for the win passage. And in both the Eagle Mountain case and in the Kiffin case, the defendants use the entire work.
Scott:That’s right. Also, the Court’s treatment of Bell having this passage on his website saying that, Oh, it’s readily available and online, and that makes this factor neutral. I’ve never seen that before. I mean, think of all the photo sharing cases that we’ve covered. Usually, those photos are available online because that’s where the celebrities get them from. I don’t agree with the court’s analysis here.
Tara:Yeah, and typically making something widely available really does not have an impact on its protectability.
Scott:Right.
Tara:Usually, when we see In the case involving the entire work, the third factor generally does not favor fair use and generally isn’t neutral.
Scott:When they use the whole work, it generally favors a finding of infringement. It favors the complainant. Bell wrote an extremely popular passage. It has to be extremely popular given the amount of sharing that is happening with this passage. It’s one that coaches and players apparently find extremely valuable, insightful, and motivational. Unfortunately, it seems that their exuberance has resulted in the unpermitted sharing of this passage. Bell, the copyright owner, has elected to actively challenge those uses. The court said that this likens him to a copyright troll. But trolls, whether they’re a copyright troll or a patent troll, they generally attempt to enforce rights beyond the rights actual value. And value, I think, is… I don’t know. It’s hard to substantiate what value is. Also, trolls generally do not manufacture products or supply services based on the patents in question. But Bell is an author and a speaker, and he actively He relatively merchandises the passage in his books, and he’s still selling his books. He is exercising the rights he has under the Copyright Act. The fact that he has to play whack-a-mole with other coaches in schools that seemingly don’t respect copyright, in my opinion, it doesn’t make him a troll, and it doesn’t strip him of his rights to protect and enforce his copyrights.
Tara:I agree with you, Scott. It seems pretty strong to come at someone, especially in this particular fact pattern, where the win passage itself is separately registered for copyright protection, and the whole passage has been used. I do think this just seems like a very extreme example. So, Scott, do you think that the Fifth Circuit’s decision in Bell versus Egle Mountain is the beginning of a new rip in the fair use analysis in our post-warhol world?
Scott:Well, I think it already has had an effect. Remember, the Kiffin case was based on the Fifth Circuit decision in Bell versus Eagle Mountain. So I think this decision has already caused issues within the Fifth Circuit and the district courts in that circuit. So think about this. In that case, in the Eagle Mountain case, the school district did not argue that its use was transformative, and the court did not find that its use was transformative. Same in Kiffin. But the court said, there are other factors that are of equal importance. Could you imagine a fair use analysis where the use is admittedly non-transformative, but it’s still found to be fair use. One does not immediately come to mind for me, and if that has happened in the past, I assume that it is a rare, rare thing.
Tara:I agree with you, Scott.
Scott:It’s obvious to me that the court didn’t want to find for Bell, even though he clearly showed infringement. So the court twists itself into this knot to find fair use. I think instead, the court should have found copyright infringement as a matter of law. If it didn’t want to find in favor of well, then it could have awarded nominal damages for statutory damages. I think this case and this Fifth Circuit’s decision in Eagle Mountain, it doesn’t comport to Warhol. I think that the district Court and the Fifth Circuit in Eagle Mountain were motivated by factors other than fair use. I think the Fifth Circuit case makes for bad precedent.
Tara:Yeah, I think that’s right. I think the Fifth Circuit is really going to have to untangle itself from this. I’m sure we will be talking more about fair use in the Fifth Circuit in the weeks and months to come. I also think the Bell should probably take a look at how he wants to monetize his intellectual property moving forward, and hopefully, he can come up with some more creative and maybe symbiotic ways to get some money off of his intellectual property rather than trying to go to court every time since the courts don’t seem to appreciate that.
Scott:If sharing Having an asset on social media constitutes copyright infringement. The unpermitted sharing of a copyrighted work, whether that work is a whole photograph or a whole passage from a book, in this case, then what’s Bell to do? Could you imagine if a court were to say, Oh, I I’m sorry, Paramount Pictures, but your motion picture is widely available, or I’m sorry, Universal Music Group, this track, this song is widely available on Spotify and on Pandora, even though you made it available there. We’re not going to allow you to enforce the peer-to-peer infringement of your song. Where does the fact that the rampant and, I don’t know, untethered infringement of a particular IP asset, how does that diminish the copyright holder’s rights to try to corral those acts of infringement? Basically, the court was saying, almost like, because other people, coaches, schools, what have you, are using this passage frequently to inspire and motivate and not getting permission, it’s okay. Because the masses are doing it, we’re going to find it to be okay, and we’re going to find it to be fair use. That doesn’t work. That’s not what the Copyright Act protects. That’s not how the fair use works.
Scott:I think this particular decision in the Fifth Circuit is a risk for all copyright asset holders, whether they be somebody like Bell, whether they be a photographer, whether they be a music company or a motion picture or a television company. I think those asset holders need to be concerned about cases in the Fifth Circuit because apparently in the Fifth Circuit, you don’t need to comport with the Supreme Court’s analysis in Warhol, and the requirements to establish fair use are pretty light.
Tara:Even though this is pretty harsh treatment of Bell and Bell’s work here, I think that hopefully schools and coaches and athletic departments will take note of Bell’s litigious nature and respect his intellectual property and stop doing this behavior that continues to cause Bell to go to court to enforce his rights.
Scott:Right. It seemed like the court was motivated by the fact that Bell wouldn’t agree to settle for an amount that the court found to be reasonable. Okay. If the court believes that Bell is not reasonable in his settlement decisions, don’t find fair use, find technical infringement, but award him the nominal amounts under the Copyright Act for statutory damages, and don’t award him attorney’s fees. And all of All of a sudden, the motivation to pursue claims in court become a lot less because you’re not going to get more than the minimal amount awardable under the Copyright Absolutely. Yeah. Well, we’ll see what happens with this case. I’m interested to see if any other pundits who talk about these subjects like we do take issue with this decision and the Fifth Circuit’s decision. We’ll see. Thanks for joining me today, Tara.
Tara:Thanks for having me, Scott.
Scott:That’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
As TikTok’s future in the US hangs in the balance, influencers and brands are left wondering how a potential ban could impact their posting contracts. In this episode of The Briefing, Scott Hervey and Jamie Lincenberg dive into the potential legal challenges and share insights on how brands can stay ahead of the curve in this ever-changing landscape.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:
On January 19, 2025, TikTok went dark, forced to cease operations in the US as a result of a federal law that bans the app in the US unless TikTok divest itself from its Chinese parent company. Now, as we record this podcast today on the 21st, TikTok is back up. It has a 75-day stay granted by current President Trump. While TikTok sorts out whether it’s going to sell itself or some other deal structure that will allow it to continue to operate in the US. For influencers that use TikTok as a content platform, many are concerned, very concerned that this federal law ban will have a serious impact on their livelihood. But here’s something that I haven’t heard much chatter about. What happens to those brand integration contracts where an influencer is required to post content to TikTok after the ban date? Does this Does this mean that an influencer is in breach? Can the influencer be liable to a brand for failure to perform, even though it’s really out of the control of the influencer? I’m Scott Hervia, a partner with the law firm of Weintraub, Tobin, and I’m joined today by my colleague, Jamie Lindsberg, to talk about whether influencers face potential liability due to the TikTok ban on this installment of the briefing.
Jamie, welcome back to The Briefing.
Jamie:Thanks for having me again, Scott.
Scott:This is an interesting topic, and I got to say, from the time that I put our outline together till today when we’re recording this podcast, it really has been about three days, and so much has changed in those three days. But as we’re recording this, we’re recording this on the 21st, yesterday, the 20th, President Trump granted TikTok a 75-day stay for the band to take effect, pending some deal to work out the issues related to this federal law that would ban TikTok’s operations and also would ban any company from hosting or allowing TikTok app to be made available to users in the United States. Let’s first talk about the TikTok ban or sale law. This law was passed in April 2024 as part of a broader For an aid package. It gives ByteDance, TikTok’s Chinese parent company, approximately 9 to 12 months to sell TikTok’s US operations to an American buyer. If ByteDance fails to divest TikTok within the time frame, which we know happened, the app would be banned from US app stores and web hosting services. In between April 2024 and January 19, 2025, which is the band date, there were lawsuits filed by TikTok, lawsuits filed by the FTC and the DOJ, appeals to federal courts, including the Supreme Court, which upheld the ban.
As I said, while I was working on our outline for the episode, the Wall Street Journal reported that President-elect Trump said that he would issue in order to reopen TikTok on Monday, January 20th, 2025. As we know, on Monday, President Trump gave TikTok a 75-day stay of the ban.
Jamie:Yeah, that’s right, Scott. A lot’s happened in the last couple of days around this, but we have been anticipating the effects of this for quite some time now. The history of TikTok’s bumpy relationship with the US prior to April of 2024 is important to understand. In 2020, the Trump administration had expressed some concerns about TikTok’s Chinese ownership and privacy and security issues, and the administration had threatened to force a sale or a ban through executive orders. You may recall that Trump had even pushed for an acquisition Microsoft. But after that fell through, Oracle entered into a commercial agreement with TikTok for the purpose of protecting US data.
Scott:Right. But even after that, and through 2023, various states passed laws banning the use of TikTok on government devices. And in the end, 39 states have banned TikTok on government devices. Also, important to note, the federal government bans TikTok on devices owned by the federal government, and certain universities have banned the use of TikTok on campus WiFi and university-owned computers. And in 2023, there was increased bipartisan pressure and congressional hearings about TikTok’s data practices and potential national security concerns.
Jamie:The timeline that you’ve just mentioned creates legal implications for influencer contracts. We can essentially divide those contracts into three distinct time periods, each with its own legal implications. First contract signed before 2020, when TikTok faced its first serious regulatory scrutiny under the Trump administration. Second, contract signed between 2020 and early 2024 during that period of increasing regulatory pressure. Third, following enactment of the law in April 2024.
Scott:Let’s explain why this timeline is important in looking at potential influence or liability under a brand agreement that requires posting of integrations on TikTok after the ban. We’re looking at a potential defense to this liability. The first is under a legal doctrine called the doctrine of impossibility, and the other is under the application of any force majeure provision that might be in the agreement. Let’s talk about the doctrine of impossibility first. Under the doctrine of impossibility, a party may be excused from performing a contract if a supervening event prevents compliance with the agreement. In California, the doctrine requires the party a hurting the defense of impossibility to establish the following: one, that the supervening event, in this case, the TikTok ban, makes performance impossible or impractical. Two, the non-occurrence of the event, meaning that the US government’s shutdown of TikTok, was a basic assumption upon which the contract was based. Essentially, was the supervening event foreseeable at the time the contract was entered into. Three, the occurrence of the supervening event resulted without the fault of the party seeking to be excused. Four, the party seeking to be excused did not assume the risk of the occurrence of that event.
And five, the parties have not agreed, either expressly or impliedly, to perform in spite of the impossibility or impractability that would otherwise justify on performance.
Jamie:It sounds like the doctrine of impossibility could provide a defense to a breach claim depending on when the contract was actually entered into. If there are agreements where performance is still required that were entered into prior to 2020, when TikTok first faced US scrutiny, then the impossibility defense would be strongest as a full platform ban wasn’t widely contemplated at that point.
Scott:I agree with you. For any agreement signed after 2020, but before April 2024, I think it’s a mixed bag as some level of platform risk was foreseeable. However, I can also see an argument that TikTok’s deal with Oracle mitigated the potential of any platform ban. Prior to the enactment of the ban or sale law in April 2024, I can see a real strong argument that That impossibility, the doctrine of impossibility would provide a good defense.
Jamie:Right. And I think in practice, the concern really has only come up and been a point of conversation over the last maybe 6 to 12 months. So the agreement The arguments that may face bigger problems applying the impossibility defense would be those entered into after April of 2024. At that point, the risk of a potential platform ban was known, and any influencer who entered into an agreement requiring posting on TikTok after the ban date likely did take on the burden of performing despite that risk of impossibility.
Scott:Yeah, I can see that. But there is an argument to the contrary because the legislation did provide the possibility of a sale and not just a ban. So as such, courts might view this differently than a straightforward impossibility case. So the question then becomes, Is it the ban that’s foreseeable or the possibility of continued operation under new ownership? Which one is more foreseeable than the other? Or how foreseeable would be the ban over continued operation under new ownership?
Jamie:It’s a good point, Scott. Now let’s talk force-major clauses. These provisions typically excuse performance when circumstances beyond a party’s control make performance impossible. A force major provision lists certain events that could constitute a force major event, and the occurrence of which would excuse performance. But here’s where it gets interesting with the TikTok situation. We We do sometimes see a force major clause lists government actions or changes in law as a force major event that may excuse performance. But what about a clause that doesn’t mention government actions or changes in laws, but only focuses on acts of God or natural disasters such as earthquakes or floods or hurricanes, war, terrorism, civil unrest? A clause that broadly mentions government actions, while one limited to So these traditional force majour events like natural disasters, really wouldn’t.
Scott:Right. I agree with you. I remember after COVID, we started seeing a pandemic listed as one of these force majeure events. But I will say most force majeure provisions I see say that a force majeure event is one that prevents performance where such failure is caused by events beyond that party’s reasonable control.
Jamie:So let’s We’ll talk practical implications and contract drafting. First, based on the evolving social media landscape and recent platform uncertainties, it seems that a force majeure provision should always be included in influencer contracts, and these force majeure provisions should probably specifically mention platform-specific risks.
Scott:I agree. Such a provision would remove any ambiguity about whether platform issues qualify as force majeure events. But let me ask you a question. Is just saying that platform unavailability or the unavailability of relevant platform features or functions, listing those as a force majeure event, is that enough? Might it also be a good idea to include specific language addressing what happens in the event of a platform issue?
Jamie:Definitely. In a perfect world, it would be great to lay out alternative performance language in the event of a platform issue. But that language would then have to address a multitude of potential platform issues. Remember, Scott, these agreements are negotiated very quickly. As a practical matter, there sometimes just isn’t enough time to ponder all of the different potential platform issues and to negotiate alternative performance options. In all likelihood, a provision requiring the parties to negotiate in good faith regarding to the deliverables and alternative performance in the event of a platform issue is more practical.
Scott:I’m sure also if you’re on the brand side, the brand would also argue that a partial refund is also just as practical and should also be in the mix as part of this renegotiation. I’m sure that compensation adjustments due to metric requirements would be on the table as well.
Jamie:Right. I can see a brand making that argument, and depending on how much the influencer has performed up to the date of the force majeure event would determine the partial refund or partial compensation.
Scott:It is true that these type of agreements move very fast. However, I think this situation highlights the importance of careful contract drafting in the dynamic social media landscape. The best protection isn’t just relying on the doctrine of impossibility or a force majeure provision, regardless of how well it’s drafted. I think it’s also anticipating and planning for platform uncertainty. Jamie, what do you guys normally do?
Jamie:Typically, we do include a force majeure provision, which addresses a situation beyond either party’s control. Sometimes it is solely brands control. But of course, when working with the influencers, we want that to be a mutual right which is another factor that plays into all of this to suspend or terminate for a force majore. But typically, we do see a force majeure provision, and the influencer is paid out for services that have been rendered up to the time that the force majeure event interrupted performance of the contract.
Scott:Jamie, let’s talk about what you have seen in the last six months, where I guess it It became clear that TikTok was not going to sell and that the ban may well have taken effect. So what have you been seeing with regard to force majeure provisions, provisions for alternative performance, et cetera?
Jamie:We have been seeing these provisions negotiated out more in the last 6-12 months. I would say if the agreement contemplates a TikTok deliverable, then in the event that TikTok is unavailable at the time of the agreed posting date, the parties will either mutually agree on an alternative platform for the influencer to post the updated deliverable on, or they will set out pre-negotiated alternatives.
Scott:How flexible have brands been on on negotiating the terms of the force majeure provision?
Jamie:Fairly flexible. I mean, it’s an issue that affects both sides. We do see the brands wanting to work with the influencers in the event that something like this were to happen. I would say that it’s generally a pretty amicable discussion or negotiation over the terms.
Scott:Compensation Compensation to the influencer in the event of a force majeure provision or compensation to any artist that performs services in the event of a force majeure provision, that’s always going to be a sticky issue and a heavily negotiated point. I know that usually artists want to be paid in full, and brands want the benefit of the bargain, and they want the benefit of what they’ve contracted for, which usually is not just half-delivered content, but the delivered content posted and the metrics proving that they got the ROI. What have you been seeing with regards to if you have at all, been seeing negotiated changes or negotiated modifications to influence or compensation in the event of a force majeure event?
Jamie:It is a sticky situation. We We typically see that the influencer will be paid out a pro-rata portion of their compensation, depending on services that have been rendered up to and including the effective date of termination for such force, major event. I will say that a lot of times that doesn’t address maybe the usage rights that the brand has also had during that period of time. So We like to incorporate that as well. It’s all a discussion. A lot of times it’s a discussion between the parties at such time because it’s really very difficult to come up with a number of what that would be ahead of time.
Scott:Would you say that this potential ban has been a lot more challenging for influencers that are primarily focused on their TikTok presence as opposed to influencers that are across multiple platforms?
Jamie:Platforms? Of course, absolutely. There are many influencers. Tiktok is their top performing platform, and it would definitely have much more of an effect on those influencers than those who have diversified their platforms.
Scott:I know that’s one thing that we always talk to our clients about is diversifying the platforms on which they rely for their and how they reach their audience. Here’s a lesson why you should listen.
Jamie:It’s a different type of content creation. They’re short form videos versus on Instagram, it’s a different ball game. Yeah, so the effects are widespread and important.
Scott:Right. Well, Jamie, thanks for taking the time to talk to us today here. I do want to point out that this is probably going to be Jamie’s today’s last podcast because she, sadly, is leaving our firm. She’s not going to another firm. Otherwise, we would wipe all presence of her off of our podcast. No, I’m joking. But she’s going in-house at a company to be working right in this creator economy space. I think we’ll probably continue to see her in a different capacity in the future. Hopefully, she’ll become an avid listener and maybe commenter on some of our podcast episodes. But it’s always been great having you. You’ve provided really great insight. You’re a really great co-host, and we’re going to miss having you.
Jamie:Thanks, Scott. This has been really fun. If you ever want me on again as a special outside guest, I’m happy to join you.
Scott:Oh, that’s a great idea. That’s a great idea. Maybe we just might do that. We just might do that. Once again, Jamie, thanks for joining us today. Thanks. Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. Thank you, the listener or viewer, for tuning in. We hope that you found this episode informative and enjoyable. If you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please leave us a comment.
Kick off 2025 by reviewing your company’s IP assets! Whether you’re new to IP protection or a seasoned pro, it’s crucial to keep track of your valuable intellectual property. Scott Hervey & Tara Sattler break down key steps in safeguarding your trademarks, copyrights, and patents on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:As 2025 kicks off, it’s time for companies to review and take stock of their intellectual property assets. This applies to every company, whether you are new to IP protection or an old pro. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. We’re going to break down how to review and safeguard your company’s most valuable intellectual property assets on this installment of The Briefing.
Tara, welcome back to the briefing. Happy New Year to you.
Happy New Year to you, too, Scott. Great to be here again.
Tara:Great to have you. Let’s jump right into this. As you know, intellectual property is a company asset, just like inventory. No CEO or CFO would think of running a company where they didn’t know the extent of company inventory. Likewise, it makes no sense for a company to not have a firm understanding of all of its potential intellectual property assets. Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks or registering copyrights, should yearly review their IP assets, and this can prove to be very beneficial.
Scott:Understanding the extent of a company’s IP holdings usually starts with what’s known to the company, such as all registered copyrights, trademarks, or patents, both domestic and foreign. After compiling a list of those IP assets, the next step would be to review what the company is using and compare that to the list of registered or pending marks for registration. Let’s discuss with trademarks since every business has at least one trademark. Outside of any registered trademarks, check your marketing and promotional materials, website, mobile app, and social media. If these materials show use of trademarks, logos, or slogans that are not already the subject of a trademark registration or application, then these marks should be cleared for use to prevent unintended liabilities, and they should be considered for possible registration.
Tara:Don’t overlook company social media accounts, as mentioned, domain names and toll-free numbers, which may also serve as potential trademarks. Does anybody use toll-free numbers anymore? I don’t know. They’re not as popular as they used to be. Be sure to confirm that all domain names and social media accounts are registered to the company. You’d be surprised at how many times a domain name or a social media account is registered to to an individual company employee or to the marketing company that created, let’s say, the company website or is doing social media engagement and not the company itself. Also, if the company has changed the graphic user interface to any of its technology products or has changed product packaging, point of sale displays, or product designs, these may also be protectable trade dress.
Scott:That’s right. Next up would be assets that are subject to copyright laws. In reviewing for copyrightable content, check the company’s website, marketing materials, manuals, YouTube videos, podcasts, posted content on Instagram, TikTok, social media, and other social media, photos, software, blog posts, articles, white paper, and all things like that. While the cost of registering every piece of content may not be economical, companies should at least maintain inventory of all copyrightable works and then make a decision from there.
Tara:Right, I agree. Let’s talk about patents. On the patent front, a company should always be aware of any new inventions under development, and it’s good practice to investigate the status of any inventions developed by company employees during the past year. Such inventions may be protectable under federal patent laws. Now, an inventor must secure a patent application within a very short period of in order to prevent the work from falling into the public domain. And that’s even shorter internationally. Companies that routinely produce new inventions should put to place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public in order to protect international patent rights and watch the clock for US patent rights.
Scott:Trade secrets are a category of proprietary assets that companies may not truly understand or appreciate. This is probably because something can either be a trade secret or not a trade secret, depending on the manner in which the company treats it. Trade secrets are items not generally known by the public, but have economical value and are the subject of reasonable precautions to maintain their secrecy.
Tara:Trade secrets can lose their protected status if they’re no longer kept secret. Specifically, if a company’s trade secret or a bit of information or items like a customer list or vendor list that a company considers to be proprietary and trade secret, if that becomes generally known to the public, then it loses its trade secret status. Also, if the company does not take steps to keep that information secret, it can also lose its protected status. Now, this includes physical security measures, also contractual security measures, and internal policies regarding data sharing.
Scott:It’s worth noting that unlike patents or copyrights, trade secrets have no set duration of protectability. However, this protection depends entirely on maintaining the secrecy like you were talking about. Scott, Scott. If the information becomes public or the owner fails to take reasonable precautions to keep it secret, the trade secret then loses its protection.
Tara:Trade secrets, as you said, they have no saturation of protectability. Some companies choose instead of filing a patent, for example, the the formula for Coca-Cola. My understanding of that is that it is a trade secret. It’s It’s not subject to a patent. It could be, but it’s not subject to a patent because patents have a duration. After that, the invention itself becomes available to the public. But as long as a company keeps something secret, like the formula to make Coca-Cola, that can live on forever. Let’s talk about items that can be protected by state trade secret laws. It includes source code and related documentation, customer lists, employee knowledge, training and experience, proprietary technologies, definitions and formulas, specifically developed customer information, sales practices, negative information, such as negative results from research and development projects, and customer and consumer surveys. Each of the above could constitute proprietary trade secrets depending on whether its owner took reasonable steps to maintain its trade secret status.
Scott:A special note about customer data. In addition to regularly reviewing IP assets, a company should regularly make sure that its privacy and data use policies comply with the manner in which it collects and uses customer and employee data. In the US, privacy laws are generally driven by state law, but there may be applicable federal law depending on the nature of the information collected.
Tara:That’s a great point. Data security and customer data laws are changing rapidly and continue to change yearly. Also, like you said, if a company conducts business internationally, it may have to adhere to the privacy laws of foreign countries. What company that’s providing either goods or services online is not doing business internationally. Almost every consumer product company that sells online is doing business internationally.
Scott:Yeah, that’s right, Scott. Now I think we’ve talked about IP assets that are known to a company. The other thing the company should do is to look into what may not be known. Sometimes, marketing departments and independent divisions spin out valuable intellectual property assets that, for one reason or another, never made it past the desk of general counsel or a responsible executive.
Tara:Now, that’s a good point, Tara. Also, intellectual property rights acquired by way of contractual agreements may sometimes be overlooked. Items that were developed or created through the use of independent contractors, such as consultants, photographers, website and application developers, other software developers, advertising agencies, media firms, graphic artists, etc. They may be company assets depending upon contract terms. If the company intends to own all of the rights including any intellectual property rights in these types of works, works created by these independent contractors, then the agreements with these independent contractors should have proper intellectual property vesting language, such as work made for higher language or/and an assignment provision, or both. If the agreements with these independent contractors were only verbal or were written and didn’t contain proper IP transfer language, then the company needs to make another resolution, make sure that it actually owns the intellectual property it paid for because it doesn’t. Sticking to this resolution would include a review of standard independent contractor and employment agreements to confirm that they have proper assignment language and proper confidentiality provisions.
Scott:Unintended liabilities can also result from a company’s interaction with independent contractors who have been hired to create something for the company. Whether it’s a website designer hired to redesign a company website, a software developer hired to work on a company’s app, a graphic artist hired to create a new logo or artwork, or a marketing professional hired to create social media assets. We’ve seen countless instances of these types of vendors taking shortcuts and borrowing assets from existing sources. Unless the company executive is closely managing these vendors when they do their work, it would be difficult to determine whether or not they engage in acts that may be considered infringement until the time that the company receives a cease and desist letter or something even stronger than that potentially.
Tara:Right. Our podcast audience couldn’t really see you include the air quotes around borrowing. I can’t tell you. We see a few of those letters every year. Our clients are always very like, How did this happen? We hired this company to create this new logo or to create this white paper or to do X, Y, or Z. This always comes up. There are precautionary steps a company can take to prevent these types of unintended liabilities. A company should always have a written agreement with vendors, which unconditionally requires them to indemnify the company for any claims of infringement resulting from the works that the vendors were hired to create and did, in fact, create. Additionally, a company should require these vendors to carry insurance that would provide coverage for such a claim It’s either errors and omissions insurance or some type of professional liability insurance, and the company should be named as an additional insured on these policies.
Scott:Those are really good points, Scott. Lastly, and most importantly, the company should have a general understanding of who they’re doing business with. A little time spent researching whether the vendor has negative claims with the Better Business Bureau, has any licensing issues, if there are generally satisfied customers, if there are any pending lawsuits, all those sorts of things can really tell a company quite a bit about the work habits and the ethics of any potential vendor they’re going to use.
Tara:Right. And That little ounce of prevention is really, it’s worth the time because the aggravation of dealing with a claim by a third party when you then can’t find the vendor or the vendor doesn’t engage with you or despite the fact that you have an indemnification provision, now you have to go after the vendor for indemnity. It’s well worth the time spent doing that investigation. After you have your IP inventory, the next step is to identify which items have protection and which do not. The company, along with counsel, should then determine which of the unprotected intellectual property assets makes sense to protect. Sometimes the cost to secure protection outweighs the potential value, or the protection is simply duplicative. It’s probably best to always do a cost-benefit analysis.
Scott:Yeah, that’s right. I think that’s why we’re talking about all of these steps and suggesting a new review each year because something that may not be worth protecting last year may actually be worth protecting this year. It’s always good to stay current with your review of all intellectual property.
Tara:No, fully agree. Companies may have new services, new service offerings, new goods that they’re selling. They may develop a new line of goods. They may have a spinoff company. Companies should always be looking at their IP assets. Those IP assets become very important when a company is sold or when you are the purchaser of another company, it’s quite a good thing, and it saves a bunch of time to have the list of IP assets in hand because it’s In the event of an M&A transaction, you’re going to have to put that all together. If you haven’t already started, it’s going to take quite a bit of time to put that entire list together.
Scott:But time well spent.
Tara:Right. Thanks, Tara, for joining me today.
Scott:Thanks, Scott.
Tara:That’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
The Ninth Circuit recently upheld a ruling allowing a class action against NeoCortex, the creators of the Reface app, over the unauthorized use of content creator Kyland Young’s likeness. This case highlights the growing tension between AI innovation and individual rights. Scott Hervey and Jamie Lincenber discuss the lawsuit and what it means for AI companies using digital likenesses on this installment of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott: Recently, the Ninth Circuit upheld the District Court’s refusal to throw out a proposed class action brought by a one-time reality star based on the use of his face by an AI-based face-swapping application. The tech company, NeoCortex, argued that its use of the TV star’s face didn’t violate his publicity rights and moved to dismiss the case under California’s anti-slap laws. Both the District Court and the Ninth Circuit on appeal rejected NeoCortex’s This is Motion to dismiss.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my colleague, Jamie Lincenberg. We are going to talk about this case and its broader implications for AI companies whose business playbook involves exploiting the likeness of others on today’s installment of the Briefing.
Jamie, welcome back to the briefing.
Jamie: Thanks, Scott. It’s always good to be here.
Scott: Yes, this one, I think, is going to be a real fun one, Jamie. How about we get into this one? Kylin Young brought this suit against Neocortex. Neocortex is the creator of the Reface app. Jamie, have you used the Reface app?
Jamie: I haven’t. No, but it sounds fun.
Scott: It does sound fun. I haven’t used it either. I’m going to have to give it a shot here. Okay, so Mr. Young alleged that Neocortex used his likeness without consent to promote the Reface app. Reface, it’s an app that allows users to superimpose their faces onto celebrities and images and videos. Kyla Dylan was a cast member of a few reality shows, including Big Brother. The Reface preset catalog contains videos and images of Young from his appearance on Big Brother.
Jamie: Young claimed that Neocortex used Young’s likeness in promotional watermarked clips to advertise their subscription service. He argued that the watermarked images created with the free version of Reface were teasers and that the watermarks incentivized users to pay to remove them. They serve as free advertising to attract new downloads of the Reface application. He also alleges that the images generated with the pro-version of Reface are paid products that would then constitute commercial use and purpose.
Scott: He alleged that this all violated California’s right of publicity statute, specifically, Section 3344 of the Civil Code. We’re all very familiar with 3344, and anybody who listens to this podcast knows we talk a lot about 3344. So Section 3344 prohibits the use of another person’s name, voice, signature, photograph, or likeness in any manner on or in products, merchandise, or goods, or for the purpose of advertising or selling such products, merchandise or goods without such person’s prior consent. Young brought a class action on behalf of all other individuals whose name, voice, and likeness were used to promote the Reface app without their consent.
Jamie: So on the surface, this case probably seems rather cut and dry, but we all know that’s rarely the case. At the district Court level, Neocortex filed a motion to dismiss under California’s anti-slap statute.
Scott: Right. So procedurally, the district Court denied Neocortex’ motion to dismiss. Neocortex appealed, and the Ninth Circuit upheld the district Court’s decision. So I I thought it would be good to look at where the district Court and the Ninth Circuit were aligned, because that’s going to be very informative for both AI companies whose playbook involved using individuals likenesses, and also maybe for potentially future aggrieved individuals.
Jamie: Right. Yeah. To set the stage, California’s anti-slap statute is designed protect defendants from lawsuits that might stifle their right to free speech or petition. California’s anti-slap statute is a two-step process. The first step, the defendant must show that the plaintiff’s claims arise from an act in furtherance of their right to free speech or petition. Step two, if the defendant makes that showing, the burden shifts to the plaintiff to demonstrate a likelihood of prevailing on the merits their claim.
Scott: In this case, Neocortex argued that its use of Young’s likeness and promotional watermarked clips was part of its constitutionally protected commercial speech aimed at promoting its app. Thus, it contends ended the claims fell within the scope of the anti-slap statute. The District Court essentially agreed. It said, wrongful or not, Neocortex use of Jung’s image as a tool to provide users with a mode of creative expression is conduct in furtherance of a user’s free speech rights.
Jamie: On appeal, the Ninth Circuit assumed, without really deciding, that Neocortex satisfied the first step of the anti-slap test.
Scott: Right. I think that’s really because all the action is really in the second part of the analysis, determining whether Jung demonstrated a probability of prevailing on the merits of his claim.
Jamie: So The Neocortex argued that Jung failed to show that Neocortex violated his right of publicity on three grounds. The first is copyright preemption. The second was that Neocortex used was First Amendment transformative use. And thirdly, that Neocortex lacked knowledge that it was specifically using Jung’s likeness.
Scott: So let’s take those one step at a time. As to copyright preemption, the district Court found that Young’s claim was not preempted. The reasoning is rooted in the nature of publicity rights. Unlike copyrights, which protect creative works, publicity rights protect a person’s name and likeness. The Court emphasized that the claim targeted the misuse of Young’s likeness in advertising, not the distribution of a creative work. Because Young’s allegations center on how his name and likeness are used in Neocortex products and not on the ownership rights to the image itself, Young’s claim in the complaint does not fall under the subject matter of copyright, and his claim is, therefore not preempted under the Copyright Act.
Jamie: Right. The Ninth Circuit agreed with the district Court on this.
Scott: Right. That’s correct.
Jamie: Let’s now talk about the transformative use argument. The transformative use defense assesses whether a person’s likeness is merely a raw material for creating something new or if it’s the core substance of the work. Neocortex argued that the refaced generated clips were transformative, but the District Court didn’t quite buy that.
Scott: Right, it didn’t. The District Court noted that the clips still portrayed Jung in roles that aligned with his public persona, not as something distinct or creatively altered. Neocortex would only be entitled to the defense as a matter of law if no trial or fact could reasonably conclude that the resulting clips or images were not transformative. However, a trial of fact could reasonably conclude that the neocortex’s use of Jung’s likeness was not sufficiently transformative, given Jung’s allegation that the resulting clips and images featured Jung in the roles for which he is known.
Jamie: Right. And so the Ninth Circuit upheld the District Court’s conclusion.
Scott: Right. And I think this is an important takeaway for establishing transformative use of an individual’s likeness. Using a likeness in a way that doesn’t significantly alter its context or meaning likely won’t qualify as transformative under California law, and therefore, that use probably still could be actionable under 3344.
Jamie: Lastly, both the District Court and the Ninth Circuit addressed Neocortex’s contention that Young failed to show that Neocortex had knowingly used Young’s identity in the re-face application. The court highlighted that Neocortex made its database searchable, potentially allowing users to identify specific individuals, including Jung. This level of customization really suggests Neocortex likely knew they were using Young’s likeness, even if not explicitly stated.
Scott: Yeah, that makes a lot of sense, the court’s conclusion here, when you think about it. Somebody at Neocortex needed to include a meta tag on the video or images that Young appeared in, and they needed to include Jung’s name in that meta tag. Otherwise, the images that included Jung would not be searchable. Someone needs to enter the data that allows users to search for those individuals or other things. I think the court’s finding that knowledge was essentially imputed in the neocortex makes a lot of sense. However, let’s take a step back. This It’s the contention that knowledge is required under a right of publicity claim under 3344, it’s a very interesting contention when you think about it. Usually in a right of publicity case, the issue of knowledge, it’s not really an issue. Generally, the defendant knows whose image, whose likeness it was using.
Jamie: Right. Yeah. The district Court doesn’t really address whether this is an actual requirement. It said, even assuming that 3344A requires a defendant to affirmatively know that it’s using a specific plaintiff’s likeness likeness. Young’s allegations support a reasonable inference that Neocortex knew that it was using Young’s likeness. The court may have to go deeper into this later on if the case persist.
Scott: Right. But I think there might be a danger in this. There might be a danger in this opinion and the court leaving it open, whether or not 3344(A), a claim requires knowledge, because I think what you’re going to start to see then is where claims are brought, right? A publicity claims are brought under 3344A. A defendant is going to allege, or not allege, a defendant will begin to try to defend that claim by saying that the plaintiff hasn’t established knowing use by the defendant. So we’re going to see this requirement or an allegation that knowledge is a requirement of 3344(A), I think we’re going to start to see it start to proliferate right of felicity cases. So I think not nipping this in the bud might present a problem down the road, because if I was representing a defendant in a 3344A case, I certainly would defend the case on every ground that’s reasonably possible, including the lack of knowledge by the defendant.
Jamie: Right. Yeah, I agree.
Scott: Yeah. But let’s talk about what this case means for AI developers and evolving landscape of digital likeness rights.
Jamie: Well, the case definitely underscores the tension between innovation and individual rights.
Scott: It does. We know that there is a hodgepodge of state laws that address this type of tension. This type of activity is prohibited Probably prohibited in Tennessee under the new Elvis Act. It would probably also be in violation of the proposed federal No Fakes Act.
Jamie: Yeah, it’s a cautionary tale for AI developers. We all know that tech companies like to move fast, but in dealing with publicity rights, AI developers really need to carefully navigate how they’re using identifiable personal features in their products, and especially for marketing purposes.
Scott: Agreed, completely. At the state level, as we mentioned, there are already laws on the books that specifically target the use of famous individuals likeness is both dead and alive within an AI product. At the federal level, like I said, while it would probably be a violation under the proposed federal No Fakes Act, It’s a bit unclear which way the winds may blow as a result of the election. But I think that this is a non-partisan issue, and it probably deserves federal review, but we’ll see. As of this week, there’s a new AI czar, so we will see what happens here.
Jamie: Yeah. One more thing It also seems relevant to point out that there are ways that Neocortex may have been able to secure these rights without having to go directly to the user.
Scott: I agree. It’s not clear to me whether Neocortex actually licensed these clips from the broadcast networks. As we know, working in this space, the producers and broadcasters of programming programs like this, specifically, non-scripted television programs, generally obtain pretty broad use rights for the content. I would suspect that the be right granted by Young to the producers of Big Brother would probably include this type of use had Neocortex licensed this content from the producers of Big Brother. I don’t know whether they did or didn’t. That’s not part of this case. Maybe we’ll know as this case goes forward. I guess we’ll see, right?
Jamie: Yeah, we’ll see. I think a common thread that I’m finding with a lot of these AI cases is that at the moment, there’s really no great way of monitoring all of this use. It’s so widespread that I think that becomes a major concern.
Scott: Yeah, I agree.
Jamie: I don’t know the fix there.
Scott: Well, I guess there’s a business there for somebody who wants to be in the business of monitoring new AI platforms’ use of potentially infringing content, because you’re right. There’s a lot of platforms and a lot of content and a lot A lot of new uses of GAI type of content, and it’s challenging to keep abreast of everything that’s out there. There’s a business for somebody there for sure.
Jamie: Definitely.
Scott: Yeah. Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or the viewer for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
In part 2 of our social media marketing series, Scott Hervey and Jessica Marlow deep dive into the unique legal risks brands face when navigating social media. From FTC compliance to IP infringement and content clearance, discover the essentials for protecting your brand in the digital age on this archive episode of The Briefing. Find part one here.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:Brands spend a lot of money on social media marketing, and that amount continues to grow. According to a recent survey, ad spend on social media is projected to reach 129 billion in 2024. However, social media marketing presents unique legal issues, not generally present in more traditional advertising. Last week, we discussed the legal risks for the celebrity endorser in social media marketing. This week, I’m joined again by my partner, Jessica Marlow, and we’re going to discuss the legal risks for brands in social media marketing. I’m Scott Hervey with Weintraub Tobin; this is “The Briefing.”
Jessica, welcome back.
Jessica:Pleasure to be back.
Scott:Last week, we discussed the risks celebrities or influencers face in social media marketing. Today, we’re going to talk about the risks brands face in social media marketing. Let’s first talk about FTC compliance. Like influencers, brands have FTC compliance requirements. As you mentioned last week, Jessica, we did an entire episode on this.
Jessica:Right, but let’s review a few points because it seems that this can be one of the biggest blind spots for brands.
Scott:Sure, you’re right because this really is the biggest blind spot for brands. Previously, the FTC would hold an advertiser liable for misleading or unsubstantiated statements made through endorsements when there is a connection between the advertiser and the endorser. Now, the FTC has recently deleted the wording when there is a connection between the advertiser and the endorser. So generally, there’s always a connection between an advertiser and an endorser because it is, after all, a marketing or a promotional message. However, the FTC pointed out that a connection is not always needed for an advertiser to be liable for an endorsement. If, for example, an advertiser retweets a positive statement made by an unrelated third party or publishes in an advertisement a positive review by an unrelated third party, those statements or reviews become endorsements for which an advertiser may be liable. The despite the lack of any connection.
Jessica:Right. Then, there are performance claims. Performance claims must be for the typical result. If the results being hyped are atypical, then the advertiser must clearly and conspicuously disclose the generally expected performance in the depicted circumstances. To be effective, the disclosure must alter the net impression of the advertisement so that it’s not misleading.
Scott:If the brand is reposting content from a paid endorser or someone who received anything of value to make that initial post, the brand must make sure that the material connection between the brand and the endorser is conspicuously disclosed.
Jessica:In boosting, upvoting, reposting, pinning, or liking consumer reviews of products, a brand should not take action that have the effect of distorting or otherwise misrepresenting what consumers think of their product. This includes suppressing or deleting negative reviews or comments.
Scott:Like risks with FTC compliance, similar to influencers, brands also face IP infringement risks. In an influencer marketing campaign, a brand will hire an influencer to create content for the purpose of endorsing and promoting a product. Even though the contract between the brand and the influencer generally requires the influencer to create the original content and not use content that belongs to someone else, sometimes that doesn’t happen. Sometimes an influencer may use, whether intentionally or unintentionally, content that doesn’t belong to them. If that happens in an integration post, the brand faces a risk of being tied up in the copyright infringement case.
Jessica:True. As an example, let’s look at the O’Neill versus Ratajkowski case. In that case, model Emily Ratajkowski posted a photo of her outside of a flower shop in downtown Manhattan. The photo showed Ratajkowski with her face covered by the bouquet of flowers. O’Neil sued Ratajkowski and her loan-out company for copyright infringement. But it’s important to note that the content used doesn’t necessarily have to be the entire photo. It could be many things, an image, footage, or even music. The infringement by the influencer may not be intentional. It’s amazing how many people who make their living by posting content think that if something’s on the internet, it’s available to be used.
Scott:That’s so true. Even though the agreement between the brand and the influencer may have an indemnity provision, as we said last week, indemnity is only as good as the indemnitor’s pocketbook. While an influencer may contractually have an obligation to indemnify the brand, if the influencer doesn’t have the resources to mount a defense, the defense will end up falling on the brand.
Jessica:Right. Occasionally, brands will use UGC or user-generated content on a brand’s social media account. What may be okay in an ordinary person’s post, such as a photograph with multiple cosmetic brands, could become trademark infringement if a brand were to post the same image on its own social media accounts.
Scott:That’s right. That could present a big problem for a brand. It’s not so much of the risk that comes from the brand’s interaction with the person that originally created the post or its interaction with the UGC. It’s more that the brand’s social media manager not really understanding the the complexity of the risks involved in using that post as an endorsement.
Jessica:Sometimes, it’s also social media representatives who believe that just because something is on the internet means it’s available to be used, or they think that just because an image is in a meme generator, that meme that includes someone else’s image may be freely used by the brand. Failing to understand that just because content is on the internet doesn’t mean it’s available for use can be legally problematic for a brand. Similarly, failing to review the license agreement or terms of use for that meme generator site or photo library site could also be legally problematic. I can’t tell you how many times I’ve looked into a library or a meme site’s terms of use, and I found that they make no representations or warranties whatsoever about having any licenses and don’t provide any indemnity.
Scott:Another area where I see brands have issues with is using a stock library where they fail to understand the limitations on the usability of image designated as editorial only. Generally, when an image is designated as editorial only, this means that some type of necessary clearance element, an element that would make the image safe for commercial use, is missing if a brand uses an image that is marked as editorial only, that could have fairly significant legal issues.
Jessica:True. If that stock photo contains an image of a person and that person’s rights have not been cleared, then the brand could be facing a right of publicity lawsuit, and if that person is famous, a false endorsement claim.
Scott:So, as you can see, there are a fair number of risks that need to be navigated when it comes to brands and social media marketing. Now, these risks can be navigated. We do it all the time, and brands do it all the time. But, it does require thoughtfulness. I think one key takeaway here, Jessica, tell me if you agree, is start with a general understanding that just because it’s on the internet doesn’t mean that it’s available for use. And treat clearance as if you were producing a television show. We take television clearance very seriously, but somehow, for whatever reason, that doesn’t seem to translate all the time to digital marketing. I think if brands and their staff approach digital marketing with that degree of caution, there might not be so many issues.
Jessica:I agree completely. It really comes down to doing your due diligence, because if you don’t, the potential liability could be massive.
Scott:I understand that digital marketing moves fast, but liability is expensive, and it’s worth slowing it down just a little bit.
Jessica:Absolutely. Where’s to live by? Yeah.
Scott:Thanks for joining us again, Jessica.
Jessica:Thank you for listening to this episode of “The Briefing”. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
While influencer marketing has become popular in the creator space, it doesn’t come without risks. From IP infringement to FTC compliance, Scott Hervey and Jessica Marlow discuss the key issues surrounding brand endorsement deals in this archive two-part episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:
Influencer social media marketing is big business, whether it’s a brand integration on Instagram by an influencer or a long-term brand endorsement deal by an A-list movie star. Each deal is different, but there are similar issues that are apparent in all brand deals. I’m Scott Hervey with Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. Today is part one of our profile on understanding and navigating risks in brand marketing deals on today’s installment of “The Briefing” by Weintraub Tobin.
Jessica, welcome back to “The Briefing.”
Jessica:
Thank you. Happy to be back.
Scott:
This is something we both deal with frequently from both the brand and the talent side. There are certain risks that celebrities and brands have to navigate in these types of deals. Making these risks more prevalent is the fact that we’re talking about digital marketing, where things tend to move quicker. And for whatever reason, people, even marketing professionals, may sometimes believe that the laws applicable to terrestrial or regular advertising don’t apply to the Internet. Let’s talk about our top general risks from a talent perspective and how to deal with them. Now, we have a bunch of lawyers that listen to our podcast, and you might have a different list, and we would love to hear from you if you think we should have covered something that we didn’t. But this is what we think are the top legal issues in a talent brand deal.
Jessica:
One of the major risks is IP infringement. Now, this is multifaceted, and the risk of infringement comes from a few different places. First, there is infringement risks that the celebrity or influencer imposes on themselves, which can happen in a few ways. The first way is by using content where the copyright is owned by a third party, for example, where a celebrity or influencer posts an image that they don’t own. You’ve covered a few cases on “The Briefing” about this.
Scott:
That’s right. One of the more well-known case is what is O’Neill versus Ratajkowski. While that case didn’t necessarily involve brand marketing, it’s a perfect example of this type of risk. In 2009, O’Neill, who was a professional paparazzi, took a photo of Ratajkowski outside of a flower shop in downtown Manhattan. Now, the photo showed Ratajkowski with her face covered by this bouquet of flowers. O’Neill subsequently registered his photograph with the Copyright Office. Now, shortly after O’Neill posted the photo online, Ratajkowski posted the photo on her own Instagram account. The photo she posted was the same, except that she added the words “Mood Forever” to the bottom of the Instagram post. Now, O’Neill, of course, sued Ratajkowski and her loan-out company for copyright infringement.
Jessica:
Right. And Ratajkowski tried to get out of the case on a fair use defense on a motion to dismiss, but she was unsuccessful. And this case was before the Supreme Court ruling in Warhol versus Goldsmith. Under the new fair use analysis, it’s almost certain that Ratajkowski would not have had a fair use defense.
Scott:
Yeah, that’s true. And this type of liability isn’t just limited to cases where the photo that is used makes up the entire post. This type of potential liability can exist where the third-party photo only makes up a portion of the poster video.
Jessica:
Right. It’s just not limited to photos. This could be a video or other similarly copyrighted, protected material like music or logos.
Scott:
Yeah, and music can be a bit tricky. You would think that almost everyone would understand that you can’t just use your favorite band sound recording in a YouTube video or Instagram story. Unless, of course, it’s offered as music library content from the platform. But you still see that happening.
Jessica:
True. But where there tend to be more problems with music is not in the use of the sound recording, but in the use of the composition. As you know, there are two copyrights in music. One copyright covers the actual sound recording, and those rights are generally owned by the record company. The other copyright is in the composition, meaning the actual music and the lyrics. The copyright in the composition is generally owned by either a music publisher if the song have a publishing deal, or by the songwriters themselves. When you normally see issues of publishing is where the celebrity or influencer performs as in sings the song.
Scott:
Now, normally, if you are a celebrity or influencer and you want to record the performance of a song, you have to get what is called a synchronization license from whoever holds the publishing rights in the music, whether that be the publisher or the songwriters. Without obtaining a sync license, your recording and subsequent broadcast of the performance of the song is copyright infringement.
Jessica:
So not only is this a potential issue for the endorser with the owner of the copyright, but this also could result in a big issue for the brand. First, it’s likely to constitute a breach of the agreement with the brand and result in the endorser not getting paid. Also, if there’s any action by the copyright holder, then the endorser will likely have to indemnify the brand.
Scott:
Yeah, that’s right. Now, there is another type of infringement risk that an endorser potentially faces. And this one usually comes as a big surprise to endorsers and, frankly, their agents. That’s the endorser’s exposure to either a trademark or a copyright infringement claim based on something the brand does. Now, we previously talked about a trademark case where Molly Sims was sued for trademark infringement, all because of a of a sponsored post she did for a beauty product, which another cosmetic company claimed infringed its trademark.
Jessica:I remember that case well. Sims’ involvement in the matter was no different than any other influence or marketing campaign. As part of a product launch, the defendant cosmetic company hired Sims to post a review of its product on her blog. Sims’ blog post acknowledged that the review was sponsored, as she’s required to for the FTC, and included a link to the defendant’s website. The plaintiff, a competing cosmetic company, sued the defendant cosmetic company and Sims for trademark infringement and other related claims.
Scott:
So, Sims tried to get out of the case early, but the court denied her motion to dismiss. In order to establish direct trademark infringement, the plaintiff must establish the use of its mark by the defendant in commerce and the likelihood of confusion. The judge found that the plaintiff had adequately pled that the blog post was likely to cause confusion as to the source of the product and that Sims’ post was essentially advertising, thereby satisfying the use and commerce requirement. Sims raised some arguments why her use should not constantly trademark infringement as a matter of law, including that the blog post was non-commercial editorial speech. The court said that because this was paid content, it crossed the line from editorial or consumer commentary to commercial use.
Jessica:
Most endorsers don’t appreciate that a one-off integration for a brand could land that endorser right in the middle of a trademark infringement case. This is why we always fight hard to get indemnity from the brand in every deal we do. But as mentioned in your coverage of the Sims case, indemnity is only as good as the solvency or the corporation of the indemnitor.
Scott:
Speaking of solvency of the indemnitor, this brings to mind the rash of promoter liability lawsuits against the celebrity endorsers from the fallout over FTX’s bankruptcy. If I told Tom Brady, Giselle Bündchen, Steph Curry, and Shaquille O’Neal that they could face potentially millions in civil liability all because they just appear in a TV ad for FTX, they and their agents probably would have laughed me out of the room. But that’s what’s happening now. Tom Brady, Giselle Bündchen, Steph Curry, Shaquille O’Neal, and others are all defendants in massive lawsuits seeking to hold these celebrities liable for the money’s lost by FTX customers. The customers claim that the celebrities were promoting unregistered securities which fall under the Regulatory Authority of the Securities and Exchange Commission. Under federal law and securities law, anyone who promotes a securities offering has a legal duty to ensure that the information they publish is complete, accurate, and not misleading.
Jessica:
And not only is there potential civil liability, but there’s also potential liability from the SEC. In March 2023, the SEC announced charges against multiple celebrities who were accused of participating in a fraudulent scheme to promote TRX and BitTorrent cryptocurrency securities. The SEC alleged that the celebrities violated federal law by illegally touting the TRX and the cryptocurrency without disclosing that they were compensated for doing so and the amount of compensation. And these penalties can be substantial. In October 2022, Kim Kardashian entered into a $1.26 million settlement with the SEC following its investigation of her online promotion of EMAX tokens. According to the SEC, Kardashian failed to disclose the payment that she received when promoting the crypto asset security on social media.
Scott:
And your example is a perfect lead in for the next potential legal landmine, and that’s an endorser’s failure to comply with the FTC disclosure guidelines.
Jessica:
Right. That is a big issue. We did an entire episode on that and the recent changes to the FTC guidelines, so our audience should certainly listen to that episode. Scott, I think we should cover on an additional episode sort of the risks related to product liability and when an endorser is promoting a product, particularly if we’re talking about food or skincare or makeup, ingestible, vitamins, those sorts of products, and where the liability could ultimately lead for our celebrities and our influencer clients.
Scott:
Yeah, absolutely. That’s a huge topic and certainly would need its own episode.
Jessica:
Absolutely. But next week, we’re going to cover the company side of the legal risk coin.
Scott:
Yes, we are. I’m looking forward to that. Jessica, thanks for joining me today.
Jessica:
Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Get into the holiday spirit with a look at some of the most unique Christmas patents ever filed. From Santa detectors to upside-down Christmas trees, Scott Hervey and Jamie Lincenberg explore festive inventions that add a little extra cheer to the season on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:Welcome to a special holiday edition of The Briefing. Today, we are decking the Halls with a look at some of the most unique Christmas-related patents ever filed, at least in my opinion. That’s right, the spirit of invention doesn’t take a break during the holiday season. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my colleague, Jamie Lincenberg. We are going to examine these festive follies of intellectual property. So grab your eggnog, snuggle up, and let’s dive into five truly unique Christmas-themed patents on today’s installment of The Briefing.
Jamie, welcome back. Are you ready for this? Do you have your Santa hat nearby?
Jamie:I’ll grab it in a minute, but you have to put yours on, too. Okay.
Scott:Well, I don’t happen to have one nearby, unfortunately. That was really a mistake in prepping for this episode. I really should have brought my Santa hat. Oh, well. Okay. First, let’s just point out, neither of us are patent lawyers. This is really more for humor than anything else. Second, I want to point out in doing my research for this episode, there are a lot of Christmas patents out there.
Jamie:Well, that makes sense. Scott, Christmas is a big business.
Scott:It is. It This is a big business. All right, so kicking things off, let’s talk about the Santa detector. Every kid wants to try to spot Santa, and this device purports to give kids an edge on the elusive elf. This patent, filed in 1996, is for a device designed to detect Santa Claus entering your home. I mean, isn’t that what the ring camera and ADT is all about, too? This patent application says, In the minds of young children, Santa Claus’s arrival is denoted by the presence of Christmas presents under the tree and/or Christmas stockings filled with treats or cold, depending upon whether you’re good or bad. That was not in the patent application. That was my ad lib. The patent continues on. However, none of these customary practices nor any prior art arrangements known to the applicant provides a Christmas stocking that is capable of being selectively illuminated to signal the arrival of Santa Claus. This ingenious gadget uses motion detectors, sound sensors, and even a Christmas tree light to trigger to alert an eager kids when the big man makes himself available. It’s like a ring, doorbell for Santa, only much less practical.
Jamie:Imagine the chaos if it went off every time Uncle Bob wandered into the living room for another round of Christmas cheer.
Scott:Oh, yes, I’m sure everybody has an Uncle Bob. Unfortunately, though, Jamie, it seems that kids will have to use a less high-tech mechanism for spying on Santa. This patent expired in 2014 due to failure to pay maintenance fees.
Jamie:Well, maybe the inventor was on the naughty list.
Scott:Oh, maybe he was.
Jamie:This next one seems very practical. For people that If you don’t live in California and Arizona, where it tends to be in the mid ’70s all December long, this patent application is for a Christmas tree watering system, which aims to solve the age-old problem of crawling under your tree to add water. It’s a simple setup, a water reservoir in the shape of Santa with a water hose that extends from it to another hidden reservoir under the tree. Functional? Sure. Festive? Absolutely. Creepy? 100%. No one wants to see a water hose extending from Santa’s rear end that doubles as a tripping hazard at 2 AM after the office holiday party.
Scott:That’s right. I love that. The picture that’s in the patent application here. They’ll put it up on screen. It’s hilarious. Okay. Now, this patent probably ended up being big business for the inventor and probably also a ton of business for the lawyer employers, tasked with patent enforcement. Now, on the non-legal side, it also brings some serious holiday cheer to your daily commute. It’s the Antler Vehicle Ornament. This 2014 design patent protects a festive adornment for your car, a set of Reindear antlers to transform your vehicle into comet on wheels. Now, I know what you’re thinking. Isn’t this just another way to embarrass my car? Well, hold on. This patent adds flair to the functional. With sturdy clips for the antlers, it ensures your car can spread holiday joy while cruising down the highway without losing its festive accessories.
Jamie:Let’s face it: who wouldn’t smile at a minivan decked out as one of Santa’s reindeer? Unless, of course, it’s cutting you off in traffic. In that case, you probably wouldn’t be so jolly.
Scott:That’s right. This invention turns the most mundane aspect of your life, your daily commute, into a holiday spectacle. Even more of a spectacle if one of those antlers goes flying off on the 405. Children, avert your eyes from the run-over antlers on the side of the road.
Jamie:All right, next up on our list of holiday innovations, the invertible, artificial Christmas tree. That’s right. Someone out there thought, what if we turned Christmas Christmas upside down, literally. This genius or possibly diabolical idea flips the traditional tree on its head, creating a design that’s narrower at the bottom and wider at the top. Now, picture a tree that defies gravity or perhaps just confuses everyone at your holiday party.
Scott:All right, so what is the point of this topsy-turvy Tanenbaum?
Jamie:It’s meant to save space and make stories. Garage easier. However, might it be more fun to actually decorate this tree upside down? After all, with the wide end at the top, you’ve got more room for presents underneath. Or, depending on how you look at it, you’ve created a holiday vortex where gifts might get sucked into the void.
Scott:It actually might make people think they’ve consumed a little too much holiday cheer at a holiday party, as well as seeing an upside-down Christmas tree. All right, so practicality aside, it certainly would be a conversation starter. Imagine the debates this tree could spark. Is it a symbol of holiday innovation or just a sign that we’ve gone too far with Christmas decor? If you’re looking to turn tradition on its head and have a sense of humor about your holiday decor, this might just be the tree for you.
Jamie:It’s perfect for those who may have been on the naughtyy list. What better way to say, I’ll celebrate Christmas, but I will do it my way?
Scott:All right, last Last up. Let’s dive into a holiday invention that brings a whole new level of accountability to your Christmas celebrations, the Naughty or Nice Meter. This patent application proposes a device that can scientifically determine whether someone has been naughty or nice. Because why rely on Santa’s mysterious list when you can quantify morality with a machine? Here’s how it works, or it’s supposed to work. The meter includes sensors to measure biometric data like heart rate or skin conductivity, combined with algorithms to assess behavioral inputs. The result? A definitive score labeling you as either naughty or nice. It’s basically a lie detector that meets Santa’s workshop.
Jamie:Imagine the chaos that this could cause at holiday office parties. Want to raise? Let’s attach you to the meter.
Scott:I could see that. However, I think for our industry, I think there might be a direct correlation between a high or naughty reading and a bigger bonus. Of course, I’m kidding, lawyers. Save your emails. Don’t take offense.
Jamie:The patent also mentions a version for kid. Now, that is a parenting game changer. Forget empty threats of Santa’s watching. Now, you’ve got a blinking gadget that will call them out in real-time. It is fun and it’s festive until your child spends the rest of December trying to hack the system.
Scott:But let’s not ignore the potential for holiday drama. Who decides the criteria for naughty versus nice? Is skipping the gym naughty? Not necessarily. Is saving the last cookie for yourself a nice act of self-care? Absolutely. These are philosophical questions I think that no gadget can answer.
Jamie:Still, you’ve got to hand it to the inventors. They have found a to mix holiday magic with a bit of tech-savvy mischief. Whether it’s a hit or a hilarious flop, the Naughty or Nice meter is sure to add some high-stakes fun to your Christmas traditions.
Scott:I really like it, though, as a parenting tool for the month of December. I really think it’s a way to bring kids in line for December. You’ve got to add that with the elf on the shelf, right? And you’ve got it locked down. You’ve got the kids locked down.
Jamie:Perfect combo.
Scott:Yeah. There’s There you have it. Five festive patents that prove inventors don’t take the holiday off; whether it’s catching Santa, watering your tree from Santa’s bum, dressing up your car, or using a behavior compliance machine, these patents add a dash of humor to the holiday season.
Jamie:While most of these inventions may never end up under your tree, they remind us that creativity knows no bounds, even during Christmas.
Scott:Jamie, happy holidays.
Jamie:Thanks. You too, Scott.
Scott:Well, that’s all for today’s holiday-themed episode of The Briefing. Thanks to Jamie for joining me on this Mary Jaunt through some funny holiday patents. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
Can an influencer sue another for having a similar aesthetic? Scott Hervey and Jessica Marlow dive into a Texas case that could reshape creator marketing on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:Can a natural beige and cream aesthetic be protected? There’s a case pending in Texas, a lawsuit brought by one social media influencer against another social media influencer in which the plaintiff claims that the defendant copied her look. Can you protect a look? I don’t think so.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. We’re going to discuss the case of Sydney Nicole versus Alyssa Shell and its potential implications on the creator marketing industry on this installment of The Briefing. Welcome back, Jessica. It’s been a while.
Jessica:Well, thank you for having me. I’m very interested in this case and looking forward to talking it through.
Scott:Yeah, this one is just right up your alley for sure. Can you give us some background on the case?
Jessica:Absolutely. This case involves two influencers who both operate in the same niche, promoting Amazon products. Sydney Nicole Gifford, the plaintiff, filed a lawsuit against Alyssa Shell and her company, alleging that Shell copied Gifford’s entire online persona, including her Instagram and TikTok posts, Amazon storefront layout, and even the designs of apparel Gifford created through Amazon. Gifford claimed that Shell replicated her esthetic, described in the lawsuit as a neutral beige and cream brand identity to mislead followers and increase her own earnings from sales commissions.
Scott:So Gifford’s complaint included a wide range of claims, totaling eight. Copyright infringement, vicarious copyright infringement, trade dress infringement, misappropriation of likeness under Texas law, tortuous interference, unfair trade practices, and unfair competition, unjust enrichment, and violations of the Digital Millennium Copyright Act or DMCA. Shale moved to dismiss the complaint or parts of the complaint, arguing essentially that she has not broken any laws by making social media posts like Gifford’s. In ruling on Shale’s motion to dismiss, the magistrate judge noted that this appears to be the first time a court has looked at whether one influencer can sue another for copyright infringement and other claims based on the similarities in their social media posts promoting the same products.
Jessica:Of the six claims, the court dismissed three: tortuous interference, unfair competition, and unjust enrichment. Let’s talk about the claims that the court didn’t dismiss. The first is claims for vicarious copyright infringement.
Scott:And we should be clear, the reason why the court didn’t address the copyright infringement and trade dress infringement claims is because Shell did not move to dismiss those. So to establish vicarious copyright infringement, a Plaintiff Must Plead, Direct Infringement by a third party, the defendant’s right and ability to supervise the infringing conduct, and the defendant’s direct financial interest in the infringing activity. The last element that Shell had a direct financial interest in the infringing activity would easily be established if Gifford could prove the first two elements. That’s what both the court and Shell focused on. As to the first element, Shell argued that Gifford failed to allege any act of infringement by a third party since Gifford accuses both Shell and her entity of direct infringement. Gifford clarified that the vicarious infringement claim was not an attempt to hold Shell liable for the direct infringement committed by Shell’s company and vice versa. Rather, the claim was an attempt to hold both of them liable for the vicarious copyright infringement of Shell ‘s followers.
Jessica:And the court was satisfied with this allegation.
Scott:That’s right. The court, or the magistrate judge in our case, determined that Gifford successfully pleaded direct infringement by third parties, the followers, by alleging that these third-party, Shell ‘s followers, accessed, downloaded, interacted with, and/or viewed the allegedly infringing content, which was Shell ‘s posts.
Jessica:And next, the court addressed the element of a defendant’s right inability to supervise. Shell argued that while she may control her own social media platform, she does not have control over the viewers and followers.
Scott:In responding to that, the court pointed out that while it does not appear that any The E. Court has addressed whether a social media user has the right and ability to supervise their viewers or followers, other courts have found that the ability to block infringers’ access to a platform to be sufficient to establish the right and ability to supervise. In this case, Gifford alleged that Shell controlled what content was posted and which users could follow Shell’s various social media accounts. The court reasoned that similar to a case where a defendant could block access to an online bulletin board preventing infringement, Shell could police her accounts to control third-party access to allegedly infringing content. In other words, Shell could control which of her followers could access the content that she was posting, which was allegedly infringing Gifford’s copyright.
Jessica:Interesting. The court determined that construing the facts in the light most favorable to Gifford, as is required when evaluating a motion to dismiss, she sufficiently pleaded Shell’s right inability to control the alleged third-party infringement by exercising control over the allegedly infringing content on her platforms and the third party’s ability to access that content.
Scott:Yeah. I mean, to me, I think it’s circular. But okay, let’s get on to the next one. The next claim that was not dismissed was for a violation of the copyright management information provisions of the DMCA. Now, to properly state a claim, Gifford had to allege that the copyright management information or CMI, existed in connection with with the copyrighted work, that Shell distributed copies of the copyrighted work, and that Shell knew that the CMI was removed or altered, and that Shell l knew this would lead to infringement.
Jessica:Giffred alleged that Shell violated the DMCA by intentionally creating posts indistinguishable from Giffred’s post without reference to Giffred’s name or username. With regard to photos, these types of claims are normally brought when a defendant is either displaying or distributing of the plaintiff’s photos without any copyright information that the plaintiff affixed to the original work. Here, the posts Shell had posted were not Gifford’s posts. They were Shell’s own posts.
Scott:Right. And Shell brought this up. She said that Gifford could not bring a claim of the DMCA where there is no copy and paste of identical images with copyright croppings. However, the magistrate The judge found that courts in this particular circuit have found that the DMCA may properly apply even when the allegedly infringing work is not identical to the original.
Jessica:The case the magistrate judge sites involved the use of plaintiff’s exact training material while making some changes to colors of graphs and chart sizes. I don’t think that’s really an analogous case here.
Scott:Yeah, I agree. I don’t think it was an analogous case either. In that case, that specific case, the defendant distributed basically the exact same work, but just made some changes, as you said, to the colors of the graphs and the chart sizes. Now, granted, I haven’t surveyed all of the CMI cases. However, it does seem that this portion of the DMCA is focused on the plaintiff’s actual work, the original copyrighted work. However, the court found that although Shell’s posts were not identical to Gifford’s, they still used Gifford’s copyrighted material in her allegedly infringing post, the esthetic, without including Gifford’s name or username, which constitutes CMI.
Jessica:So I think there are a few interesting takeaways from the court’s ruling on that specific claim.
Scott:I agree. I think there’s two takeaway points here. The first is that social media usernames can constitute CMI. And the second, at least with this magistrate, is that a plaintiff can bring a CMI claim where the infringing work is clearly not the plaintiff’s work. I’d be curious to see how other circuits addressed a claim like this.
Jessica:The last claim that the court allowed to proceed was misappropriation of likeness under Texas law. This statute requires the following elements, that the defendant use a plaintiff’s name or likeness for its value rather than incidentally or for newsworthy purposes, that the plaintiff can be identified from the publication, and lastly, that the defendant games some advantage or benefit from using the plaintiff’s name or likeness.
Scott:So let’s break down the first two elements since the last one would be easily established under the circumstances if the first two are satisfied. So with regard to the first element, the appropriation of name or likeness for value, Shell argued that Gifford failed to allege that Shell used Gifford’s actual image, name, or voice because it was photos of Shell, not of Gifford. The court found that Gifford satisfied this element by alleging that Shell created a, quote, virtually indistinguishable replica, close quote, of Gifford’s likeness by imitating her outfits, poses, hairstyle, makeup, and voice. This imitation, the court noted, could be seen as appropriating, quote, an aspect of that person’s persona in a manner that symbolizes or identifies the person, close quote.
Jessica:As for the second element, Shell argued that Gifford’s likeness was not identifiable in her post, which makes sense because the posts were actually images of Shell, not Gifford. However, the court stated that this was a factual issue that could not be resolved at the motion to dismiss stage.
Scott:Let’s quickly discuss us two of the claims that the court actually dismissed, the unfair competition claim and the unjust enrichment claim. The court dismissed both of these claims because they were preempted by federal copyright law. Both claims were based on Shell’s publishing and promoting infringing works, including product lists similar to compilations of facts or pictorial or graphic works protected under copyright law, and both claims lacked any unique element to distinguish it from claims under federal copyright law.
Jessica:So the claims that go forward from here are claims for direct copyright infringement and trade dress infringement, since those claims were not the subject of Shell ‘s motion to dismiss. Also going forward are the claims for vicarious copyright infringement, the DMCA claim, and the misappropriation of likeness under Texas law. Yeah.
Scott:And I will state that I was just reading this morning that she’ll… So this magistrate judge, this is recommendation, I guess, I’m not a litigator, but my understanding of how this works is this magistrate judge makes a recommendation to the district court, and the district court has basically can adopt the magistrate’s opinion or make changes to it, and she’ll file the motion objecting to the magistrate judge’s ruling and basically challenging the, I believe it is the vicarious liability in the DMCA portion of the Magistrate Judges’ opinion. And we’re going to talk about, I think, really what Shell ‘s lawyer should have done in a bit. But here we are with this case. So let’s now talk about what effect this case could actually have on the influence or marketing industry? Because we now have this case that says potentially that an aesthetic is protectable or that one One creator may sue another for violating a look. My understanding is there’s categories of types or looks in the creator marketing space, just like there’s categories of actors, and a casting director who’s casting a movie or a television show might be looking for a particular category or type, role type, when casting for that role, right?
Jessica:Absolutely. Gifford and Shell have this, quote, Clean Girl look. It’s a fashion and beauty trend characterized by minimalist, effortless, polished look. You’re focusing on neutral colors and classic silhouettes, natural makeup. The person appears well-kept with a focus on dewy skin and slick hair, subtle accessories, essentially aiming for a refined yet casual appearance without looking overly done up. This is a very popular look among the creator marketing community, and Adopters of this look are some big names: Haley Bieber, Bella Hadid, Selena Gomez, Kim Kardashian. There are a lot of women and creators that fit this clean-girl vibe.
Scott:There are a few ways that creators like Gifford and Shell make money. One is by being directly hired by a brand to promote a product or a service. The other is through affiliate marketing programs or platforms like LTK or Amazon’s Influencer program. Now, if you are a brand that fits into or is demographic, fits into the clean girl esthetic, it would be understandable and probably common practice for that brand to contract with multiple clean girl creators to create posts promoting the brand’s products. And because the look of those posts would be dictated by the brand’s creative brief, It wouldn’t really be unthinkable if each post was somewhat similar. With regard to the Amazon Influencer program, it’s my understanding that Amazon sends out lists of products that creators are encouraged to promote. I think it would be natural for two creators with a similar look to focus on the same products or same type of products that fit that look. Do you agree?
Jessica:Absolutely. I mean, that’s why that creator was selected to partner with that brand and to create that content because of their esthetic and their take on the product and how they want to feature it.
Scott:This is why I think this case is problematic. It seems to me that Guilford… No, Guilford, sorry. I think we’ve been mispronouncing her name the entire time. It’s Guilford. My bad. It seems to me that Guilford is trying to prevent Shell from posting content that reflects this clean girl esthetic. The clean girl esthetic, as you pointed out, is an esthetic which is defined in the dictionary as, a particular theory or conception of beauty or art, often emphasizing personal taste. From a practical standpoint, should Guilford have a monopoly on the ability to post content reflecting the clean girl aesthetic?
Jessica:Absolutely not.
Scott:I mean, what would happen if she was able to have this monopoly over the clean girl aesthetic? It could grind creator marketing and influencer marketing to a halt.
Jessica:Yeah, Absolutely. If you’re starting to block out entire categories, vibes, esthetics, creative approaches, I mean, at what point does the whole creator influencer marketing world run into a road trip? Blog.
Scott:Well, with regard to Guilford’s attempt to try to prevent Shell from posting content that reflects this clean girl aesthetic, copyright law agrees with you. Section 102(b) of the Copyright Act expressly excludes protection for any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied. This section codifies what’s known as the idea-expression dichotomy, and it’s also called the merger doctrine, which means that every idea, theory, and fact in a copyrighted work becomes available for public exploitation or is generally available for public exploitation. From the moment of publication, this strikes a balance in protecting the interest of the copyright clause with first amendment rights by permitting free communication of facts and unprotectible elements while still protecting an author’s means of expressing those facts. I think there’s an argument to be made here that Guilford is basing her claims on an unprotectible idea or concept, that she’s trying to protect the copying of something that isn’t protectable, trying to prevent Shell l from posting content that is Shell ‘s own expression of the clean girl esthetic, which itself is an unprotectible idea.
Jessica:So Scott, Are you saying that Gifford would not, under any circumstances, be protected against Shell copying her posts?
Scott:Well, if the idea was simply promoting Amazon products with a neutral beige and cream esthetic, that idea itself would not be protectable. However, if Shell copied specific original elements from Gifford’s post, like unique arrangements of products, particular phrases, or original photography, those elements could potentially be protected by copyright. Now, what I think is that the magistrate judge… First of all, I think that Shell’s lawyer should have moved to dismiss the copyright claim. And then I think that the magistrate judge, maybe on their own, or definitely the district court, should have dug into or should dig into the merger doctrine and separate out the unprotectable elements from the protectable elements and then analyze whether or not the content is substantially similar. This would have had a substantial impact on the court’s analysis, not only of the copyright claim, but also of the DMCA claim and the vicarious infringement claim.
Jessica:And what about the Trade Dress infringement and misappropriation of likeness claims?
Scott:So similar to copyright, Trade Dress protection does not extend the general ideas or concepts. So if Shell successfully argued that Guilford’s claimed trade dress, this neutral beige and cream esthetic, was either too broad or too generic to function as a source identifier, the court may have dismissed the a trade dress infringement claim. Now, the court allowed the misappropriation of likeness claimed to proceed, suggesting that imitating someone’s outfit, poses, hairstyles, makeup, and voice could constitute appropriation of their likeness. However, if Shell argued that the plaintiff was merely trying to protect this general style or persona rather than her specific identifiable likeness. And think about it. These were pictures of Shell. These were not pictures of Guilford. So Guilford’s actual likeness, and her obvious her voice wasn’t there, but her actual likeness were not reflected in those images. And I think a court may have viewed those claims differently. We talked a little bit, Jessica, about this case and if Guilford’s copyright and trade-risk claims are allowed to stand how this case could affect the creative marketing industry. But let’s assume even if these claims are dismissed, you still have this deterrent effect of an influencer bringing a lawsuit against another influencer merely because they share a similar esthetic.
Jessica:I mean, there may be some other detailed elements that were not not visible to us yet or not clear to us yet. But to me, it seemed as if this was broadly based upon this shared vibe and look. How do you think this case Do you think this case may act as a deterrent in the way that other clean girl creators express their look?
I do. I think this is a very challenging case if it does end up standing because every creator certainly has their own vision, their own style, their own tone, their voice, and how they create, produce, and ultimately upload their content. But if there’s a creator who does have this similar vibe or aesthetic, and they inadvertently have a similar style or tone, what are we talking about? Is there liability in that instance? At the very least, is a case going to be brought and these creators are going to be defend themselves over their vibe, over having similar types of content, promoting similar types of products? I think it walks us down the wrong road and could be really dangerous.
Scott:Yeah. I mean, I think I tend to agree. I think that I hope that the district court, on its own accord, looks at the copyright infringement claims and makes a determination as to what aspects of of Guilford’s claims cover protectable or unprotectible elements and really, really parts what Guilford’s claims. And then I think we’ll be, we’ll have a clearer picture as to what she may or may have not infringed. But I I also think that it’s incumbent on the court to be clear here that an esthetic is not protectable. And to the extent that Guilford’s claims are based solely on this shared esthetic, then I think the court should dismiss the case in its entirety. Maybe the court might consider this to be one of those exceptional cases and allow Shell to recover her attorney’s fees. And that would maybe send a deterrent message to other creators. Don’t bring cases like this where you’re trying to protect an unprotectible esthetic.
Jessica:I agree. I mean, an esthetic is not protectable under law, despite what we’ve discussed.
Scott:All right, Jess, thanks for joining me today.
Jessica:Thank you for having me.
Scott:So that’s all for today’s episode of The Briefing. Thanks to Jessica for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Oakland’s attempt to rename its airport didn’t take off. On this episode of The Briefing, Scott Hervey and Jamie Lincenberg discuss the trademark dispute between San Francisco and Oakland over airport naming rights.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: When Tony Bennett sang about leaving his heart in San Francisco, he wasn’t singing about Oakland. There are no little cable cars climbing halfway to the stars in Jack London Square, as charming as it is. Essentially, that’s why the City and County of San Francisco sued the city of Oakland and the operator of the Oakland International Airport, the Port of Oakland, to stop Oakland from renaming its airport to San Francisco Bay Oakland International Airport.
I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my colleague Jamie Lincenberg. Fasten your seat belts and put your seats in the upright and locked position. It’s SFO versus OAK in today’s installment of The Briefing.
Jamie welcome back. Thank you for joining me today.
Jamie: Thanks, thanks. Thanks for having me, Scott.
Scott: Let’s let’s see how many airline airport puns and bits of humor we can spontaneously include in this story here.
Jamie: Sounds good.
Scott: Okay, so, are you ready for takeoff?
Jamie: I’m ready.
Scott: Okay, so this case is about the Port of Oakland’s attempt to rename its airport and include San Francisco in its name. And this is also about the city of San Francisco’s claim that such use would create consumer confusion and constitute trademark infringement. But the reason Oakland wanted to include San Francisco, at least it claims, isn’t just about the desire to trade off of San Francisco’s goodwill.
Jamie: Okay, so please tell us, why did Oakland want to include San Francisco in the new name of its airport?
Scott: Well, as you know, whether we have to travel into our office in San Francisco, which is right in the heart of the financial district or otherwise fly into downtown San Francisco. We don’t always fly into SFO. Those who have to fly into San Francisco know that flying into Oakland is most often the better bet. It’s fairly common to have weather delays in San Francisco, but that’s not the case in Oakland. And also, you can catch the Bart right into San Francisco, right from the Oakland airport. And if you need a car. Oakland Airport is just right across the Bay bridge from downtown San Francisco. And apparently this was not well known to people outside of the Bay area or travelers who travel regularly in the San Francisco.
Jamie: That’s true.
Scott: So, you know, apparently the Port of Oakland conducted some studies that concluded that Oakland’s Oakland’s proximity to San Francisco isn’t really well known outside of the Bay area and completely unknown outside of California. And the port believed that this lack of awareness, this lack of awareness of the, you know, geographical proximity created challenges from the port in serving travelers.
Jamie: Yeah. And I can understand why Oakland would want to do this, but I’m sure that San Francisco was not on board, so.
Scott: True. Very true. San Francisco claimed that this would cause consumer confusion, and a few airlines also objected to the purported name change, saying that it would cause confusion for their travelers. The port went through with its internal requirements to implement the name change, and then the city of San Francisco sued, claiming trademark infringement. San Francisco claimed that consumers would believe that there was some association or affiliation between the two airports, and San Francisco also argued that consumers would buy tickets to the wrong airport or go to the wrong airport.
Jamie: And so I guess this brings us to the heart of the case. Did Oakland’s use of San Francisco constitute trademark infringement.
Scott: So in determining that, the court applied the standard likelihood of confusion test, which considers factors such as the strength of the mark, the similarities between the marks, evidence of actual confusion, and the defendant’s intent in selecting the mark. The court said that San Francisco’s Mark San Francisco International Airport, although it is descriptive, it’s commercially strong due to its long standing use and recognition right.
Jamie: And the court also found that the two marks are similar in appearance and sound and meaning. Although Oakland’s mark includes other elements, San Francisco’s mark is entirely subsumed in Oakland’s mark. The court said that because the two airports offer identical services, the near identity of the marks then makes them confusingly similar.
Scott: The court then looked at evidence of actual consumer confusion that was presented by San Francisco. So SFO presented evidence of instances where travelers and even businesses mistook Oakland Airport for SFO because of the name change. For example, there were reports of flight bookings and shipments intended for SFO that ended up at okay. However, the court found this showing of actual confusion was de minimis or trivial when it considered that 19 million travelers flew in and out of San Francisco between the applicable time frame.
Jamie: As to the theories of confusion advanced by SFO, the court looked at the degree of care exercised by a typical consumer, and found that consumers exercise a high degree of care when purchasing online tickets, which, along with other factors, made the point of sale confusion unlikely.
Scott: That’s true. But the court also found that consumers exercise a low degree of consumer care over whether neighboring airports are affiliated with each other, according to the court. Travelers rarely research airport ownership or management.
Jamie: Yeah, and I think that’s right. I don’t think I’ve ever looked up the airport owners or management.
Scott: I certainly haven’t.
Jamie: No. Um, but Scott, did Oakland advance any defenses against its use of San Francisco? It seems that Oakland, you know, may have had a fairly good argument that it was using the words just descriptively.
Scott: That’s a good point, Jamie. Uh, Oakland argued that San Francisco Bay is a descriptive term, and that Oakland used that term fairly and in good faith to describe the geographic nature of its airport services, namely its proximity to San Francisco. This argument relies on a provision in the Lanham Act, which allows the use of a term otherwise than as a mark if it is used descriptively and used fairly and in good faith to describe the goods or services or their geographic origin.
Jamie: But the court rejected Oakland’s fair use defense. Right. Yeah.
Scott: That’s correct. So the court reasoned that the defense only applies if the term is used otherwise than as a mark. The court noted that the Lanham Act defines a trademark as something used to identify goods and indicate their origin or their source. The court considered the port’s prior trademark registration for Oakland International Airport, which had been initially rejected for being primarily geographically descriptive, but later accepted after the port argued that it had acquired secondary meaning in that mark through exclusive and continuous use. The court believed that the port was using the new name in the same way that it had used the old name to acquire secondary meaning and function as a trademark. The court saw the new name as a direct replacement for the old one, and predicted that the court would continue to use the new name exclusively and continuously in order to establish secondary meaning. This, the court decided, is using the term as a trademark and does not meet the requirements for the fair use defense under the Lanham Act.
Jamie: So what did the court ultimately decide here?
Scott: Well, the court ended up siding with SFO, finding that Oakland’s use of San Francisco in the name of its airport was likely to cause confusion. The ruling prohibits Oakland from adopting or otherwise using the name San Francisco Bay Oakland International Airport.
Jamie: That’s a pretty significant decision, Scott. So what does this now mean for Oakland and for other regional airports?
Scott: Well, for.
Jamie: Oakland, it’s a major setback in their marketing efforts, they’re going to need to find another way to compete and informing travelers about their geographic proximity to San Francisco without infringing on established trademarks for other regional airports. And I’m thinking primarily of Burbank and Long Beach here in Los Angeles. It’s a cautionary tale about the risks of adopting names closely tied to more prominent neighbors. While the Port of Oakland intended to use San Francisco Bay descriptively to clarify the airport’s location, the court found that this use created a false impression or affiliation with SFO and its established trademarks. This case underscores the importance of careful consideration of trademark implications when choosing names and brands for businesses and organizations, especially when leveraging geographically descriptive terms.
Scott: Yeah, I, I think I agree with the court’s finding here. Um, you know, I’m thinking about Burbank trying to change their name to Burbank Los Angeles International Airport. I don’t think that that would fly with LAX.
Jamie: Could you imagine it would be the John Wayne Burbank Los Angeles International Airport? That what a mouthful.
Scott: People are already confused with all of the different with the different airports. Like.
Jamie: Right, right.
Scott: Thanks for joining me today, Jamie.
Jamie: Thanks for having me.
Scott: Well, thank you for flying. Today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative, enjoyable, and maybe just a touch humorous, but I mean, there’s really nothing funny about trademark infringement, but if you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
This Thanksgiving, we’re diving into the world of intellectual property and recipes. Can chefs own their culinary creations? Can a recipe be copyrighted? From Turducken trademarks to creative cookbooks, we’re discussing the legal side of your favorite holiday dishes. Tune in to The Briefing’s milestone 200th episode with Scott Hervey and Tara Sattler for all the tasty legal details.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:There are numerous ways to cook a turkey and thousands and thousands of recipes for turkey. Some are old fashioned like roasting with stuffing, some are newer like Tandoori Style, and some, well, I still just don’t get like the turducken. But who exactly owns all of these turkey recipes, not to mention all the recipes for stuffing and cranberry sauce.
I’m Scott Hervey, a partner with the law firm of Weintraub Tobin. And today I am joined by my partner, Tara Sattler. We’re going to talk about IP protection for recipes on this special Thanksgiving episode of the Briefing.
Tara, welcome back to the Briefing. Happy Thanksgiving to you.
Tara:Thanks, Scott. Thanks for having me. And this is an exciting topic to dig into.
Scott:Yes, I see we both have our like, fall themed backgrounds up, despite the fact that it’s 71 degrees here today in Los Angeles.
Tara:Well, not for much longer.
Scott:Yeah. Well, so today we’re diving into the fascinating and often murky world of intellectual property protection for recipe recipes. So can a chef actually own their culinary creation? And what about their cookbooks? And what happens when recipes are copied and shared?
Tara:All great questions. So let’s start with the basics. Protection of a recipe. So some famous chef creates a dish that is huge and a really big hit. But legally, how much protection does a recipe actually get?
Scott:Well, that’s a great question. So U.S. copyright law protects any original work of authorship that’s fixed in a tangible medium of expression. So one would think that an original recipe that a chef creates and writes down and may include in the cookbook or online is protected by copyright. However, that is not necessarily the case. In the United States, recipes generally don’t receive strong intellectual property protection. Copyright law does not cover lists of ingredients or basic instructions on how to use setting ingredients. In 1996, the SEC, the Seventh Circuit case of Publications International Limited versus Meredith Corporation involved claims of copyright infringement of a number of recipes. And in that case, the court said that recipes that were involved in that case comprised merely of the list of required ingredients and the directions for combining those ingredients to achieve the final product. The recipes contained no expressive elaboration upon either the functional components or how to create the end result. And as a result, the court found the recipes to be not protectable. Now, this is as opposed to recipes that might spice up functional derivatives by weaving in creative narrative.
Tara:But digging into what the court said, if a recipe included expressive elaboration, then that may be protectable. This probably explains why some cookbooks and food bloggers weave personal stories into Their recipes.
Scott:That is true, and probably the case. But regardless how creatively a cookbook may lay out a recipe filled with stories from the chef’s childhood pictures, et cetera, the ingredients and the process for making the dish itself are not protectable.
Tara:Okay, so this probably accounts for the thousands of Turducken recipes that we can find on the Internet.
Scott:It probably does. But speaking of Turducken, let’s talk about what can be protected. And that’s a trademark. So, Tara, did you know that Turducken is a registered trademark?
Tara:I did not know that.
Scott:Yes, it is. So that mark was registered in 1986, and it covers the combination of turkey, duck, and chicken entree for consumption on or off the premises. And it was originally registered by Chef Paul Prudhomme and his his company entity. Now, I couldn’t find any evidence of the chef suing over the use of Turducken, but that trademark is still registered. It’s on the principal register. And it has prevented other potential registrants from registering similar trademarks covering similar food items.
Tara:So if a chef comes up with a unique and distinctive name for a dish, that can be protected as a trademark. And the chef can, if he or she wants to prevent others from using that mark in a competitive manner.
Scott:That’s true. Think of the Big Mac and how much strength that trademark has. However, if a trademark begins to be used by the public at large to describe the food product like Turducken, I think that mark runs the risk of becoming generic.
Tara:But just because the chef owns a trademark doesn’t mean that he or she can stop others from making the dish. Trademarks are more about branding. A chef can trademark the name of a dish, like Traducan or Big Mac or the Bloomin Onion, as long as it’s distinctive and tied to their business. But trademarking won’t stop someone from recreating the dish and just using a different name.
Scott:That’s right, Tara. Since we’re talking about what can be protected now, let’s talk about cookbooks. A cookbook can be protectable as a compilation if the selection, arrangement, and the coordination of the included recipes is creative. Also, everything other than the list of ingredients and the instructions on how to create the dish are protectable. So all the photographs are protectable under copyright law, as well as all of the other text content.
Tara:So with the lack of protection around recipes themselves, it is a bit odd that chefs so readily share recipes. However, I can see that by doing so, it may raise the profile of.
Scott:The chef that’s true. I mean, it’s also a great way to sell cookbooks. Right. And I know from my own experience, while I might go to a website and print out a specific recipe from a specific chef to try if it’s a chef that I know and if it’s a recipe I like, and even if it isn’t a chef that I know and it turns out to be a recipe that I love, I’m more likely to seek out more of those recipes from that chef and buy a cookbook or two from that chef.
Tara:Yeah, I think that’s right. And I also like to buy cookbooks that have a particular theme, so from notable restaurants or acclaimed restaurants around Los Angeles. And that is all very chef-driven as well.
Scott:Right. And I think, I don’t know, chefs have kind of become the new celebrity, so to speak. So you may buy a cookbook or two that actually might sit on your coffee table and you may open it maybe once or twice in the entire time that you own it, but you might not even use it for any of the recipes, lest you get the book itself messy. At least you would if you cook the way I cook with stuff all over the place.
Tara:Yeah. Cookbooks as a form of art.
Scott:Yeah. So I guess we can close out this Thanksgiving episode by being thankful that copyright law allows for the sharing of recipes, because where would we be if it didn’t? And that we’re lucky enough to have a culture where chefs share their recipes, including Paul Prudhomme’s famous Cajun recipe, a turducken, so we can try making them at home. So with that, Happy Thanksgiving, Tara.
Tara:Happy Thanksgiving, Scott. And good luck with cooking your turducken.
Scott:Well, yes, my I won’t be cooking at Turducken because, as you know, we’re pescatarian. How very California of us. So we’ll find some other thing to shove inside of a fish. So Happy Thanksgiving, everybody.
Tara:Happy Thanksgiving.
Scott:Well, that’s all for today’s Thanksgiving episode of the Briefing. Thanks to Tara for joining me today and thank you, the listener, for viewing or tuning in. We hope you found this episode informative and enjoyable, and if you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
Did Netflix push the boundaries of “based on a true story”? Scott Hervey and Jamie Lincenberg discuss Harvey v. Netflix, the risks of docudramas, and explain how truth and fiction collide in this high-stakes lawsuit on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Cases discussed:
- Fairstein v. Netflix
- Williams v. Netflix
- Harvey v. Netflix
Show Notes:
Scott:It seems like every good docudrama results in a defamation lawsuit. There is the recently settled lawsuit, Fairstein versus Netflix, which is a defamation claim over the portrayal of Linda Fairstein, former New York City prosecutor in the Netflix series, ‘When They See Us.’ Then there’s Williams versus Netflix, a defamation lawsuit brought by then Vanity Fair photo editor, Rachel Williams, whose friendship with Anna Delvey is highlighted in the Netflix series, ‘Inventing Anna.’ Then there’s the defamation case du jour, and for some reason, the one that seems to have Hollywood’s current attention, Fiona Harvey versus Netflix, the defamation case surrounding the Emmy Award-winning series, ‘Baby Reindeer.’ Earlier this month, a California federal court hearing the dispute denied Netflix’s anti-slapp motion and allowed the plaintiff’s defamation case to go forward.
I’m Scott Hervey, a partner with the Entertainment and Media Group at Weintraub Tobin, and today I’m joined by my colleague, Jamie Lincenberg. We We are going to talk about this case and the lessons in the court’s opinion for avoiding claims like this on today’s episode of The Briefing. Jamie, welcome back. It’s good to have you.
Jamie:Thanks, Scott. Great to be here again.
Scott:Let’s get into this, Jamie. Can you give us a little rundown of what happened in this case?
Jamie:Absolutely. This lawsuit stems from the Netflix series, Baby Reindeer, if you’ve seen it, inspired by the real-life experiences of comedian Richard Gad, following his early career as a stand-up comic in Scotland. The series depicts a character named Martha, who is a stalker of Gad’s character. Martha is portrayed as a troubled individual, a convicted criminal who spent five years in prison for stalking, a violent individual who sexually assaults Gad in a public setting, and a relentless stalker who harasses Gad at his home and workplace.
Scott:Jamie, have you seen this Have you seen Baby Reindeer yet?
Jamie:I have.
Scott:Okay. I haven’t. So Jamie, it’s on my list to watch, but feel free to add color commentary as we’re going through. So Fiona Harvey, she’s the plaintiff in this case. She claims that the The character of Martha is clearly based on her and that these portrayals are entirely false and defamatory. Harvey asserts that this serious portrayal of Martha goes far beyond the actual events and fabricates serious criminal acts she never committed. This, she argues, has caused severe damage to her reputation and her emotional well-being, which led her to file this lawsuit against Netflix for defamation and other claims.
Jamie:Netflix fired back with two key legal endeavors. First, they filed a special motion to strike, also known as an anti-slap motion, aiming to have the entire case dismissed. Second, they filed a motion to dismiss, seeking to to go out the individual claims that Harvey brought against them.
Scott:We’re going to focus on the anti-slap motion and Harvey’s defamation claim here. And by the way, those were… Her defamation claim was the only claim that actually survived. So anti-slap laws are designed to protect individuals from frivolous lawsuits aimed at silencing their free speech, especially when they speak out on matters of public concern. In California, where this case was filed, an anti-slap motion requires the defendant to first demonstrate that the plaintiff’s claims arise from a protected activity. If the defendant meets this burden, then the burden shifts to the plaintiff to prove that the plaintiff has a probability of prevailing on the merits of their claim.
Jamie:And here, Netflix was able to successfully argue that this case involved a protected activity.
Scott:That’s right. The court agreed with Netflix that the series and the statements made about Martha are protected speech under the First Amendment. The court reasoned that the series touches on important social issues like stalking and sexual harassment matters that are frequently debated in public forms.
Jamie:Furthermore, the court recognized that this series isn’t presented as a strict documentary or a news report. It’s a fictionalized retelling of Gad’s life, taking creative license with events and characters for dramatic effect. The court even pointed to a disclaimer in the series, acknowledging that certain elements had been fictionalized.
Scott:That’s right. However, even though Netflix was able to show that their actions fall under protected speech, the burden then shifts to the plaintiff, and the plaintiff can still move forward if they can demonstrate a probability of prevailing on the merits of their claim. Now, this is where the court’s analysis of Harvey’s defamation claim becomes crucial.
Jamie:So let’s dive into that. What were the key elements that Harvey had to prove for her defamation claim to survive?
Scott:So for a defamation claim to be successful in California, a plaintiff must generally prove that, one, the defendant made a false statement of fact of and about the plaintiff. Two, the statement was published to a third party, three, the statement caused harm to the plaintiff’s reputation, and four, the defendant acted with at least negligence or actual malice if the plaintiff is a public figure.
Jamie:So let’s focus on the court’s analysis regarding whether character traits attributed to the character Martha were of and about Fiona Harvey.
Scott:So the court says that this is not the case where a plaintiff can be one of hundreds of people that match a fictional character’s broad characteristics. Specifically, Martha and the plaintiff, Fiona Harvey, are both Scottish lawyers living in London. They’re both about 20 years older than Dawn Gad. They’re both accused of stalking a lawyer in a newspaper article, and they both communicated with Dawn and Gad on social media. Now, while there may be numerous Scottish lawyers living in London of the same approximate age as Fiona Harvey, The court said it is very likely that only Fiona Harvey has been accused of stalking a lawyer in a newspaper article while also communicating with Gad on social media.
Jamie:Netflix argued that despite these similarities, a reasonable person would not have identified Harvey as Martha because it required some degree of research to come to this conclusion. However, it seems that the court believed that it required little effort to put those pieces together. Gad had an interview with GQ where he stated that Martha is based on a real stalker, which the court says could be seen as an invitation to locate Fiona, with Fiona’s public post on Gad’s social media referencing a joke featured in the series. It also didn’t help that the series was portrayed as being a true story.
Scott:No, that’s correct. The court also pointed out that there were other character traits, personality traits, that were shared between the character Martha and Harvey. So once the court decided that these character traits attributed to Martha were of and about Fiona, the court went through the remaining elements to find defamation. The court found that the offending statements, notably that Martha was a twice-convicted criminal that spent five years in prison for stalking, that Martha violently attacked Donny, and that Martha previously stalked a police officer, and that Martha stalked Donny by waiting outside his home every day for up to 16 hours a day, the court found those were assertions of fact and not the producer’s opinion.
Jamie:The court also found that the statements were not substantially true. The court noted significant differences between the series Portrayal of Martha and the documented facts of Harvey’s actions. The court also found that Fiona Harvey was not a liable proof plaintiff.
Scott:
Now, that’s an interesting argument that was advanced by Netflix. Let’s just talk about that for a little bit. Under the liable proof doctrine, a plaintiff’s reputation with respect to a specific subject may be so badly tarnished that he or she cannot be further injured by allegedly false statements on that subject. But that doctrine has been sparingly applied. I’ve actually looked into this doctrine for a couple of studio clients when we were looking at potential defamation issues. And even where this doctrine has been applied, its application has to be limited to the same subject for which the reputation was tarnished. With regard to Harvey, the court said that even though her public reported stalking tarnished her reputation, it was reported only a handful of times, and it was over 20 years ago. The court said that it’s difficult to imagine that such scant publicity would render her reputation so badly tarnished that she could not be defamed 20 years later. The court said further that even if plaintiff could be considered liable proof on the subject of stalking, it seems unlikely that this would apply to false statements of sexual assault and physical violence.
Jamie:Netflix also argued that Harvey was a public figure and that she couldn’t establish actual malice. The court found that she qualified as a limited purpose public figure because of her involvement in a public controversy surrounding her stalking charges and her attempt to seek political office. If a plaintiff qualifies as a public figure, he or she must demonstrate that the defamatory statement was made with actual malice, meaning knowledge that it was false or with reckless disregard of whether it was false or not. This is a higher standard of proof than the negligence standard required for a private individual.
Scott:So this is the court’s rationale for finding actual malice. The court found that the statements were made with actual malice. This is what the court The court said, The series was adapted from Gad’s Theater Play, which stated that it was, quote, based on a true story, close quote. According to the court, this disclaimer put Netflix on notice that certain details were likely false. Yet, according to a Sunday Times article that was introduced into evidence, apparently, Netflix insisted on adding, This is a true story line to the series despite Gad’s concern. But the court found that this suggests a reckless disregard of whether statements in the series were false and thus establishes actual malice. Now, this is as an aside. If a litigator in our audience wants to explain to me how this Sunday Times newspaper article was introduced into evidence, given that newspaper articles generally are hearsay, I would appreciate that very much.
Jamie:This is not a good outcome for Netflix. Scott, what are the key takeaways from this case for our listeners? Really, what should the producers have done differently here?
Scott:Yeah, that’s a great question. We can start with the statement that Baby Reindeer was a true story when it wasn’t. Gad’s Play, which was the basis for this series, said that it was based on a true story, so they probably should have stuck with that. Also, there are similarities between Harvey and Martha, and the producers maybe should have paired them back. Could she been an Australian or an American lawyer or maybe an accountant. But I have to say, I really think that the assertion that Baby Reindeer was a true story hurt Netflix the most. If the producers hadn’t made that statement and included the disclaimer at the end, which they apparently did include, and the other traits remained the same, I think there would have been an entirely different outcome in this case.
Jamie:Yeah, I agree, Scott. I think that the true story piece was really the cherry on top of the plaintiff’s argument.
Scott:Yeah, I agree. But I still think that the court finding that the statements, the character attributes of Martha were of and about Fiona, I do think they were thin. But we now have to deal with that, and we have to understand that when we’re representing our studio and production company clients who are producing docudramas, we have to now appreciate that the risk associated with only a few shared character attributes between a real-life person and a character on the screen could be the basis for a defamation lawsuit, which really shows why you should fictionalize your characters, because I don’t know, I think you could still tell the story. I think Baby Reindeer would still be just as great. I mean, you tell me, would Baby Reindeer be just as great if Fiona was an architect or an accountant? Sure. Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or viewer, for tuning in. We hope that you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues.
And if you have any about the topics we covered today, please leave us a comment.
The 90s hip-hop group 2 Live Crew won big in their copyright case against Lil’ Joe Records. Scott Hervey and Jamie Lincenberg break down termination rights, bankruptcy, and what it means for artists reclaiming their work on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:In mid-October, a Miami federal jury handed a win to Luther Luke Campbell and the heirs of Mark Ross and Christopher Wong Won of the 2 Live Crew in their long-running copyright reclamation lawsuit against Lil’ Joe Records. The Master Sound recordings were transferred in 1990 to Skywalker Records, the label that once released the iconic 2 Live Crew albums. The court case had its twists and turns, including a ruling earlier this month that copyright termination rights survive bankruptcy. I’m Scott Hervey with the Entertainment and Media Group at Weintraub Tobin, and I’m joined today by Jamie Lincenberg, and we’re going to talk about this case on this installment of The Briefing.
Jamie, welcome back to the briefing. It’s been a little while.
Jamie:Yeah, thanks for having me.
Scott:Jamie, before we get into this, I don’t know. I thought we’d chat about what’s on your desk. Is there anything interesting that you’re working on?
Jamie:There’s a lot on my desk, always. But let’s see. Lately, I’ve been working on some production legal for a feature film that is going to start principal photography on Sunday. So, it’s been tying up all the loose ends, making sure that we have all of the financing in place, and getting ready to roll camera.
Scott:It’s always busy right before the start of principal photography, for sure. Yeah. All right. Well, let’s get into this. Just some quick background. So, Skywalker Records was formed by Luther Luke Campbell, and it was the record label that owned the master recordings to all five. I didn’t know they had that many, but all five of the 2 Live Crew albums. Now, the name Campbell and Skywalker should ring a bell with those of you that follow copyright law, because Campbell was one of the name parties in a case that transformed copyright law, literally. Campbell versus A Cuff Rose, which introduced the concept of transformative use into the lexicon of copyright law and fair use. Skywalker later changed its name to Luke Records.
Jamie:In 1995, Luke Records then filed for bankruptcy. Joseph Weinberger, a tax lawyer that served as Luke Records’ CFO and In-House Counsel, bought the rights to 2 Live Crew’s master recordings out of bankruptcy for $800,000, and he then formed his own label, Lil Joe Records, to distribute them.
Scott:In 2020, Luke Campbell, Mark Ross, and the heirs of Chris Juan, served a notice of termination on Little Joe Records and others purporting to terminate the transfer of the rights to the various 2 Live Crew albums that were transferred to Skywalker Records via a 1987 recording agreement, and then the subsequent transfer from Skywalker/Luke records to Little Joe records pursuing to a bankruptcy court purchase.
Jamie:Scott, as we know, Section 203 of the Copyright Act permits authors, or if the authors are not alive, their surviving spouses, spouses, children or grandchildren, or executors, administrators, personal representatives or trustees, to terminate grants of copyright assignments and licenses that were made on or after January first, 1978, when certain conditions have been met.
Scott:On the effective date of termination, all rights in the work that were conveyed by the terminated grant revert to the author.
Jamie:Copyright termination rights were created by Congress in the 1976 Copyright Act. They allow authors or their heirs to terminate or cancel a prior grant of copyright, even if they previously sold or licensed it. This gives them a chance to recapitulate capture control over their work after a set period. The idea behind this really is simple. The initial value of a work is often really hard to determine, and artists can therefore be at a disadvantage. These rights are considered inaliable, which means they really can’t be signed away or contracted out.
Scott:So the 2 Live Crew argued that the Section 203 termination terminated the initial transfer from the band to Skywalker Records/Luke Records, and that the recapture effected a termination of Little Joe’s ownership of the master. Little Joe, who filed the lawsuit challenging the recapture, argued that, one, all five albums were created as a work for hire for Luke Records, and two, that Luke Records’ bankruptcy proceeding terminated the band’s recapture rights under Section 203.
Jamie:The work for hire argument is a viable defense to a recapture claim.
Scott:Yeah, that’s correct. Copyrighted works that are works made for hire or works for hire are specifically excluded from Section 203. But that argument from Little Joe Records didn’t fly. The jury ultimately found that the albums were not works for hire, but the bankruptcy argument was something new.
Jamie:It is. So in addition to Luke Records’ bankruptcy filing, Campbell, individual individually filed for personal bankruptcy protection. As part of that reorg plan, all copyright rights to 2 Live Crew’s music and compositions were transferred to Little Joe, free and clear of any and all lean’s claims, encumbrances, charges, set offs, or recoupments of any kind. As part of the reorg plan, Luke Records and Campbell agreed to receive no royalties, whether as an artist, producer, writer, publisher, or in any other capacity on any of those masters or compositions.
Scott:The reorganization plan did not mention future termination rights, and neither of the remaining members of the 2 Live Crew filed any claims in bankruptcy, asserting that they owned any rights or were entitled to any rights appurtenant to any of the 2 Live Crew copyrights that were transferred to Little Joe. However, subsequent to the bankruptcy filing, Ross filed for bankruptcy, and he settled a claim brought by Little Joe in the Bankrupt Matter, whereby Ross acknowledged that other than the writer’s performance rights, Ross had no rights, master or publishing rights, to any previous recording’s owned by Little Joe records.
Jamie:Lil’ Joe also sued Wong Won. In settling that claim, Won agreed that Little Joe owns all right title and interests to all copyrights in the albums conveyed to Little Joe in the bankruptcy of Luke Records and Luther Campbell. So it seems that Lil Joe has tied up all ownership rights to the albums with all of the band members. Why then did the court find that the Campbell bankruptcy and the settlement agreements entered into by Ross and Juan did not prevent the band members from bringing a termination claim?
Scott:Yeah, that’s an interesting question. So in bankruptcy, a debtor’s property is generally transferred into an estate that creditors can access. Little Joe argued that a copyright termination right could fall under, quote, property of the estate in bankruptcy, meaning that those rights could be used to satisfy creditors. But the question of whether a copyright termination right could constitute, quote, property of the estate, close quote, which typically includes most of the debtor’s legal and equitable interest at the time of filing hadn’t been decided before. So the big question was, whether copyright termination rights, being personal and inalienable, fit that definition?
Jamie:In order to answer that question, the court had to look at the intent of Section 203. The Court said that Congress established termination rights specifically to protect artists, not to create assets for creditors. The House report that accompanied the 1976 Copyright Act made it clear termination rights are designed to protect authors from unremunerative deals due to unequal bargaining positions. So under federal law, these rights are more of a personal safeguard for the author rather than a traditional property interest. So the court finds that the termination rights aren’t property in the traditional sense because they’re personal to the author and generally non-transferable in bankruptcy. But what about the settlement agreements by Juan and Ross, which memorialized Lil Joe’s ownership of the copyright in the albums.
Scott:Section 203 of the Copyright Act mentions that termination rights exist, notwithstanding handing any agreement to the contrary. In other words, even if an author signs something in bankruptcy court or a settlement agreement or other type of agreement waiving these rights, that waiver wouldn’t likely hold up.
Jamie:So, Scott, is the takeaway here that termination rights are resilient against bankruptcy claims?
Scott:To an extent. The court does leave open that a termination right can be relinquished during a bankruptcy. The court notes that there is no evidence in the record to support a finding that Campbell, Ross, or Juan relinquished their termination rights to the two Little Joe during the bankruptcies or as part of the settlement agreements. Neither the bankruptcy filings nor the settlement agreements mention a transfer of these termination rights. So there’s no indication that either Ross, Campbell, or used their termination rights as leverage during negotiation. And the court found that there’s no evidence that they were even aware of these termination rights during the bankruptcy proceeding and during the settlement proceeding. The court notes that even if a copyright termination right can be divested, it was not done properly here. So that leaves it open to the possibility that termination rights can be transferred if they are are specifically transferred and specifically mentioned and referenced in whatever document the parties are entering into to affect a transfer of those termination rights.
Jamie:Right. This is really interesting, Scott. I’ve never really looked too far into the transfer of termination right, but I think this is definitely interesting and good to bring to everyone’s attention.
Scott:Yeah, I Jamie. Thanks for joining me today. That’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today, and thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Clearing titles for creative projects has become more challenging after the Supreme Court’s decision in Jack Daniels v. VIP Products. In this episode of The Briefing, Scott Hervey and Tara Sattler explore the evolution of the Rogers test and the new hurdles studios face in title selection.
Cases Discussed:
- Jack Daniels Properties, Inc. v. VIP Products LLC
- HomeVestors of America, Inc. v. Warner Brothers Discovery
- Rogers v. Grimaldi
- Punchbowl, Inc. v. AJ Press
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: One of the things we do for our production company and studio clients is clear the titles to their projects. Now, ever since the Supreme Court case of Jack Daniels Properties versus VIP products, clearing titles have become a little bit more challenging. And last year’s district Court case of Home Investors of America versus Warner Brothers shows exactly how challenging it’s become. I’m Scott Hervey from the Entertainment and Media Group at Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We’re going to talk about the impact of Jack Daniels on clearing titles for creative works on this installment of The Briefing. Tara, welcome back to the briefing. It’s good to have you back, especially on this topic, because this is something you and I deal with quite frequently.
Tara: Absolutely. It’s great to be here, and thanks for having me back.
Scott: All right. So, let’s provide a quick recap of the Rogers test and the impact that Jack Daniels had on the Rogers test.
Tara: That’s a great place to start. The Rogers test comes from the 1989 Second Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question in that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act as well as state right of publicity laws, for using a celebrity’s name in the title of a work. The District Court and the Second Circuit on appeal both said no, and from that case, the Rogers test was created.
Scott: Under the Rogers test, First, the use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever. If the title has some artistic relevance, the use does not violate the Lanham Act unless the title explicitly misleads as to the source or content of the work. Now, the first line of inquiry is whether the use of the third-party mark has some artistic relevance. Now, that threshold is extremely low. Basically, if the level of artistic relevance is more than zero, this is enough. Now, the second line of inquiry is to whether the use of the third-party mark explicitly misleads as to the source of content or work. Now, the Rogers test has been widely adopted by other circuits, including California’s Ninth Circuit.
Tara: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties Inc. Versus VIP products. The dispute involves the claim by Jack Daniels that the dog toy, Bad Spaniels, infringed a number of its trademarks. At the district Court and on appeal at the Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test.
Scott: That’s right. But on appeal to the Supreme Court, the Supreme Court said that the issue was not whether the dog toy is an expressive work, but rather the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, was for the purpose of serving as a source identifier. So, trademark use, in other words. The Supreme Court held that the Rogers test does not apply to instances where a third-party mark is used as a source identifier, regardless of whether it’s also used to perform some expressive function.
Tara: So, Scott, how has this impacted the way you advise studio and production company clients when you’re advising them on whether or not they can use specific series titles?
Scott: Previously, titles to expressive works like movies and TV series enjoyed protection from infringement claims under the Rogers test. Now, the title of a single artistic work generally does not function as a trademark because the title does not identify the source of the work. However, the title of a series of works, like a book series or, a TV series or a movie series, can and does function as a trademark since it serves to identify the source of the work. And since the title to a TV series functions as a trademark and acts as a source identifier, we can’t apply the Rogers test. So, ever since I was in the VIP products case, I have expressed concern that the Rogers test can no longer be applied when analyzing a TV series title. Last year’s case of Home Investors of America, Inc., Versus Warner Brothers Discovery proved my concern to be well-founded.
Tara: So HomeVestors of America, known for their We Buy Ugly Houses slogan, sued Warner Brothers Discovery, claiming that the title for an HDTV show, Ugliest House in America, infringed on their trademarks. Home Investors owns a family of trademarks, 30 of them actually, related to ugly houses, including the ugliest house of the year, which is used in connection with a yearly home renovation contest. Apparently, a production company, on behalf of HGTV, contacted HomeVestors regarding a possible collaboration on a show that features the largest Houses in America. Ultimately, those conversations went nowhere. However, in 2022, HGTV premiered a new show called The Ugliest House in America. Of course, Home investors then sued for trademark infringement, claiming that HGTV’s use of the show title was likely to cause confusion among consumers, leading them to believe that the show was affiliated with Homebusters.
Scott: Now, Discovery moved to dismiss the case primarily on Rogers. However, after briefing was completed on Discovery’s motion to dismiss, the Supreme Court decided the Jack Daniels case. Both Discovery and Home Investors filed supplemental briefing on the applicability of the Jack Daniels case to their case. Discovery argued that the court should continue to apply Rogers and that the Supreme Court opinion in Jack Daniels does not meaningfully alter the analysis because the holding in Jack Daniels concerned branded consumer products and not the descriptive title of a television series. Unfortunately for discovery, the court did not read Jack Daniels in the same manner. The court said as follows: I do not read Jack Daniels to be compatible with a blanket rule that any title alleged to infringe another’s mark is necessarily entitled to a Rogers analysis or is necessarily non-infringing. Instead, Jack Daniels makes clear that a First Amendment defense under Rogers does not apply if an alleged infringer’s use of the mark is source-identifying.
Tara: So, the court essentially said that even a television show title could potentially serve a source-identifying function.
Scott: Yeah, they Exactly said that, Tara. So the court, following the Jack Daniels guidance, conducted a thorough analysis of whether the ugliest house in America was used by discovery in a source-identifying manner. The court considered all the relevant factors alleged by Home Festers in their complaint, and they ultimately concluded that the allegations were sufficient to move the case forward.
Tara: Discovery did try to argue that the title was solely for artistic expression and not meant to identify a source. It argued that using a mark in an expressive work is inherently not source-identifying. However, the court disagreed, emphasizing that Jack Daniels’ requires an initial inquiry into source identification before applying Roger’s test.
Scott: That’s right, Tara. The court did emphasize that Jack Daniels requires an initial inquiry into whether or not the use of the mark functions as a trademark use before they will apply the Rogers test. And I think the reason why Warner Brothers Discovery would have a hard time and did have a hard time eventually having Roger’s why this was applied here and why other cases that I’ve read post-Jack Daniels dealing with the titles to a series of artistic works, whether it’s a television show or a series of video games, is I think because titles to a series of artistic works are deemed to function as trademarks, at least pursuant to trademark law. So what does this mean? So this means that, at least in in this case, it’s going to go forward, and the parties are going to have to engage in discovery, and they may potentially go to trial. The court’s going to analyze whether consumers are likely to be confused about the source of ugliest house in America based on home vestor’s family of ugly house trademarks.
Tara: Yeah, and I can understand why the court denied Discovery’s motion to dismiss, it was literally just following the guidance set forth in Jack Daniels. Nowhere in the Jack Daniels’ opinion does it say or even allude that its reasoning is limited to consumer good.
Scott: Right. I think the struggle has always been the idea of a TV series title as a source identifier, at least for entertainment services. I can see it as a source identifier for merch, for sure. But to be a source identifier for entertainment services, namely a television series, this means that an identification of the entity that controls the right in the work must be triggered by the use of the title. So in order to be a source identifier, a TV series title must convey the impression that it comes from, say, Paramount as opposed to Sony. I don’t think TV series titles ever do that. I mean, maybe in the past when we’ve had a limited number of television networks, but I mean, certainly not now.
Tara: Yeah, I agree with you. We really don’t see that now. But we also know that the USPTO will allow a trademark application for the title of a TV series. And if that has happened, the Rogers test will automatically not apply. You discussed this in the episode on the Punch Bull Inc. Versus AJ Press case.
Scott: Right. That’s right.
Tara: So, what does this mean for studios and production companies looking to clear a title?
Scott: It literally means that it’s going to be a lot more challenging for studios to find a title. Prior to Jack Daniels, there was a heavy reliance on the Rogers test. But now there’s going to be a greater scrutiny of any commercial association, not just with other show titles, but also with trademarks. And the results were probably going to take a lot more conservative risk assessment in clearing titles.
Tara: I agree with you, Scott. And so what does this mean if the title report identifies other TV programs with the same or very similar title?
Scott: Yeah, I was just dealing with that. The other day for another client. It presents an interesting challenge. If both programs are still commercially available, then I think it presents an issue. While you may be able to argue differences based on the genre of the program and where they are available for viewing, I think that might be just too thin to rely on entirely in order to clear a title.
Tara: I agree with you, especially because there are many different options these days for older titles to be revitalized on different platforms and viewing services. It’s an interesting thought about what impact it may have if an older title gets a new life on a new platform and is viewed by more viewers now than when the analysis was conducted.
Scott: Right. And not just new life in its original form, like suits, but new life in a new form, like a sequel, like suits.
Tara: Exactly. What are your thoughts on how a studio or a production company may be able to get ahead of this title conundrum?
Scott: Yeah, that’s a… Well, one, title conundrum is a great reference. It’s a great thing to call That’s a great question, too. Before a preliminary title is proposed to the network and before the network’s creatives fall in love with it, the producer should involve the legal team early in title brainstorming and have the legal team conduct frequent preliminary knockout searches before making any creative investment in the title. Have a few backup titles and be prepared for the time and cost of multiple full title searches.
Tara: I think that’s really good advice. I think as lawyers, we will be reviewing these reports with a lot more scrutiny, especially really digging into the trademarks that are identified in the report and specifically the registrants of those trademarks and what goods and services those trademarks are associated with.
Scott: Right. Remember, it’s not just the registered trademarks. Because you can have trademark rights in a mark that you don’t necessarily register with a patent and trademark office. It just opens a much bigger can of worms. Like I said, I think it’s going to make it a lot more difficult for studios to find good titles for their television series. Definitely. That’s all for today’s episode of The Briefing. Thanks to Tara Sattler for joining me today. Great conversation. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.
Halloween is here, but beware! That killer costume might come with a lawsuit instead of candy. Scott Hervey and Tara Sattler discuss the legal threats associated with unlicensed costumes on this spooky episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott: With Halloween just around the corner, we’re diving into a Spooktacular topic. This is the dark side of Halloween, the side where you get a lawsuit instead of a Kit Kat bar. I’m Scott Hervey from the Entertainment and Media Group at the Law Firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. Today, we’re talking about how the unlicensed use of famous movie characters for Halloween costumes could lead to a copyright and trademark lawsuit. On this installment, the spooky installment of The Briefing.
Tara, thank you for joining me today. Oh, look, look, both of us have our Halloween-themed background here. How cute.
Tara: Thanks for having me, Scott, and for sharing the background. This is definitely a timely topic. It’s not It’s not all bobbing for apples when it comes to infringement claims.\
Scott: No, it certainly is not bobbing for apples when it comes to infringement claims. Every Halloween, people dress up as characters from their favorite movies or their TV shows, whether it’s superheroes, villains, cartoon characters, you name it. Let’s talk about how costumes, as these characters, could potentially be problematic.
Tara: Sure. The issue centers around intellectual property rights, both copyright and trademark. Movie studios and companies often hold copyrights over the characters and their distinctive designs, and they use trademarks to protect the names and logos associated with those characters. If you’re producing or selling costumes based on these characters without permission, you’re infringing on those rights.
Scott: Yeah, that’s right. The way a court will determine whether a character from an artistic work, like a movie or a television show or a comic book or a book is deserving of its own copyright protection. This is protection separate and apart from the artistic work in which that character is brought to life is by applying the character delineation test. This test is a legal standard that’s used to determine whether a fictional character is sufficiently developed and distinctive enough to qualify for copyright protection. Over the years, courts have applied this test in a variety of cases involving iconic characters. This includes Godzilla, the Batmobile, James Bond, and Rocky Balboa. This means that if you take elements from these kinds of iconic characters, whether it’s their physical look, a vehicle, or even their specific costume, and start selling them as part of a Halloween costume set without a license, you could be infringing both copyright and trademark rights.
Tara: Let’s talk about how this could apply to, let’s say, someone selling a Joker costume without DC comics permission.
Scott: Sure. Yeah, absolutely. I mean, the Joker is a heavily protected character under both copyright and trademark law. Anyone selling costumes based on the Joker’s likeness without a proper license would face a copyright infringement lawsuit because that costume would be considered a derivative work derived from the Joker character. The court would apply the character delineation test, and they would certainly find that the Joker character is sufficiently developed and distinctive enough to qualify for its own copyright protection. So aside from the copyright issue, there’s also the trademark issue, and the same goes for the use of the trademarks like the Batman logo or the name Joker. The unlicensed use of these elements could also cause consumer confusion. People might think that the costumes are officially sanctioned by DC comics when they’re not.
Tara: So if you’re selling or even just marketing Halloween costumes with logos or designs that are close If it comes enough to the original, a company could claim that you’re infringing their trademark and you might be on the hook for damages.
Scott: That’s definitely something for people to think about before grabbing their favorite superhero costume. But time for a reality check. People who just want to dress up as their favorite characters for fun are really not going to be facing a lawsuit.
Tara: I think you’re right. In all likelihood, probably not. For personal use, like wearing a costume to a Halloween party or around your neighborhood, you’re generally not not going to get sued. The issue really arises when someone starts selling or mass-producing unlicensed costumes. Personal use falls more within the realm of fair use, where there’s no commercial gain involved. But once he enters the picture, that’s when legal troubles can begin.
Scott: No, that’s right, Tara. I agree with you 100%. So thanks for joining me today on this spooktacular episode of The Briefing, Tara. Happy Halloween.
Tara: It was my pleasure. Thanks, Scott. Happy Halloween to you and everyone else.
Scott: Well, that’s all for this spooky edition of The Briefing. Thanks to Tara Sattler for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic. Scott Hervey and James Kachmar discuss this case and how marks become generic on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:Since as early as 1967, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero’, covering a variety of goods, including comic books, action figures, and T-shirts. Most people, myself included, didn’t know that Marvel and DC owned this trademark, and their reaction to this tends to be the same. How could Marvel and DC own a trademark for Superhero? Well, that reaction is essentially the reason why the Trademark Trial and Appeal Board granted a petition to cancel that trademark because that mark became generic.
I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor James Kachmar. We’re going to talk about this case, what are generic trademarks, and what happens when a trademark becomes generic on today’s installment of The Briefing? James, welcome back to the briefing. It’s good to have you back to talk about generic trademarks.
James:Thanks for having me, Scott. I think this is going to be a really interesting discussion, especially since it’s involving heroes.
Scott:No, I agree. Let’s get some background on this super dispute. There are a few interesting factual tidbits that I haven’t seen out there in this widely reported case. The case is Super Babies limited versus Marvel Characters, Inc. Super Babies Limited is a comic book publisher, and they petitioned the Trademark Trial and Appeal Board to cancel the trademark superhero. But this isn’t the first time that Super Babies and Marvel or DC have squared off. It seems that since 2021, DC comics had filed numerous petitions with the Trademark Trial and Appeal Board to oppose the registration of the Trademark Super Babies on the grounds that the mark conflicted with with various other DC trademarks, including Superboy, Superman, Supergirl, Super Friends, but interestingly, not superhero. It appears that Super Babies found some kryptonite and decided to go after the SuperHero and Superheroes trademark registrations. In all seriousness, Super Babies legitimately argued that it’s next to impossible to publish comic books about heroes without Baby being able to refer to as Superheros.
James:Right, Scott. The key argument in the Super babies petition was that the superhero marks have become generic. The petition alleges that superhero is a generic term used in connection with stories about heroes, their characters and products, and that the term refers to a stock character archetype, Superheros, in a genre of stories that features the archetype and its associated tropes, i. E. The Superheros genre. Super Babies argues that consumers do not associate Superheros with any single brand, company, or character. Instead, consumers understand that the term superheroes refers to a broad category of stories and characters tied together by common themes and conventions, as well as to products that relate to or feature superhero stories or characters. Super Babies introduced evidence showing that superhero, as understood by consumers, refers to a general category of stories and characters rather than a particular or specific source of goods.
Scott:Yeah, it was a very well-drafted and interesting petition to read. As a matter of fact, creative, I would say, too, because it included excerpts to certain DC comic issues that that help them make their point. But let’s take a step back and let’s talk about what a generic trademark is. In US trademark law, a generic mark refers to a term that the public primarily understands as the common name for a product or service rather than a name that identifies its source. For example, if I call my brand Apple and I sell apples, well, that’s a generic use. The term is already widely associated with a specific type of product, in that case, the fruit apple. I can’t claim exclusive rights to the trademark apple for apples as a trademark. The USP EBTL will refuse to register a generic trademark on both the principle and the supplemental register.
James:Right, Scott. A mark can’t be protected under trademark law if it’s considered generic because generic terms can’t function as trademarks because they don’t distinguish the products or services of one company from another. They simply describe the product itself. On the other hand, if you were to, instead of selling Apple, sold computers or phones and called them Apple, that could be subject to trademark protection because the term is no longer generic. It doesn’t necessarily describe the product you’re selling.
Scott:Right. Agreed. That mark would be probably considered a distinctive mark and highly protectable. So let’s talk about what happens if a trademark becomes generic over time because a trademark can start off strong. You and I were talking before we started taping about this superhero’s trademark. And way back in 1967, it probably wasn’t widely used. And at that point in time, maybe it was distinctive of the DC comic books and the products and services that they filed the trademarks for. A trademark that was once strong can lose its protection. This is called genericide. James, you wrote an article about this back in 2017 when you reported on Google successfully fending off a genericide attack against its trademark, Google.
James:That’s right. Genericide is one of the biggest risks for a well-known brand. When the public starts using a trademark as the generic name for a product category or service, the brand risks losing its trademark protection. Classic examples of this include the words like aspirin, escalator, or thermos. These started out as trademarks but became generic over time because the public used them to describe the entire category of products rather than a specific company’s product. Could you imagine if Google loses its trademark rights as to its mark Google due to the prolific use of googling as a verb to describe the act of searching the internet?
Scott:Yeah, that would be horrific for Google. I guess we can add now superhero to the list of Mark that have become generic over time. Given that the risk of having a trademark become generic is the loss of its trademark rights, the loss of the exclusive right to use the mark in connection with goods or services, and the ability for competitors to use that mark in connection with their goods as describing the function of their goods, it’s a big deal. Once a trademark is deemed generic, it’s no longer enforceable. As I said, competitors can start using that same term to describe their products, and that can dilute a brand’s identity and value. It can be incredibly damaging, especially for companies that have invested millions of dollars in building their brand.
James:Yes. Imagine spending years and millions of dollars building brand recognition, only to lose it because your trademark has become so ubiquitous that it becomes generic. Let’s talk about steps that companies can take to prevent this from happening, Scott.
Scott:Sure. That’s a good idea. There’s a few key strategies companies can implement to prevent genericide. First, they need to consistently remind the public that their trademark is a brand name and not a product category or a verb. This can be done through proper use in marketing and advertising. For example, you’ll often hear companies say things like, Use Kleenex brand tissues instead of just Kleenex.
James:Right. Second, companies should actively monitor how their trademark is being used by consumers, the media, and even competitors. If they notice misuse of their trademarks, like people using the brand name generically, they need to take some type of action, sometimes even just issuing a public correction.
Scott:Another important tactic is using trademarks with a generic descriptor. Instead of saying, as I said, use Kleenex alone, you would say, Use Kleenex Tissues. This helps separate the brand name from the product category.
James:Right. Companies can also educate consumers through marketing campaigns, in some cases, seeking court orders to enforce the proper use of their trademarks. In extreme cases, some companies even engage in litigation to prevent competitors from using their brand name in a generic sense. It takes a lot of effort to safeguard a trademark, but the downside of losing trademark rights would seem to justify that effort in most cases, especially the amount of money and time companies spend in building their brands.
Scott:Yeah, I agree with you on that, James. One last point, in addition to educating the general public, it’s also important to educate your internal team, your marketing department, your customer service reps, and even the legal team. They need to be vigilant about proper trademark usage.
James:Totally agree, Scott.
Scott:James, thanks for joining me to talk about this super important trademark case and shedding light on the risks of generoside and how to prevent it. I’m sure our listeners will appreciate these insights.
James:Thanks for having me, Scott.
Scott:That’s all for today’s episode of The Briefing. Thanks to James Kachmar for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
California recently passed two new AI laws that aim to protect individuals from the unauthorized creation of digital replicas. Scott Hervey and James Kachmar discuss these laws and their implications for the media industry on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Within the last few weeks, California’s governor, Gavin Newsom, signed into law two new AI bills that are intended to impact the media business. Both of these bills were championed by SAG-AFTRA and were touted as giving individuals more agency over the use of their voice and likeness. Do these bills really deliver on their promise, or are they duplicative? Or might they just create a bunch of confusion with other existing or pending bills?
I’m Scott Hervey from Weintraub Tobin, and today I’m joined by James Kachmar. We’ll be discussing A/B 1836 and S/B 2602 on today’s episode of The Briefing. James, thanks for joining me today. You and I have had a number of these similar conversations. You and I talked about the Elvis Bill, and we talked about the No Fakes Act, and now we’re talking about California’s movement in this space. It’s good to have you here to unpack this with me.
James:Thanks for having me, Scott.
I think as all our as you, of course, know this is an incredibly relevant topic with the explosion of AI and deep fake technology that we’re seeing out there. I think we’re going to be excited to unpack this new legislation.
Scott:Yeah, I agree with you. Let’s start with ABA 1836. So this bill amends Section 3344.1 of the Civil Code. And all of us lawyers that work in the media business are very much aware of 3344, which is basically California’s right of publicity statute, and 3344.1, which was the Fred Astaire Act, governs the protection of the rights of publicity for deceased celebrities and personalities against their unauthorized commercial exploitation. So A. B. 1836 is essentially about updating the law to account for the rise of digital technology and its impact on the likeness rights of deceased celebrities. So people who’ve passed away, but whose name, voice, image, and/or likeness still holds commercial value. So think of famous actors, musicians, or public figures. This amendment directly addressed the growing use of digital replicas, where advanced technologies used to replicate a deceased person’s voice or likeness in media like films or advertisement or even new music.
James:That’s right, Scott. Section 3344.1 already provided protection for the use of a deceased celebrity’s name, voice, and likeness in connection with products, merchandise, or goods, or for the purposes of advertising or selling or soliciting purchases of products, merchandise, goods, and services. Ab 1836 goes a step further, especially in light of the recent AI technology. Let’s talk more about digital replicas. This seems to be the heart of the amendment, and it’s something that could really impact the entertainment industry.
Scott:Yeah, I agree. The act defines a digital replica as a computer-generated, highly realistic electronic representation definition that is readily identifiable as the voice or visual likeness of an individual that is embodied in a sound recording image, audiovisual work, or transmission in which the actual individual either did not actually perform or appeared appear or the actual individual did perform or appear, but the fundamental character of the performance or appearance has been materially altered. This definition is not really that much different than what we’ve seen in the no fakes act. A digital replica does not include, however, the electronic reproduction use of a sample of sound recording or audiovisual work into another. So remixing, mastering or digital remastering of a sound recording or audiovisual work that’s authorized by the copyright holder.
James:Right. And the bill now provides that any person who produces, distributes, or makes available the digital replica of a a deceased personality’s voice or likeness in an expressive audiovisual work or sound recording without prior consent is going to be liable to the injured party in an amount equal to the greater of $10,000 or the actual damages suffered by a person controlling the rights to the deceased personality’s likeness.
Scott:Yeah. I want to point out something that you mentioned because this is where this bill deviates from what existed in 3344.1, which really focused on advertisements and the sale of products and services. This also governs the use of deceased personalities, voice and likeness, in an expressive audiovisual work. So not necessarily an advertisement for a product or service or in connection with the sale of a product or service. There are some exceptions to this. For instance, if the use of the digital replica in an expressive work is for news, use, or is for public affairs or is for sports broadcast or parody, the consent is not required. We saw that in the No Fakes Act as well. Similarly, if the digital replica is used in a documentary or for colony purposes, and it’s clear that the deceased personality did not actually participate. That use is typically allowed without consent.
James:Right. And the restriction on the uses of a digital replica a deceased celebrity is broader than the general prohibitions on the uses of a deceased celebrity’s actual voice or recording. We will call that the analog likeness. Prior to this bill, the prohibition only covered uses in connection with the sales or advertising of the sell of goods and services. There was a specific carve-out for the use of a deceased celebrity’s analog likeness in creative works, including reading audiovisual works. Why is it that what’s permissible with a lookalike or soundalike is not permissible with a digital replica? Either way, the estate of the celebrity isn’t compensated. And how is this prohibition on the use of a digital replica not an imposition on First Amendment creative speech rights?
Scott:Those are all really good points. And we talked about that in detail when we talked about the Tennessee’s Elvis Act, because that prohibited the use of a digital audio replica, but it also had an impact on soundalikes. And for a long time, there’s been a business of celebrity impersonators, soundalikes, lookalikes, and that generally has been allowed. I don’t know how they balance this, James. And I don’t know why what’s allowable with an analog likeness is is not allowable if you morph that analog likeness into a digital replica. I can understand how this addresses a concern of the use of the likeness of a deceased celebrity in a new television program. But there’s nothing that prohibits another actor who may look like that deceased celebrity or who is made up to look like that deceased celebrity to appear in that work. Just think about the Crown. It had an actress portraying Princess Diana. Princess Diana’s estate did not get compensated for that program. Why is it allowable to have an actor portray Princess Diana in the last season of The Crown? But it wouldn’t be allowable for the producers to use a digital replica of Princess Diana.
James:I mean, I know it’s a bad example because this is a California statute, and it only impacts California residents. But nonetheless, I think we could go with my hypothetical and see where maybe it doesn’t make a whole lot of sense unless there’s something I might be missing. What do you think?
Scott:Well, Scott, I think those are all valid points. But given California and Hollywood being the center of the entertainment industry, I could see a lot of out-of-state personalities coming in to take advantage of this act for those media that are being produced or created here in California. I think the issues you’ve identified are where courts are going to struggle with as we start to see cases filed after this law goes into effect. I think they’re going to have to take it on a case-by-case basis, and I think they’re going to struggle with a lot of the very issues you’ve identified. Why is it It’s limited in one instance, but not the other?
James:Yeah. Just another, 3344, it only applies to celebrities that were domiciled in California at the time of their death. Marilyn Monroe, for example, who was domiciled in New York at the time of her death, 3344.1 does not apply to her, and it didn’t apply to her. And so the amendment to 3344.1 wouldn’t apply to her either. So there could be a digital replica, unless New York imposes a similar statute. There could be a digital replica of Marilyn Monroe used in a new television series, and it most likely would not violate this provision, assuming that the producers were not located in California either, domiciled in California. So you’re right. I think we’re going to see a lot of courts struggling with how to apply this. Who is bound by it? Would distributors who have a business in California or who provide the content to California residents, must they adhere to this statute as Well, I guess we’ll see. We’ll see. What happens if a No Fakes Act passes, which is federal legislation, which somewhat addresses this point? Are we going to have two countervailing statutes that are different in certain ways. Let’s move on to AB 2602.
Scott:So this bill introduces due protections for individuals in California by regulating the use of digital replicas of a person’s voice or likeness in personal or professional services contracts. So think actor contracts that are not SAG after actors. So this bill adds Section 927 to the labor code, and it’s effective January 1, 2025. The bill is not going to be applicable retroactively.
James:That’s right, Scott. And the bill governs provisions and contracts related to the use of digital replicas that we’ve been discussing of an individual’s voice or likeness in personal or professional services agreements, specifically for situations where a digital replica is used in place of the individual’s actual presence or performance.
Scott:The statute says that a contract provision allowing the use of a digital replica in place of the actual individual would be unenforceable. Unenforceable as being against public policy unless the following conditions are met. One, the provision allowing for that use must allow the creation and use of the digital replica to replace work the individual would otherwise perform in person. The provision must include a reasonably specific description of the intended use of the digital replica. However, the failure to provide this description does not make the provision in the contract unenforceable if the use aligns with the fundamental terms of the original contract. Three, the individual must be represented by either a lawyer who negotiated on their behalf and clearly outlined the commercial terms in writing or a labor union that expressly addresses the use of digital replicas in their collective bargaining agreement. Think SAG, the most recent SAG contracts.
James:Right. And the bill also clarifies that it does not affect the other provisions of a contract, such as exclusivity rights. These are still going to be enforceable even if the digital replica provisions are not enforceable.
Scott:So this bill seems to codify certain provisions SAG obtained in its negotiations with the studios last year. Since the SAG Agreement terms are only applied to SAG actors, this bill would apply to everybody else. Now, this bill seems to reflect the growing concern in the entertainment and the technology industries about the use of AI-generated content and its impact on jobs. However, this bill only covers California, and it does nothing to prohibit similar business practices outside the state. Also, this bill only addresses the use of a digital replica, but it does not address the use of that individual’s like the creation of an entirely new digital avatar, which was addressed in the SAID contract negotiations. So I don’t know, I guess we’ll see, we’ll really see the impact of this bill, maybe with non-union jobs that are shot in California, where California actors are hired. I don’t know. I see this as being maybe covering a pretty small footprint. What about you, James?
James:Right. I agree, Scott. I mean, it may not have a lot of applicability out there, and it’s going to be interesting to see, really, does it provide any coverage that isn’t already provided under the SAG contract? So once again, we’ll just have to wait and see how it’s enforced.
Scott:That’s all for today’s episode of The Briefing. Thanks to James Kachmar for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
Donald Trump is facing another lawsuit from a musician who objects to the use of their music at campaign events and rallies. Scott Hervey and Jamie Lincenberg discuss this latest challenge on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:Donald Trump’s presidential campaign has faced a number of challenges from musical artists that object to the use of their music in connection with his political campaign. We’ve previously covered the copyright infringement case related to the Trump campaign’s use of Isaac Hayes’ song, ‘Hold on, I’m Coming.’
I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Jamie Lincenberg. We’re going to talk about the Court’s order in Eddie Grant’s lawsuit regarding the Trump campaign’s use of Electric Avenue on today’s episode of The Briefing.
Jamie, welcome back to The Briefing.
Jamie:Thanks for having me back, Scott. I’m excited to dive into this interesting case.
Scott:It is interesting. Let’s start with the basics. Can you give us a quick overview of what this case is about?
Jamie:Certainly, this case involves a copyright infringement claim by musician Eddie Grant against the former President, Donald Trump, and his campaign. The dispute centers around the use of Grant’s song, Electric Avenue. I think we all know that one in the campaign’s 55-second video posted on Trump’s Twitter account during the 2020 presidential election. The video contains an animation of a high-speed red train bearing the words Trump pence, Keep America Great, 2020, in stark contrast to a slow-moving hand car bearing the words Biden President, your hair smells terrific. The hand car is empowered by an animated likeness of President Biden.
Scott:In August 2020, Grant’s lawyer sent the Trump campaign a cease and desist letter. Neither the video nor the tweet were removed. And on September 2020, Grant filed suit. The Trump campaign contended that the use of the song constituted fair use. Now, this recent ruling comes as a result of both parties filing motions for summary judgment.
Jamie:There were two key issues here. First, whether the plaintiffs had a valid copyright registration for the sound recording of Electric Avenue. And second, whether the use of the song in the campaign video constituted fair use under copyright law.
Scott:So the first issue was, there’s a real interesting one. That’s whether or not Eddie Grant had a valid copyright registration in the sound recording of Electric Avenue. So as you know, a plaintiff is not allowed or able to file a lawsuit for copyright infringement unless the allegedly infringed the work has been registered. Without a valid copyright registration, a plaintiff cannot bring a viable copyright infringement action. So the question was whether the registration of the album, Eddie Grant, The Greatest Hits in 2002, which included Electric Avenue amongst the other Eddie Grant hits, also affected registration of that specific sound recording for Electric Avenue.
Jamie:That’s right. And the Court ruled in favor of the plaintiffs on this issue. It found that the registration of the compilation album, Eddie Grant, The Greatest Hits, in 2002, effectively registered the sound recording of Electric Avenue contained within it. The district Court noted that courts in the Second Circuit have held that the registration of a collective or a derivative work covers registration of the constituent parts if the registrant has copyright ownership of those constituent parts as well.
Scott:Now, let’s talk about the fair use question, which seems to be the core of the case. So, the Court analyzed the four statutory factors of fair use: the purpose and character of the use, the nature of the copyright-decided work, the amount and substantiality of the portion used, and the effect on the potential market. Ultimately, the Court found that none of these factors favored the defendant.
Jamie:Let’s talk about the first fair use factor, which asks us Whether the new work merely supersedes the objects of the original creation, supplanting the original, which would not support fair use, or does the use instead add something new with a further purpose or different character, thereby making that use justified because the copying is reasonably necessary in order to achieve this new purpose. A use that has a further purpose or different character is then said to be transformative. The Trump campaign argued that its use of the song was transformative. The Court was, however, not so receptive to this claim.
Scott:No, that’s right. The Court was not receptive to that argument. The Court found that the video has a very low degree of transformativeness, at least as it relates to the song. The Court said that the video is best described as a wholesale copying of music to accompany a political campaign ad. The Court noted that the song plays for more than two-thirds of the animation and that the song itself plays no discernible role in communicating the video’s overarching political commentary.
Jamie:In assessing the first fair use factor, the Court must also consider whether the allegedly infringing use is of a commercial nature. The question of whether the work is commercial is not whether the sole motive of the use is monetary gain but whether the user stands to profit from the exploitation of the copyrighted material without paying the customary for it.
Scott:And in this case, the Court found that the Trump campaign benefited commercially from using Electric Avenue without paying a license fee. The Court noted that there is a well-established market for music licensing, and the Trump campaign sought to gain an advantage by using Grant’s very popular song without paying Grant the customary licensing fee.
Jamie:That’s right. And the second factor favored the plaintiffs because Electric Avenue is a creative work. And looking at the third factor, that also went against the defendants because they used a substantial portion of the song. The fourth and final fair use The Court of Justice, the Court of Justice, asks whether if the challenged use becomes widespread, it will then adversely affect the potential market for the copyrighted work. Analysis of this factor requires the courts to balance the benefit the will derive if the use is permitted, and the personal gain that the copyright owner will receive if the use is denied.
Scott:The Court found that this factor favored Eddie Grant because widespread, uncompensated use could harm the potential market for licensing the song, and there would not be any public benefit that is lost from not allowing the use of the song in the Trump campaign video since the campaign, at least the Court said the campaign could have used any song, created a new song, or used no song at all to convey the same political message in the video. Denying the Trump campaign’s fair use defense in this case, the Court said, will not chill legitimate public satire.
Jamie:I think that the Court got it right here. Scott, what do you think are the broader implications, though, of this ruling for political campaigns and their use of music?
Scott:I think this ruling sends a clear message that a political campaign’s use of a song or other content in a political ad or otherwise as part of political speech does not, without more, automatically transform that original work. At least the Court seemed to say that there needed to be more than just the use of a song as background for a political ad or a work of political satire. The Court seemed to say that in order for the used to be transformative, the work that was used, in this case, the song, needed to somehow help convey the political message or the political satire that was being conveyed by the video or ad itself.
Jamie:Right. Yeah, I agree on that reading of what the Court decided here and an analysis of their opinion I also think it’s interesting we didn’t really get into it here in this discussion or what the Court discussed as far as following the different factors. But I think this becomes an issue also with artists then being specifically associated with a certain campaign. If they don’t have any rights of approval, that would come with licensing the song. If there was a licensing agreement, they could choose not to license their song to a specific campaign. I think that’s come up in the past, and it’s also an important piece that’s not really addressed here, but it’s the association of a piece of music with a political campaign, and I think that’s important as well.
Scott:Yeah, that was an issue, actually. I was talking to Tara about the Isaac Hayes case, and we mentioned it at the top of the reading here. But that was an issue that was raised by the Court in granting the Isaac Hayes entity a temporary restraining order against the Trump campaign for the use of Hold on, I’m coming in connection with political events. Apparently, the Trump campaign was using Hold on, I’m coming in political campaign events. And BMI grants a blanket license for all of the songs within its library, but it’s allowed to pull a particular song if an artist or publisher objects. And Isaac Hayes had his the entity controlling his rights had objected and then filed suit because the Trump campaign continued to use the song. And in granting Isaac Hayes’ entity the temporary restraining order, or sorry, preliminary injunction, The Court noted that as potential harm, that the continued association with the campaign is a measure of potential harm. It’s definitely something that the courts do take into account. Well, thanks for joining me today, Jamie, as always. I appreciate having the opportunity to banter with you and talk about cases like this.
Jamie:Thanks for having me, Scott. Always good to be here.
Scott:Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
The estate of the late singer and songwriter Isaac Hayes sued former President Donald Trump for using one of his songs at campaign events and rallies. Scott Hervey and Tara Sattler discuss this case in this installment of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:In August of this year, the estate of legendary singer and songwriter Isaac Hayes sued former President and current presidential candidate Donald Trump and his campaign for using the song ‘Hold On, I’m Coming’ at political events and rallies. In mid-September, the US District Court for the Northern District of Georgia partially granted Hayes’ estate’s motion for a preliminary injunction. This case raises some interesting issues about the public performance of music, how it’s licensed, and the controls musicians have over its use.
I’m Scott Hervey from Weintraub Tobin, and we’re joined today by Tara Sattler as we talk about the recent ruling in Isaac Hayes enterprises versus Donald Trump enterprise on today’s episode of The Briefing.
Tara, it’s good to have you back.
Tara:Thanks for having me. I’m Glad to be back.
Scott:Let’s jump into the case. I must say, combining politics and copyright law might be the only way to make C-Span seem more exciting in comparison. Can you give me a brief breakdown of the facts.
Tara:Sure. This case goes back to Trump’s use of the song, Hold on, I’m Coming, since 2020. Apparently, he played the song at political rallies and events more than a hundred times since then. Hayes Enterprises, which owns all of Isaac Hayes’ publishing and music rights, sent the Trump campaign a letter back in 2020, demanding that it stop using the song. Apparently, that never happened. The Trump campaign continued to use the song as part of the campaign, and Hayes Enterprises eventually filed suit in August of 2024 and moved for a preliminary injunction.
Scott:So one interesting twist in the case is that the Trump campaign did initially have permission to use the song. The campaign had a public performance license through BMI, which generally allows for the use of a wide range of music in the public performance of that music. Now, that brings up an important point about music licensing in public performance. Public performance rights are a crucial aspect of music copyright. When a song is played in public, such as in a restaurant or a bar, and in this case at a political rally, that use requires a license. Those licenses are obtained in the US from performance rights organizations or PROs, and those are organizations like BMI, ASCAP, and CSAC, and they manage those rights, the performance rights for songwriters and for publishers. Pros offer blanket license that cover a large catalog of songs. Now, blanket license allows the licensee to use any song in the PROs catalog. However, specific songs can be excluded even after the license has been granted.
Tara:Right. Paragraph 2A of the BMI Music License for Political Entities states that one or more works or catalogs of works by one or more BMI songwriters may be excluded from this license if notice is received by BMI that such BMI songwriters object to the use of their copyrighted works for the intended uses by the licensee.
Scott:On June 6, 2024, Hayes Enterprise exercised this right and excluded the song from the license that was granted by BMI to the Trump campaign. However, the campaign continued to use the song after that date, which the court viewed as likely copyright infringement. The court granted a partial preliminary injunction barring the Trump campaign from using that song at further events without a valid license.
Tara:In granting the injunction, the court looked at the following factors: likelihood of success on the merits of the copyright claim, irreparable harm to the copyright owners, balance of hardships between the parties, and also public interest. Interestingly, the court rejected the idea that irreparable harm is automatically presumed in copyright cases. The court cited the 2006 Supreme Court case of eBay Inc. Versus Merck Exchange LLC for the principle that irreparable harm is not to be presumed once a plaintiff establishes a prima facia case of copyright infringement. A plaintiff must prove that the suffered injury will be irreparable without an injunction. An injury is irreparable only if it cannot be undone through monetary remedies, is how the court phrased it.
Scott:Yeah, and here the court found that continued use of the song could cause irreparable harm due to the unwanted association with the campaign.
Tara:Correct.
Scott:Now, the court found that stopping future uses of the song wouldn’t significantly impact the campaign’s political speech rights. It noted that upholding copyright protections serve the public interest while also acknowledging the importance of political expression. The court found no evidence to suggest that the inability to play the song in the future would inhibit the Trump campaign’s political speech, especially considering that the defendants, the Trump campaign, submitted a declaration stating that they do not intend to use the song at future public events while the litigation is pending.
Tara:But here’s an interesting plot twist. As part of the motion, Hayes enterprises asked the court to take down any videos that were posted without a license that that contained the song. The Trump campaign argued that the use of the song was fair use. While not ruling on the fair use defense, the court denied the request to take down the videos of past events that used the song. The court found that for now, the risk of harm from the videos of past events remaining online does not pose the same imminent risk as future uses of the song in future campaign events. While plaintiffs showed irreparable harm for the future use of the song, they did not make this showing for the videos of past uses.
Scott:
Now, this case highlights several interesting legal points. The first is a reminder that political campaigns need to be careful about music licensing, even if they have a blanket license.
Tara:We didn’t discuss that portion of the order that addressed Hayes ownership of the song. The Trump organization claimed that Hayes didn’t own right rights in the song and therefore had no right to object to its use. However, the court found that Hayes enterprises had terminated Universal Music Publishing and Warner Chapel’s ownership of the song back in 2022 and regained an ownership interest in the song. The complex ownership history of this song showcases the importance of termination rights in copyright law, which allow creators or their heirs to reclaim rights after a certain period of Had Hayes enterprises not recaptured ownership of a portion of the song, it may not have had the ability to object to the use by the Trump campaign.
Scott:
Let me add on to that, Tara. So way back when, when I used to be a music lawyer, and we were negotiating either record label deals or publishing deals because the rights that would be obtained by either the record label or the publisher were really broad and allowed for the exploitation of either the sound recording or the publishing rights very, very broadly. There was a limited ability to negotiate for the right to exclude certain uses, certain uses in political campaigns or the use in personal hygiene commercials, et cetera. In the entertainment industry, we’re used to that standard list of terrible excluded uses that you normally see. But that’s an important point that I want to talk about here, at least note, is that remembering to negotiate for that right, because if Hayes hadn’t recaptured his publishing rights, the only thing they would have to rely on is that carve out, that right to exclude that type of use in their publishing deal. And then if they had that, they would then enforce that right with the publisher who then would enforce the opt out right with BMI. Lastly, this case is a good reminder that in copyright cases, plaintiffs need to prove irreparable harm for a preliminary injunction.
Scott:This case is far from over. There still remains an open issue about the past use of the song in the videos and whether that use constitutes fair use. There was a very recent ruling against the Donald Trump campaign for a similar use of music in Trump campaign assets where the court did not find fair use, and we’re going to cover that in another episode. But I think what happened in that case, you’re probably going to see that happen here. But we’re going to track this case, and we’re going to report back when there’s a further event by the court. Tara, thanks for joining me today. I appreciate having you on as always.
Tara:Absolutely. This is an interesting topic to talk about with you. Thanks, Scott.
Scott:Well, that’s all for today’s episode of The Briefing. I’d like to thank Tara Sattler for joining us today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we’ve covered today, please leave us a comment.
The FTC recently announced a new rule to combat fake consumer reviews and testimonials. Scott Hervey and Jessica Marlow explain how this decision will impact businesses and the influencer marketing industry in this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:Scott:On August 14th, 2024, the Federal Trade Commission announced a final rule that will combat fake reviews and testimonials. All parties involved in influence or marketing or companies that have significant e-commerce businesses need to know about these rules, what they prohibit, and the consequences for violating them. Joining me to break down these new rules is fellow Weintraub partner Jessica Marlow on today’s installment of The Briefing.
Jessica, welcome back to The Briefing. It’s been a while.
Jessica:It has. Thank you for having me.
Scott:Good to have you back. We’re talking about one of your favorite topics, influencer marketing.
Jessica:Absolutely. FTC, they’re coming up with new rules all the time, so I’m excited to dig in.
Scott:Yeah. Well, so let’s start out with a rule that I think a number of online brands, companies that have significant online businesses, will find maybe problematic. So the FTC says that it’s an unfair or deceptive act or practice and a violation for a business to provide compensation or other incentives in exchange for the writing or creation of consumer reviews expressing a particular sentiment, whether negative or positive, regarding a product, service, or business that is the subject of the review. In other words, no pay-to-play for consumer reviews. Now, according to the FTC notes, this section doesn’t address testimonials such as a blogger or an influencer paid review. This section only applies to consumer reviews. Also, the FTC pointed out that this section doesn’t prohibit paid or incentivized consumer reviews, only those where the compensation is provided in exchange for expressing a specific sentiment.
Jessica:What about a campaign where a brand solicits positive feedback on a product in exchange for a discount on a future purchase? Something like, Tell us how much you loved our product, and we’ll give you 10% off your next purchase.
Scott:The FTC that just because a business expects a review to be positive doesn’t mean that there is an express or an implied requirement that the review needs to be positive to obtain an incentive. The condition that the review needs to be of a particular sentiment in exchange for the incentive, it needs to be expressed or implied by the circumstances. However, let’s be clear that review gating, where a business only asks for positive reviews for customers while filtering out negative views, is itself illegal.
Jessica:The rule also says that companies are prohibited from creating, writing, or selling fake reviews or testimonials. This would prohibit reviews attributed to a person that doesn’t exist. This would include AI-generated fake reviews, but not necessarily AI-generated summaries of actual reviews or reviews by real people who do not have actual experience with the business, its products, or its services, or that maybe misrepresent their experience of the person giving it. The rule also prohibits businesses from buying fake reviews or testimonials or disseminating such reviews or testimonials when the business knew or should have known that the reviews or testimonials were fake or false. Something to think about for brands or agencies that contract directly with influencers. Make sure that your agreement requires actual use of the reviewed product and that the review reflects the reviewer’s actual experience.
Scott:Yeah, I agree with that. I think having that rep and warranty in an agreement is a way that a business can say, Well, there’s no way that I should have known that these testimonials given by this person are fake. They had no personal knowledge of the product or these reviews or testimonials did not actually reflect their own personal experience because the contract had these reps and warranties that said that the person giving the testimonial had to use it and that they could only give their personal experience as a testimonial. That’s a really good point. The prohibition on fake reviews also extends the company insiders or their relatives. The rule prohibits procuring or disseminating a review from a company insider or their relative when that review is about the business or one of its products or services, when the business knew or should have known that the reviewer, either materially misrepresented, either expressly or by implication, that the viewer exists. So one, it’s a review by a fake person, or two, that the reviewer did not have actual experience with the business or its product or service, or that the review misrepresents that reviewer’s actual experience.
Jessica:The prohibition does not apply to reviews or testimonials that resulted from a business making generalized solicitations to purchasers to pose reviews or testimonials about their experience with the product or service or the business, or that appear on a website or platform as a result of the business merely engaging in consumer review hosting.
Scott:We mentioned above that businesses can’t create or sell fake testimonials. But the flip side of that coin is that The rule also says that businesses cannot buy consumer reviews or disseminate reviews or testimonials that are fake, either that they’re from a fake reviewer or that they materially misrepresent the reviewer’s experience with a the product or the service. They also can’t provide compensation or incentives for reviews expressing a particular sentiment.
Jessica:The rule also addresses insider reviews. The rule prohibits an officer or a manager of a business from writing or creating a consumer review or consumer testimonial about the business or one of its products or services unless there is a clear and conspicuous disclosure of the officer’s or manager’s material relationship to the business. If the relationship is otherwise clear to the audience, then in the case of consumer testimonials, this disclosure isn’t necessary. Officers, managers, employees, or the relatives must disclose their relationship to the company when writing reviews, and companies must ensure that such disclosures are made when they know about these relationships as well.
Scott:It’s quite frequent to see insiders provide some type of product review on TikTok or Instagram. Sometimes, there’s a disclosure about their relationship with the company and their employment status with the company. Other times there isn’t. But companies take note, if your head of social media marketing is also a generator of your TikTok or Instagram content, you need to make sure that you disclose the fact that this person is a company insider. There are some review websites that misrepresent their relationship to a business being reviewed. These rules prohibit a business from materially misrepresenting, either expressly or by implication, that a website, organization, or entity that it controls, owns, or operates provides independent reviews or opinions, other than consumer reviews, about a category of business products or services, including the businesses or one or more of the products or services that it sells.
Jessica:The role also prohibits review suppression. So, companies can’t use unfounded legal threats, intimidation, or false accusations to prevent or remove reviews. And they also can’t misrepresent the displayed reviews represent most or all of the submitted reviews if negative reviews are being suppressed.
Scott:The rule also includes a prohibition against the use of fake social media influence indicators. Businesses are prohibited from selling, distributing, purchasing, or using fake indicators of social media influence, like number of followers, number of subscribers, likes, etc, for commercial purposes.
Jessica:Let’s talk about the impact of this rule on companies and brands that have some online focus.
Scott:Sure. The first is review management. Companies need to be extremely cautious about how they manage their online reviews. They can’t artificially inflate positive reviews or suppress the negative ones.
Jessica:And how about transparency? There’s an increased need for transparency, especially when employees or affiliates are the ones leaving those reviews.
Scott:Right. And that ties into marketing practices. Social media marketing strategies need to be authentic, avoiding the use of fake followers, fake likes, or fake engagement metrics.
Jessica:Let’s focus for a second on customer feedback. Companies should really focus on genuine customer feedback rather than incentivized or manipulated reviews.
Scott:Then let’s not forget the lawyers. Legal compliance Compliance. Online businesses need to establish clear policies and training to ensure compliance with these rules across all digital platforms. Might I suggest maybe an audit of these practices every year or so because as we know, the FTC is always either changing rules or adopting existing rules to fit current times.
Jessica:Absolutely. I think that plays into platform responsibility. If a company hosts reviews on its platform, it needs to ensure representation of all reviews.
Scott:Influencer partnerships. When working with influencers or celebrities, companies must ensure proper disclosure of relationships and the authenticity of the testimonials given by those influencers or celebrities. Agreed. Now, these regulations aim to create a more honest and transparent online marketplace. At least that’s the goal of the FTC. This could potentially level the playing field for businesses, but it requires more diligence to in managing a business’s online presence and managing both negative and positive customer feedback.
Thank you for joining us for today’s episode of The Briefing. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Punchbowl News won the trademark infringement lawsuit filed by greeting card and event planning company, Punch Bowl Inc., despite a previous setback at the Ninth Circuit. Scott Hervey and Jamie Lincenberg discuss this recent development in this installment of The Briefing.
Cases Discussed:
- Rogers V. Grimaldi
- Jack Daniels Properties Inc. Versus VIP products
- Punchbowl, Inc. V. Aj Press, Llc
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Despite a 2022 setback at the Ninth Circuit, Punch Bowl News ultimately came out a winner in a trademark infringement lawsuit bought by a greeting card and event planning company, Punch Bowl Inc.
I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. We are going to talk about this case again and the future of trademark infringement cases in light of the recent changes to the applicability of the Rogers Test on this next installment of The Briefing.
Jamie, welcome back to The Briefing.
Jamie:Thank you, Scott. It’s nice to join you here again.
Scott:Do you remember talking about this case in 2022 when we covered the appeal to the Ninth Circuit?
Jamie:I sure do. Yeah.
Scott:I think it’s good to give some closure to this case since we already covered it. Why don’t Let me start with the case? Punchbowl Inc. Is an online technology company whose product is online invitations and online greeting cards. It has been using the mark Punchbowl since 2006, and it has a federal trademark registration covering the mark. AJ Press was founded by two journalists who used to write for Politico. AJ Press operates Punch Bull News, a subscription-based online news publication that covers in American government and politics. Given the publication’s focus on federal politics, AJ Press chose Punch Bowl because that’s the nickname the Secret Service uses to refer to the US Capitol. It makes sense if you think about the capital turned upside down. It looks like a Punch Bowl. The title Punch Bowl News was selected to elicit the theme and geographic location of the publication. Punch Bowl, the technology company, sued for trademark infringement, and the district court granted AJ Press’s motion to dismiss on the grounds that their use of punch bowl did not give rise to liability under the Rogers test because it constituted protected expression, and it was not expressly misleading as to its source.
Jamie:So, I think we should revisit the Rogers test.
Scott:Yeah, let’s do that.
Jamie:The Rogers test comes from the 1989 Second Circuit case of Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. In that case, the district Court and the Second Circuit on Appeal both said, the use of a third-party mark in an expressive work does not violate the Lanham Act if the title has artistic relevance to the underlying work, and if it has some artistic relevance, that it’s not explicitly misleading as to the source of the content of the work. This then became known as the Rogers Test.
Scott:Applying the Rogers Test, the lower court and the Punch Bowl case dismissed trademark claims, and the Ninth Circuit upheld the lower court’s dismissal. However, in the weeks following the Ninth Circuit’s opinion, the Supreme Court granted cert for Jack Daniels Properties Inc. Versus VIP products, otherwise known as the Squeaky Dog Toy case. The Ninth Circuit stayed its original decision in the Punch Bowl case to wait the Supreme Court’s decision. Now, the Jack Daniels Properties versus VIP Products dispute involved the claim by Jack Daniels that this dog toy, Bad Spaniels, infringed a number of Jack Daniels trademarks. At the district Court and on appeal at the Ninth Circuit, the issue in the Jack Daniels case was framed as to whether the dog toy was an expressive work since trademark claims involving expressive work are analyzed under the Rogers test. On appeal, however, the Supreme Court said that the issue really was not whether the dog toy is an expressive work or not an expressive work, but rather the nature of the use of the Jack Daniels marks. The Supreme Court found that VIP’s use of the marks, while humorous, were for the purpose of serving as a source identifier, so trademark use.
The Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it is also used to perform some expressive function.
Jamie:Subsequent to the Supreme Court’s holding in Jack Daniels, the Ninth Circuit then vacated its original ruling in the Punch Bowl case and then held that the Rogers test doesn’t apply to this case because AJ Press uses Punch Bowl to identify its news product. The Ninth Circuit said, to the extent that any previous cases held that Rogers applies when an expressive mark is used as a mark and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to an expressive work, that those cases are incorrect and are no longer good law.
Scott:So, under Jack Daniels because A. J. Press used Punch Bowl as a trademark, regardless of the fact that there is an expressive purpose for the use of Punch Bowl and that its use is not expressly misleading, the Rogers test is not going to be applied here. The Court sent the case back to the district Court, the Ninth Circuit sent the case back to the District Court with instructions to analyze the case under the Ninth Circuit’s Sleekcraft Test. That’s the test that’s used in the Ninth Circuit for determining trademark infringement. The court was going to examine punch bowls, or AJ Press’s use of punch bowl under the Sleekcraft factors, which are the strength of the mark, the proximity or relatedness of the goods, the similarity of the marks, evidence of factual confusion, the marketing channels used by the parties, the degree of consumer care in selecting the products, and the defendant’s intent, and any likelihood of expansion by the plaintiff into the space operated in by the defendant. Those are the tests for determining likelihood of confusion. They’re used in the Ninth Circuit, and similar versions of the Sleekcraft test are used in other districts throughout the United States.
Jamie:The District Court, in finding no likelihood of confusion, seem to focus on the second and fifth factors that you just mentioned.
Scott:Right, I agree. So, with regard to the second factor, the court found that the goods sold by the parties are not approximate, they’re not related, they’re not complementary, and they don’t function similarly. A platform offering tools for online party planning is not at all related to a news publication that focuses on politics. Also relevant to this point was the court’s finding that the products are not sold to the same class of purchasers.
Jamie:The fifth factor is naturally related to the second factor. The more the products are related the more likely they are to have overlapping marketing channels. Now, interestingly, the court rejected the fact that both companies do use the internet as a marketing channel as evidence of overlapping marketing channels. The Court noted that almost all commercial retailers use the internet, and the shared use of a ubiquitous marketing channel is not evidence of the similarity contemplated by Slate Craft. In today’s world, the shared use of online marketing is not enough to constitute overlapping marketing channels, and a more specific level of overlap is going to be required.
Scott:The dissimilarity in the goods and the lack of proximity between the goods, along with a failure to point out an overlapping discrete marketing channel, really carried the day. Now, the court called this result an obvious It stated that no reasonable consumer would purchase a subscription to a party planning software platform when they really intended to subscribe to a political news website. Do you agree with that? I agree with that.
Jamie:I think that I would agree. I would agree with the court and say that this is an obvious decision. But Scott, what do you think the real takeaway is here?
Scott:Yeah. I mean, a couple of takeaways. One is that even though Rogers was not applicable here, just like it’s not applicable in the squeaky dog toy case, the Jack Daniels case versus VIP products case, that’s not the end of the inquiry. We still need to go through the analysis of the sleep craft factors and really determine whether or not there is a likelihood of confusion. So, the fact now that Rogers might not be available to certain defendants really isn’t the end of the inquiry. Also, plaintiffs who know that the Rogers test is not available to a defendant, that’s not a victory either. It’s an interesting case. I’m glad we saw the result of this case, even though there was a loss of the Ninth Circuit. I think the result was one that we all thought should happen.
Jamie:Yeah, I’m glad we were able to circle back and close the loop. Get some closure for the audience.
Scott:Yeah. Well, thanks for joining me, Jamie.
Jamie:Thanks, Scott.
Scott:Thank you for joining us for today’s episode of The Briefing. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
The US District Court for the Northern District of Ohio issued an opinion in Hayden V. 2K Games, Inc. that could potentially put an end to tattoo copyright cases. Scott Hervey and Tara Sattler discuss the court’s opinion on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Earlier this year, we discussed a jury ruling in Hayden versus 2K Games, Inc, where a jury in the US District Court for the Northern District of Ohio found video game publisher Take-Two Interactive not liable for copyright infringement for a video game that incorporated a depiction of certain tattoos on LeBron James in the game NBA 2K. After the jury verdict, the plaintiff moved the court for a judgment as a matter of law. The court denied the motion and issued an opinion that may potentially put an end to these types of tattoo copyright cases. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor Tara Sattler. We’re going to talk about the court’s opinion in Hayden versus 2K Games next on The Briefing. Tara, welcome back. It’s been a while.
Tara:Thanks, Scott. Glad to be back.
Scott:So, Tara, can you give us a rundown of the facts in this case?
Tara:Yes, absolutely. So Solid Oak, a licensing firm that represents the go-to tattoo artist for NBA players, sued Take-Two Interactive software, the game publisher behind the popular NBA 2K basketball video game, alleging that the game maker’s depiction of LeBron and his tattoos infringes the tattoo artist copyrights in six tattoos. In ruling on the video game publisher’s motion for summary judgment, the court found that the publisher had an implied license to depict the tattoos in the video game. An implied license exists where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it. The court in this case that the players had implied licenses to use the tattoos as elements of their likenesses and the defendant’s right to use the tattoos in depicting the players derives from these implied licenses. A crucial element of the court’s finding the tattoo artist knew their subject was likely to appear in public, on television, in commercials, or in other forms of media. After the jury verdict, the plaintiff then filed post-trial motions asking the judge to overturn the jury verdict or grant a new trial, which the judge denied.
Scott:Before we go on, let’s have a quick review of what an implied license is. An implied license is basically permission to use a copyrighted work that’s inferred from circumstances and conduct rather than explicitly granting it in writing. In this case, the question was whether Hayden’s actions in tattooing LeBron James implied that he, Hayden, was giving permission for the tattoos to be depicted as part of LeBron’s likeness in various media, including video games.
Tara:Let’s focus on the evidence the court looked to in upholding the jury’s finding of an implied license. We will talk about how this analysis will impact future similar cases and also provide some guidance to creators who may feature a person’s likeness, either actually or in some type of digital replica.
Scott:There was testimony that NBA players like LeBron James expressly give the NBA and the Players Association the right to license their likeness, which those organizations then licensed to video game companies and others. But I think the most compelling evidence, the evidence which supported the implied license were the following two pieces of evidence. First, the fact that James had appeared, LeBron James had appeared in numerous NBA 2K games with his tattoos for years before getting tattooed by Hayden. Second, despite Hayden knowing that James was a star athlete and that he also had appeared as an avatar in video games, Hayden admitted that he never told James that he, meaning James, would need permission to show the tattoos on his person when James appeared in television or when he appeared in advertising or when he appeared in movies or was depicted in merchandise or in video games. Hayden’s exact reply to the questioning by the NBA 2K’s lawyer was, We never had a discussion about that. So pair that with James’ testimony, LeBron James’ testimony, that he, LeBron James, believed he had the right to license his entire likeness, including tattoos, and it was a slam dunk for the court, so to speak.
Tara:It sounds like lack of any discussion about restrictions or approvals was really important here.
Scott:Exactly. The court emphasized that the key question was Hayden’s intent at the time he tattooed LeBron James, based on the totality of the circumstances. The fact that Hayden never communicated any restrictions on displaying the tattoos, and possibly also the fact that LeBron James had appeared in video games prior to being tattooed by Hayden, seemed to weigh heavily on the court’s decision.
Tara:Let’s talk now then about some important points of guidance that this case gives to creators who may feature a person’s likeness with tattoos in other media, like movies or animation. First, there’s the implied license. This case suggests that tattoo artists may be granting an implied license for the tattoos to be depicted as part of the person’s likeness in various media. In doing so, the totality of the circumstances would need to be considered in order to determine the tattoo artist’s intent at the time of creating the tattoo. For movies or animation, this could mean considering whether the artist knew that they were tattooing a public figure likely to appear in various media.
Scott:Right. Another key factor would be if there were no restrictions conveyed by the tattoo artist to the person getting tattooed prior to the work commencing. The court found it significant that Hayden never communicated any restrictions to LeBron on his ability to display the tattoos, probably because I imagine LeBron James would look at him and get up and leave. This suggests that if a tattoo artist doesn’t explicitly restrict the use of their designs and their tattoos, it may be assumed that they’re allowing the tattoos to be depicted as part of that person’s likeness.
Tara:Yes, and also relevant are existing licensing practices for the given media at hand. This case noted that the video game industry had long operated under the assumption that character likenesses included tattoos. This certainly applies to the movie and television industry where, at least prior to the tattoo cases, it was generally assumed that the right to feature a person’s actual likeness also included any tattoos that they may have on their body.
Scott:Lastly, the understanding of the person getting tattooed is relevant. Le Ron James’ testimony that he believed he had the right to license his entire likeness, including tattoos, was considered relevant by the court. Now, absent, of course, any evidence of any restrictions expressly conveyed by the tattoo artist, the subject’s understanding of their rights to their own likeness, including those tattoos, will be taken into account by the court. Now, while this case doesn’t provide definitive rules for all situations, taken Together with the decision in the US District Court for the Southern District of New York and Solid Oak Sketches versus 2K Games, I think it shows that the courts will be inclined to find an implied license for depicting tattoos as part of a person’s likeness in various media, absent clear restrictions from the tattoo artist that are conveyed to the person getting the tattoo prior to the work being done.
Tara:I think that’s right, Scott. I think it’s also right now in the age of social media, where almost everybody, of all generations, have a social media digital media presence of some kind or another. So this case started quite a while ago, but I think the court’s ruling rings true, especially now in the age of digital media that’s changed since this all started.
Scott:Now, I definitely agree with you. And hopefully, we can begin to rely on the analysis that this court went through and stop being so concerned about the predicting actors that have tattoos in television and motion pictures, at least where that actor is a well-known actor. We understand that they received those tattoos prior to or after becoming a public figure like Mike Tyson.
Tara:Yeah, I think that’s right for sure.
Scott:Well, that’s all for today’s episode of The Briefing. Thanks to Tara Sattler for joining me today, and thank you, the listener, for viewing or tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
A New York Judge dismissed former Rep. George Santos’ lawsuit against Jimmy Kimmel Live over the late-night host’s use of personalized Cameo videos in one of his segments. Scott Hervey and Tara Sattler discuss this decision on this installment of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:I can see the situation unfolding in the writer’s room for Jimmy Kimmel Live. How can they show that former US Representative George Santos would say just about anything for money and have that be extremely funny? The resulting prank video skit got a bunch of laughs and a copyright lawsuit. However, a recent decision by the US District Court for the Southern District of New York ended Santos’ lawsuit. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague Tara Sattler, to discuss this case and its implications on the television and media industry on today’s installment of the briefing. Tara, welcome back. It’s great to have you.
Tara:Thanks, Scott. I’m glad to be here.
Scott:Tara, by chance, have you seen these George Santos cameo videos?
Tara:I have, and they really are quite hilarious.
Scott:Yeah, they are. I could see why the writers for Jimmy Kimmel Live pitch this. But why don’t you give our listeners a quick summary of the facts?
Tara:Certainly, this case stems from George Santos creating personalized videos on the Cameo platform after he was expelled from Congress. Jimmy Kimmel and his show created fake cameo accounts and requested 14 absurd videos from Santos, which they received and then aired on Jimmy Kimmel Live as part of a segment called Will Santos Say It? As part of the segment, Kimmel made jokes about Santos, including about his federal wire fraud case to which Santos pled guilty. Now, the Cameo terms of service say that the talent, who in this case would be Santos, owns the copyright in the video. Cameo offers two types of to the user who requests the video. However, both licenses specifically exclude television exploitation.
Scott:Right. If you’re Santos, you’re thinking, I own the copyright, and the license granted to the account owner specifically excludes television. So, of course, Santos, Seuss, Kimmel, ABC, and Disney for copyright infringement and a couple of related claims. Disney and the rest of the defendants moved to dismiss, arguing that their use of the videos constituted fair use. The court granted the defendant’s motion to dismiss. The key issue was whether Kimmel’s use of the videos qualified as fair use under copyright law. Now, as we know, Tara, because you and I have done a lot of podcasts on the Andy Warhol Foundation Supreme Court case, this case is post-Warhol, which essentially tightened up fair use, where the focus is on the purpose of the use and whether purpose justifies the copying.
Tara:True. We recall that the Supreme Court in Warhol specifically called out criticism as a purpose that justifies copying.
Scott:That’s exactly what the defendant said and what the court relied on in finding fair use. The court said that Kimmel’s use was clearly for the purpose of criticism and commentary on a newsworthy public figure. The court emphasized that Kimmel was using the videos to criticize Santos’s willingness to say absurd things for money shortly after being expelled from Congress for, albeit fraudulent activity. The court saw this as political commentary that did supersede the original purpose of the videos.
Tara:There was some interesting discussion about the fake accounts that late-night showwriters used to solicit these videos. The court acknowledged that Kimmel’s conduct may have been deceptive, but that doesn’t matter for fair use purposes. Sources. They cited Warhol for the fact that fair use is an objective inquiry into how the work is used, not the subjective intent or good faith of the user. So, while Kimmel’s methods may have been questionable, that didn’t negate the transformative nature of how the videos were ultimately used on his show.
Scott:Now, as for the other fair use factors, the court found the second factor, the nature of the copyrighted work, that weighed slightly against fair use as the videos had some creative elements. However, the court said that this factor rarely plays a significant role. A bit more interesting is the court’s treatment of the third factor, the amount and substantiality of the work used. Despite the fact that Kimmel used the full video, the court found this factor was neutral. The court said that using the full video was reasonable given the transformative purpose.
Tara:That is really interesting. Generally, where the full work is used, that actually tends to weigh against the third fair use factor.
Scott:Right, that’s true. We’ve seen that before. But here the court said, the use of the videos to criticize and comment on a public figure would have been undermined by showing less than the entirety of the videos because the audience would not know whether Santos had indeed said everything in the request. So I can certainly see this portion of the opinion being cited in future fair use arguments.
Tara:I think you’re right, Scott. For the fourth factor, effect on the market, Santos had a unique claim. He claimed that the defendant’s use devalued the market for cameo videos, including Santos’s, by undermining the integrity of the cameo platform.
Scott:That’s right. He did say that, but the court didn’t buy it. The court found no evidence of harm to the market for Santos’s videos beyond the critical use at issue. The court also emphasized the public benefit of allowing criticism and commentary. In reviewing all the factors, the court found fair use was so clearly established that they could dismiss the copyright claim at this very early stage.
Tara:There are a few key takeaways from this case. First is that post-war hall, criticism and commentary remain a good way for establishing a successful fair use argument. If the defendant can show that the use has critical bearing on the original work, the use will likely be found to be transformative.
Scott:The second is Santos’s status as a public figure and how that tied into the deceptive methods Kimmel used to obtain the videos. The opinion seems to imply that using deceptive methods to obtain content from public figures for commentary purposes may be viewed more favorably than similar tactics used on private individuals.
Tara:I definitely think that the broader context of political commentary and public benefit played a big role in the court’s findings. This is something to consider. Defendants may have a stronger fair use argument when their content contributes to important public discussions.
Scott:That’s true. Very true. Tara, thanks for joining us today.
Tara:Thanks, Scott, for inviting me to join you today. And that’s all for today’s episode of The Briefing. Thank you also to the listener or viewer for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topic we covered today, please leave us a comment.
A group of senators introduced an update to the ‘No Fakes Act,’ which protects the voice and visual likeness of individuals from unauthorized AI-generated recreations. Scott Hervey and James Kachmar discuss the changes to this act on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Senators Chris Coons, Marsha Blackburn, Amy Klobuchar, and Thom Tillis introduced an update to the ‘Nurture Originals Foster Art and Keep Entertainment Safe Act’ or the ‘No Fakes Act,’ which the four senators previously released last October. I’m Scott Hervey, and I’m joined today by James Kachmar, and we’re going to talk about the ‘No Fakes Act’ or the update to the ‘No Fakes Act’ on this installment of The Briefing.
James, welcome back to The Briefing. It’s been a while.
James:Good to see you, Scott. Thanks for having me.
Scott:We have a fun one today, the ‘No Fakes Act.’ The purpose and intent of the ‘No Fakes Act’ is to prevent the creation and use of a digital replica of an individual without that person’s consent. Let’s dive into how this proposed act accomplishes this and what the liabilities are for violations of the act. First and foremost, the act creates a new federal property right to authorize the use of a person’s voice or visual likeness in what’s called a digital replica. Now, a digital replica is defined in the act as a newly created, computer-generated highly realistic electronic representation that is readily identifiable as the voice or visual likeness of an individual. Now, this right, the right to control a digital replica or grant rights in a the original replica, survives postmortem and is transferable, licensable, and exclusive to the individual, the executors, the heirs or licensees or devices of that individual for an initial ten years, renewable for a rolling five-year period with a cap of 70 years. That’s postmortem. As I said, this right is licensable. Interestingly, the act says that a license can only have a term of ten years.
James:Okay, Scott, why don’t we look at what the essence of the act is? It basically creates liability for one, the production of digital replica without consent of the applicable right holder, and two, publishing, reproducing, displaying, distributing, or transmitting, or otherwise making available to the public a digital replica without the consent of the applicable right holder, where such acts affect interstate commerce. It is not a defense to liability if the defendant displayed or publicly communicated a disclaimer stating that the digital was unauthorized or generated through artificial intelligence. Liability requires actual knowledge through either the receipt of notice from the right holder or a person authorized to act on behalf of the right holder or an eligible plaintiff, or from the willful avoidance of actual knowledge that the material is an unauthorized digital replica.
Scott:Now, the act allows for a private right of action by the rights holder, and it also allows for a private right of action by any other person that controls, including through a license, the right to exercise or the right to use the rights holder’s voice or likeness. The act is not clear whether this license needs to be exclusive in order to sue for a violation of the act, like under copyright or if it can be non-exclusive and still have the right to sue.
James:The act also allows for a private right of action for record labels. In the case of digital replica involving either a sound recording artist who has entered into a contract for their exclusive sound recording artist services, or any artist who has entered into an exclusive license to distribute or transmit one or more of their album or works that capture their performance. This is similar to what you and I had talked about some time ago about Tennessee’s Elvis Act.
Scott:Right, it is.
James:There’s also a three-year statute of limitations period for bringing lawsuits for violations of the act. The act provides for monetary relief injunctive relief, punitive damages for a willful violation, as well as attorney’s fees.
Scott:The act also establishes separate liability for online service providers that participate in the making of a digital replica, so take no generative AI service providers, or make a digital replica available on an online service unless the online service has taken reasonable steps to remove or disable access to the unauthorized digital replica as soon as it is technically and practically feasible for the online service actor acquiring actual knowledge that the material is an unauthorized digital replica. So similar to the DMCA, the Digital Millennium Copyright Act, the No Fakes Act establishes a notice and takedown process. Also similar to the DMCA, liability for false takedown notices under the No Fakes Act.
James:That’s right, Scott. And there are some exclusions that are built into the act, which are based on recognized First Amendment protections. For instance, it’s not a violation of the act when a digital replica is used in a bonafide news, public affairs, or sports broadcast or account, if the digital replica is the subject of or materially relevant to the subject of the broadcast or account.
Scott:And similarly, it will not be a violation of the act where a digital replica is of an individual that is portrayed in a documentary or in a historical or biographical manner. Now, this can include some degree of fictionalization unless the production or use is intended to and does, in fact, create the false impression that the work is an authentic work and that the person portrayed by the digital replica actually participated in the work. Whether on camera or through a sound recording.
James:Right. Similar to what we see in the copyright field, it is also not a violation of the act where the digital replica is used consistent with the public interest, either in bona fide commentary, criticism, scholarship, or satire and parody, or if it is used in a fleeting or negligible manner. Lastly, it will not be a violation of the act if the digital replica is used in an advertisement or commercial announcement for any of the above examples.
Scott:That’s interesting, right? That’s a mix of write-up publicity statutes and copyright. The bill also includes a safe harbor from liability for AI technology companies that create a technology product that creates digital replicas unless such product is, one, primarily designed to produce one or more unauthorized digital replicas, and two, has only limited commercially sufficient purposes for use other than to produce an unauthorized digital replica, or three, is marketed, advertised, or otherwise promoted by that person or another acting in concert with that person, with that person’s knowledge for use in producing an unauthorized digital replica. It’s going to be interesting to see if the Senate will pass this bill, given where we are now in the election cycle. Now, the Copyright Office has recently issued a report basically cautioning that there is an urgent need for new federal legislation to address the proliferation of deepfakes created through the use of artificial intelligence. The report, it’s a great report, and anybody who’s interested in the subject should read it. The report analyzed the existing legal framework through which digital replicas can be addressed and pointed out their shortcomings. Perhaps the Senate will take this bill under consideration sooner rather than later.
James:Right, Scott. We’ll just have to wait and see what the Senate does with the No Fakes Act update, and maybe you and I can get back together for another podcast here soon on this topic.
Scott:That’s all for today’s episode of The Briefing. Thank you, James, for joining us. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.
The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie Lincenberg discuss the TTAB’s long-standing opinion on this episode of The Briefing.
Read Scott’s article on the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:In October 2014, I wrote an article for our law firm’s blog, remember those? That discussed the Trademark Trial and Appeal Board’s tendency to find wine, beer, and non-alcoholic beverages related for the purpose of determining likelihood of confusion. Now, the T-TAB has repeatedly said that there is no per se rule that all beverages are related for Section 2D refusal purposes. But really? Now, most consumers see wine, beer, and non-alcoholic beverages as unrelated products and would not believe, even if they shared a similar trademark element, like a similar word or design, that they’re related or that they emanate from the same source. However, the Trademark Trial and Appeal Board seems to always find otherwise.
I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and frequent Briefing contributor, Jamie Lincenberg. I thought it would be interesting to revisit this topic ten years later. So today, we’re going to take an updated look at beer, wine, water, and likelihood of confusion on today’s episode of The Briefing.
So, Jamie, welcome back.
Jamie:Thank you, Scott. I’m happy to be here and to revisit this topic with you.
Scott:Great. So, like all, one of the things I think the best place to start is at the beginning, and that’s with the 1992 decision in In re Saler Brew, Fron Salier. That case seems to be the first time that the Trademark Trial and Appeal Board showed that it was receptive to the argument that wine and beer are related for 2D likelihood of confusion purposes. In that case, the Trademark Trial and Appeal Board found that the marks Christopher Columbus for beer, confusingly similar to the mark Cristobal Cologne and Design for Sweet Wine. The T-TAB found persuasive third-party registrations introduced by the Trademark Examiner, showing that a number of companies have registered their marks for both beer and wine.
Jamie:Following that case, the T-TAB adjudicated a number of non-precedential cases in which the T-TAB found beer and wine related. For example, in In Re Stone Street, LLC, the T-TAB found the mark Buckeye for wine, confusingly similar to the Mark Buckeye sparkling dry for beer. Similar to In Re Saylor Brow, the T-TAB found persuasive third-party registrations covering both beer and wine. The applicant in Stone Street argued that another federal circuit case regarding the Mumm champagne brand required a finding that beer and wine are not related. However, the T-TAB was not persuaded. The record in Mumm demonstrated the Mumm brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers. The record in Stone Street lacks any such distinction.
Scott:Then, in 2011, the T-TAB issued a presidential opinion on the continuing conflict of beer and wine. Now, that case involved a refusal to register the Mark HP for wine based on the likelihood of confusion with the Mark HP and design for beer. The T-TAB found persuasive third-party registration submitted by the trademark examiner that covered both beer and wine, as well as third-party web pages for companies that make and sell both beer and wine. The T-TAB stated as follows: the third-party registration evidence and the website evidence together amply demonstrate the relatedness of beer and wine and show that consumers if they encounter both goods sold under confusingly similar marks, are likely to believe that they emanate from the same source.
Jamie:Then 2013 was when the T-TAB began expanding the scope of goods related to wine and also likely beer to include water. In the case of Joel Gottwines versus Von Gott, the T-TAB addressed Gottwines’ opposition to Von Gott’s application for got light, for flat and carbonated drinking water, coconut water, and flavored mineral water, on the grounds that the applicant’s mark was confusingly similar to Joel Gott’s mark, Gott, G-O-T-T, for wine.
Scott:Addressing whether there is a likelihood of confusion between Van Gott’s Mark and Joel Gott’s Mark, having found the marks similar, obviously, the court then focused on the relatedness of the goods, the trade channels, and the class of purchasers. First, the court noted that the goods need only be sufficiently related such that consumers would likely assume upon encountering the goods under similar marks that they originate from or are sponsored or authorized by or are otherwise connected to this same source. Now, the court found compelling the use of third-party registrations covering both water and wine that was submitted by Joel Gott. The court noted that the use-based third-party registrations have probative value in that they suggest that the goods listed therein are of a kind that may emanate from a single source. Joel Gott also introduced marketplace evidence demonstrating that wine and water are related goods. Joel Gott introduced testimony from a witness who purchased several different brands of water from different winery tasting rooms, each bearing the name of the winery at which the wines and water were being sold. The court found this evidence strongly favors a finding of likelihood of confusion with respect to the DuPont factors regarding the relatedness of the goods.
Jamie:As to the channels of trade, Van Gaat contended that although both wine and water are sold in supermarkets, they’re sold in different sections of the store. Van Gaat argued that because goods both be sold in a large store such as a supermarket, would not alone be sufficient to show that consumers would be likely to encounter both in one shopping trip, or to assume a common source, merely because both types of goods can be found in such a store. However, the court found compelling evidence submitted by Joel Gott, which showed that wine and water are often sold in the same area of a store, as well as copies of online beverage menus from restaurant websites, showing that restaurants offer both water and wine for sale in that same menu section. Based on the evidence submitted by Joel Gott, the court found that wine and water are sold through the same trade channels, the same classes of customers.
Scott:Now, here we are in 2022. Well, I guess here we are a couple of years ago in 2022, the case of In re Rockaway drinks. Even though it’s a non-precedential case, it seems to firmly establish that beer, wine, non-alcoholic beverages, including sparkling waters of any kind, are related for likelihood of confusion purposes. In that case, both marks included the term Rockaway, although the cited mark was Rockaway Brewing Company with Brewing Company disclaimed. The T-TAB said that because both marks begin with the identical term Rockaway, it is agreed that the marks are similar in sound, appearance, connotation, and commercial impression.
Jamie:Now, turning to the relatedness of the good. The T-TAB evaluated whether non-alcoholic water-based beverages and beer are similar enough to cause confusion among consumers. The board referenced the DuPont factors, specifically the second and third factors, which deal with the similarity of the goods and the channels through which they’re sold.
Scott:Whether the goods are related for likelihood of confusion purposes hinges on whether consumers could be led to believe that the products come from the same source, even if they are not identical or are not directly competitive. The T-TAB examined evidence of breweries that sell both beer and non-alcoholic beverages like soda and sparkling water under the same brand names. For example, brands like Appalachian Brewing Company and Saint Arnold not only offer craft beers but also root beers and sodas. That showed that the market often blurs the lines between alcoholic and non-alcoholic beverage offerings.
Jamie:The board also considered third-party registrations, where trademarks were registered for both beer and various non-alcoholic beverages. This supported the idea that these products might be perceived as related by the public, increasing that likelihood of confusion. Ultimately, the T-TAB’s decision emphasizes that it’s not just the nature of the goods, but also how they’re marketed and perceived by consumers that can create a likelihood of confusion. Even distinct products like beer and sparkling water might be seen as related when they’re sold under similar branding in the same venues.
Scott:Ten years later, it seems that the relatedness creep within the beverage category continues. I think it’s fair to say that all types of beverages, whether they be non-alcoholic sparkling water, energy drinks, canned soft drinks, beer or wine, would probably be considered related, at least by the Trademark Trial and Appeal Board when it comes to refusing registration for likelihood of confusion. Also, it’s a reminder that when it comes to trademark law, it’s not just about what you’re selling, but about how your goods are positioned in the marketplace. The boundaries between product categories are often more fluid than they appear, and this can have real implications for trademark disputes and your trademark registration application.
Jamie:All beverages are certainly not related in my mind, but for trademark purposes, I do think that these positions make sense.
Scott:Yeah, it’s an important thing to remember that sometimes, the way consumers see the relatedness of products is not necessarily the way the Trademark Trial and Appeal Board sees the relatedness of those same products.
Jamie:Right. Thanks, Scott.
Scott:That’s all for today’s episode of The Briefing. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.
‘Gabby’s Table’ was denied registration in a major Trademark decision that impacts affiliate marketing. Weintraub attorneys Scott Hervey and Jamie Lincenberg break down what this means for your business in this episode of “The Briefing”
Watch this episode on the Weintraub YouTube channel here and listen to the full podcast here.
Show Notes:Scott
On July 1st, 2024, the US Trademark Trial and Appeal Board issued a precedential decision that has great implications in today’s world of affiliate marketing. In the decision of In re Gayle Weiss, the T-Tab upheld an examiner’s refusal to register the mark Gabby’s Table for computerized online retail store services in the field of cooking utensils, cookware, etc. Because the specimen submitted by the applicant, the Gabby’s Table website, failed to show the mark used in commerce in connection with the identified services. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. Today, we’re going to break down this decision and its implications for affiliate marketing on today’s episode of “The Briefing.”
Jamie, welcome back. It’s been a while.
Jamie
Thanks, Scott. Yeah, it’s nice to join you again.
Scott
Always great to have you, Jamie. But let’s dive into this presidential decision by the Trademark Trial and Appeal Board. As I said in the opening, the TTAB case results from an applicant’s appeal from a trademark examiner’s refusal to register the Gabby’s table, Trademark for online retail store services. I think the main point of this decision is to clarify the boundaries of what can and cannot be considered retail store services, especially in the digital age where online businesses blur traditional lines. This decision also shows the critical issue of providing acceptable specimens of use during the trademark registration process.
Jamie
Before we get into that, can I point out a procedural issue highlighted by the TTAB that is an important thing to highlight here?
Scott
Yeah, absolutely. Go for it.
Jamie
Before the board got to the core of the appeal, the board addressed the applicant’s request that the board take judicial notice of certain third-party registrations and follow a hyperlink for information regarding Amazon affiliates. The board denied both of those requests. They emphasize that evidence must be submitted properly through a request to suspend the appeal and remand the application for further examination. This aligns with established procedures which require a formal process to introduce new evidence after an appeal has been filed.
Scott
Yeah, Jamie, that’s great. That’s a really important procedural point to make because it seems to be something that comes up frequently in TTAB disputes. So, practitioners who are appealing an examiner’s refusal to register and want to introduce new evidence, evidence that was not introduced during the office action, and response to office action procedures, you need to suspend the TTAB proceeding or mandatory examining attorney and introduce new evidence on the record that way. Now, let’s get to the point of the case. Digging into the heart of the decision, the specimen abuse. For those unfamiliar with what a specimen is, it’s essentially a sample that shows how a trademark is actually being used in commerce. The specimen needs to create a direct association between the mark and the services it represents.
Jamie
In this case, the applicant specimen was a web page featuring products recommended by the applicant with a “Buy Now” button. The problem was that clicking this button didn’t lead to a purchase directly from the applicant; instead, it redirected users to third-party websites like Amazon, where the products could then be bought.
Scott
Right. And the TTAB found that this did not constitute an acceptable specimen because it didn’t show the applicant providing the retail services directly. Instead, it only showed the applicant engaged in affiliate marketing. Affiliate marketing typically involves promoting third-party products or services through various online platforms. When someone makes a purchase via an affiliate’s link, the affiliate usually earns a commission. It’s a business model that’s become increasingly popular with the rise of influencers, bloggers, and online content creators.
Jamie
The TTAB made it clear that affiliate marketing doesn’t equate to operating a retail store. The distinction there lies in the nature of the services provided. Retail services, according to the TTAB, involve the direct sale of goods or services to consumers. This includes everything from brick-and-mortar stores to e-commerce websites that handle transactions directly with the customers. On the other hand, affiliate marketing doesn’t involve direct sales or transactions. Instead, affiliates merely direct potential buyers to a retailer’s platform, where the actual purchase then takes place. The affiliate is acting more as a middleman connecting consumers with products but not handling the sale itself.
Scott
And the board pointed out that an acceptable specimen for a service market must show a direct connection between the market and the services. In this case, simply listing products with an affiliate link did not meet that standard for a retail store. If the services are as retail store services, then the specimen must show that consumers are able to purchase the goods from the applicant and not some other third party.
Jamie
What are the big takeaways from this decision? I think, first, it underscores the importance of submitting a specimen that clearly demonstrates the use of the mark in connection with the specific services listed in the application.
Scott
Right. That’s a great point. Second, I think it highlights the strict procedural rules around introducing evidence in trademarked appeals, attempting to add evidence via hyperlinks or during the appeals process without following the correct steps simply won’t fly.
Jamie
Yeah. And lastly, but I think probably the most important point is the precedent set that the USPTO will now require retail services to have that direct transactional relationship with consumers. And specimen submitted in support of an application to register a mark for retail services must be able to show this direct transactional connection.
Scott
Yeah, and on a broad level, I think this case is also a reminder to carefully consider how you categorize your business activities when you are applying for a trademark. Misclassifying your services could lead to legal challenges or, in this case, a rejection from the trademark trial and appeal for it.
Jamie
Right. Thanks, Scott. I think this is really helpful and important information to share.
Scott
Yeah, I must agree, Jamie. Well, that’s all for today’s episode of “The Briefing.” Jamie, thanks for joining us today. And thank you, the listener or viewer, for tuning in. We found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.
In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this featured episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:The trademark dispute in Blue Mountain Holdings versus Blitz Nutraceuticals ended with the 11th Circuit upholding the finding by the US. District Court for the Northern District of Georgia that Lighthouse Enterprises had issued a naked license to Blue Mountain, which covered the trademark that was the basis for the dispute. We’re going to talk all about the naked license on this installment of The Briefing by Weintraub Tobin. Thanks for joining us today. My name is Scott Hervey. I’m joined by my colleague, Eric Caligari. Eric, thanks for joining us today.
Eric:Thanks for having me, Scott.
Scott:Eric, can you give us some background on the case of Blue Mountain Holdings versus Bliss Nutraceuticals?
Eric:Yes, of course. Lighthouse Enterprises and Blue Mountain Holdings initially sued Bliss in April of 2020 for federal trademark infringement, federal cybersquatting, and federal trademark dilution, along with some other claims. The lawsuit was based on their ownership of the trademark, Vivazen Botanicals claimed that had been selling Vivazen products since 2012 and registered the name as a trademark with the United States Patent and Trademark Office in 2017. Blue Mountain claimed that it acquired the Vivazen trademark and a 2019 purchase agreement with Lighthouse. Bliss claimed that this purchase agreement was really a license. The district court agreed with Bliss and found that the purchase agreement was really a license and that this license became a naked license when Lighthouse failed to police Blue Mountain’s use of the trademark. This resulted in the abandonment of Lighthouse’s rights in the trademark, and the 11th Circuit upheld the district court’s findings.
Scott:While this case itself is very interesting, and it’s probably far from being over, what I want to focus on today is the ramifications of the court’s finding that the transaction between Lighthouse and Blue Mountain was a naked license. A naked license refers to a situation where a trademark owner grants permission to another party to use a trademark, and that trademark owner does not maintain proper control over the quality and nature of the goods or services associated with that trademark. In other words, it’s a license that lacks the necessary safeguards to ensure that the trademark’s reputation and distinctiveness are maintained. The nakedness of a license isn’t judged by whether the licensor allows product quality to suffer. It’s whether the license or is keeping an eye on product quality, and whether, in other words, it has abandoned quality control or not. If it has, the license is naked and the trademark is abandoned.
Eric:Yeah, and if a trademark is abandoned, whatever rights the mark owner may have had in the mark are also abandoned. It’s quite a serious situation and result to avoid.
Scott:I agree. And given this, let’s talk about how to avoid the granting of a naked license.
Eric:Yeah, sure. Well, first of all, when entering into a license agreement, that agreement should be in writing, and the right agreement should fully outline the terms and conditions that the licensee must adhere to. These terms should include provisions such as quality control and the consequences of failing to meet those quality control standards.
Scott:And it’s not enough that the agreement includes proper quality control language; but it’s imperative that the trademark owner actually exercise proper control over the products or services that are associated with the trademark. This can include setting quality standards, providing guidelines, and periodically inspecting the products or services to ensure that they meet those standards. This was emphasized by the 11th Circuit’s ruling, in which it noted that the record in the case showed that Lighthouse engaged in no meaningful supervision or inspection of the products bearing the Vivazen mark.
Eric:And in exercising its quality control rights. It’s also important that there be consequences if the mark owner abjures any deviations from the agreed-upon quality standards and tries to enforce those consequences to make sure that they’re being adhered to.
Scott:Agreed. The licensing agreement should include a clause that allows the license or to terminate the license if the licensee fails to meet the agreed-upon quality standards or breaches other terms of the agreement.
Eric:Agreed. And thanks for bringing this case to our attention for highlighting the pitfalls of the naked license and ways to try to avoid that outcome.
Scott:Absolutely, Eric.
Eric:Well, that about wraps it up here. Thanks for joining us on the briefing. By Weintraub Tobin. Hope you enjoyed today’s episode. Please remember to subscribe to our podcast and to our YouTube channel.
Weintraub attorneys Scott Hervey and Jessica Marlo explore the US Olympic Committee’s lawsuit against Prime Hydration, co-founded by Logan Paul, for using Olympic trademarks in their ad campaign with Kevin Durant. Discover the power of Olympic trademarks and their protection!
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:
Scott
The United States Olympic and Paralympic Committee has filed a lawsuit in the United States District Court for Colorado against Prime Hydration, a sports drink company co-founded by social media influencer Logan Paul. The complaint alleges that Prime Hydration’s ad campaign featuring NBA star and Team USA member Kevin Durant infringes numerous Olympic trademarks. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and huge Olympic fan, Jessica Marlo. We are to talk about this case and the unique aspects of Olympic trademarks in this installment of “The Briefing.”
Jessica, welcome back to “The Briefing.”
Jessica
Thank you for having me.
Scott
Jessica, I know your absolute fascination with the Olympics runs deep, so I thought this would be a fantastic topic to discuss with you.
Jessica
Absolutely. This is the perfect marriage of all of my favorite things. Having been a gymnast, going to the Olympic Gymnastics Trials every four years and working in the brand and licensing space, this is everything bundled into one. So I’m very excited to talk about this.
Scott
The trifecta. The gold, the gold medal, as they say. We’re about halfway into the Paris Olympics, but this lawsuit was filed just before the Paris Olympics started. But let me give you a little background on the Olympic trademarks. Under the Ted Stevens Olympic Amateur Sports Act, Congress granted the USOPC, exclusive ownership of certain Olympic-related words and symbols, including the name United States Olympic Committee, the words Olympic, Olympian, going for the Gold, Team USA and the International Olympic Committee’s symbol of the five interlocking rings. The act also permits the USOPC to authorize its contributors suppliers to use these Olympic-related words and symbols, and it also allows the USOPC to initiate lawsuits to address unauthorized uses. The USOPC’s rights are strong, and they were acknowledged as such by the Supreme Court in San Francisco Arts and Athletics versus the United States Olympic Committee, which involved a suit to injoin San Francisco Arts and Athletics use of Gay Olympic Games.
The Court noted that the legislative history demonstrated that Congress intended to provide the USOPC with an absolute monopoly over the use of the word Olympic. It doesn’t matter whether any unauthorized use of the word tends to cause confusion or not. All uses by parties other than the USOPC and those they authorize are prohibited, absolutely prohibited. Third-party marks that contain the designated Olympic-related words or symbols or any combination thereof cannot be registered on either the principle or the supplemental register, and nor can that matter be disclaimed. Those marks must be refused registration by the US Patent and Trademark Office on the grounds that the mark is not in lawful use in commerce. The US Olympic Trademark rights, they’re stronger than normal trademark rights, as you can see.
Jessica
Absolutely. The USOPC and its international counterpart, the IOC, are extremely diligent in protecting the Olympic marks, and this is all driven by revenue generated from sponsors. So Olympic sponsorships are the second biggest revenue source for the IOC right behind its broadcast rights. Sponsors pay hundreds of millions of dollars to be the exclusive sponsors of the Olympic Games, and Olympic organizers are required to make sure no one gets a free ride.
Scott
That’s right. And with the 2024 Paris Olympic Games underway, it’s no surprise that the USOPC is stepping up its enforcement activity. Actually, they stepped it up prior to the Olympic Games. With regard to prime hydration, the product packaging for its Kevin Durant collaboration shows use of the USOPC mark, Olympic, Olympian, Team USA, and going for gold. Ad copy for the product refers to the product as the, “Kevin Durant Olympic Prime Drink”. Let’s have our producer put up the drink can graphic on the screen here. You can see quite a number of references to Olympic trademarks and trademarks that are protected and owned exclusively by the USOPC. The USOPC claims that prime hydration failed to cease use of these Olympic marks after the USOPC sent Prime a cease and assist letter.
Jessica
Wow. Well, Coca-Cola has a license deal with the USOPC that gives it the exclusive use of Olympic trademarks, including Olympic and Team USA, for its beverages in the United States. The USOPC says that the license fee Coca-Cola pays for this right is significant. Understandably so. Clearly, a significant component of value is exclusivity. In its complaint against Prime Hydration, the USOPC argues that the revenue from being able to grant exclusivity, this revenue which is vital to the funding and the training and entering of US teams for the Olympic, Paralympic, Youth Olympic, Pan-American, and Parapan-American Games, is threatened when individuals and organizations use the USOPC trademarks without authorization.
Scott
That’s right. The complaint that was filed against Prime Hydration alleges a violation of the Ted Stevens Olympic and Amateur Sports Act, various violations of the Lanham Act, and a violation of the Colorado consumer protection laws and unfair competition laws. The complaint seeks damages, and it includes a claim for trouble damages and punitive damages and an injunction. But interestingly, I did not see on a docket, it might have been that I missed it, but I did not see on a docket a motion for a TRO, a temporary restraining order, which is odd given that these types of infringements, especially when time is of the essence, they’re usually partnered with a TRO.
Jessica
That’s interesting. What we’ve learned, if nothing else, is that you don’t touch the Olympic trademarks. The USOPC and its international counterpart, the IOC, will come after you swiftly and aggressively. It’s understandable when we’re talking about the money that’s coming from the licensing of these marks and how it really helps fund the training of these athletes and entering into the games. I mean, that’s something that really needs to be protected for the success of the country as it relates to its participation in any of the various Olympic, Paralympic, Youth, Olympic, Pan-American and Pan-American Games.
Scott
Absolutely. What I’m surprised over or with is that nobody flagged these issues to Prime Hydration. No one on Kevin Durant’s team, which I assume had approval over the product and ad copy. Nobody within Prime Hydration, none of its distributors. It just seems odd that everybody was asleep at the wheel here. But nonetheless, I think my expectation is that this will settle. I don’t think that we’re going to see any further action in the case itself. But if we do, we’ll be certain to- We’ll be back. Give you an update for sure. Jessica, thanks. Thanks for joining us. Is there anything that you want to say before we wrap this up?
Jessica
Go Team USA!
Scott
That’s what I thought. Thanks again for joining us.
Jessica
Thank you.
Scott
Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Tracy Anderson, the mastermind behind the Tracy Anderson Method, sued ex-trainer Megan Roup for allegedly stealing her routines and licensing them to Equinox. The US District Court just ruled against Anderson’s copyright claim. Join Scott Hervey and Jamie Lincenbergfrom Weintraub Tobin on “The Briefing” as they discuss the case’s impact on fitness entrepreneurs.
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:
ScottExercise is a multi-million-dollar business, and nobody knows that better than Tracy Anderson, celebrity fitness trainer and creator of the Tracy Anderson Method. The Tracy Anderson Method is a fitness routine that combines choreography, fitness, and cardiovascular movement, and it served as the foundation for multiple exercise studios and 19 home videos. Anderson sued one of her former trainers, Megan Roup, for ripping off her routines to create her own choreography-based dance cardio workout, which Roup later licensed to rival gym chain Equinox Holdings. The US District Court for the Central District of California recently ruled on Rupp’s motion for summary judgment, denying Anderson’s relief on her copyright claim. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Jamie Lincenberg. We’re going to talk about exercise routines and copyright and what this case means for celebrity trainers and fitness entrepreneurs in this next installment of “The Briefing.”
Jamie, welcome back to “The Briefing.”
JamieThanks, Scott. It’s Good to be here and to get into this case. I’ve actually done the Tracy Anderson method and Megan Roup’s classes.
ScottThat’s great. That’s great. You speak from first-hand experience, so this is great. Exactly. All right, so let’s talk about the cases. The facts are fairly straightforward. Anderson is a fitness trainer who developed the Tracy Anderson method. She has studios in LA, New York, Madrid, London, and she’s got merch, lots and lots of merch. She has truly built a fitness empire. Roup was a trainer in a Tracy Anderson gym from about 2011 to 2017. And Roup signed a trainer agreement upon her employment, which contained a mostly standard confidential information provision, which identified workouts, movements, exercise, routines, exercise formulas, nutrition advice, content, sequences, dances, muscular structure, work, and equipment as being, “confidential information”. After Roup left Anderson’s employment, she founded TSS, another choreography-based dance cardio workout.
JamieTwo weeks after terminating her employment with Tracy Anderson in February 2017, Roup sent emails to potential clients, including clients of Anderson’s, announcing her development of TSS, her choreography-based dance cardio workout. In March 2017, Roup announced on social media her launch of TSS, equals Equinox licensed TSS from Roup, and while working with Equinox, Roup prepared an instructor training manual for TSS, which Anderson alleges included much of the same information contained in Anderson’s confidential training materials.
ScottSo after some initial law in motion, Anderson’s remaining claims were whittled down to copyright infringement and breach of contract. Roup then moved for summary judgment on both of those remaining claims. So as to the copyright claim, Anderson asserted that Roup infringed on the copyrights Anderson has in her home videos since the videos copy the choreography, movements, sequences, and the routines from the videos. Anderson is in arguing that Roup copied the home videos themselves, but that she copied the underlying routines that are captured on the footage. Anderson believes that the copyrights in the home videos extend to the routines that are captured in the home videos.
JamieSo, Roup didn’t dispute the similarity between hers and Anderson’s exercise dance routine. However, she does argue that Anderson can’t prove its copyright claim because Anderson’s underlying exercises in the videos are non-copyrightable under the Ninth Circuit case of Bikram’s Yoga College of India versus Evaluation Yoga.
ScottIn Bikram, Bikram Choudhury developed and popularized The Sequence, which is a series of 26 yoga poses and two breathing exercises. He published a book that included descriptions, photographs, and drawings of the sequence. After, the two defendants participated in his yoga teacher training courses, and then they started a competing company that used the sequences in their yoga classes. Choudhury sued for copyright infringement. The Ninth Circuit held that the sequence was a system designed to yield physical benefits and a sense of well-being and a healing methodology which is not eligible for protection by copyright. As a result, the copyright protected only the expression of this idea, meaning the words in the pictures used to describe the sequence in his book, and not the idea of the sequence itself. In other words, Choudhury’s copyright in his book did not extend to protect the sequence itself, meaning the 26 yoga poses and two breathing exercises.
JamieAnderson tried to argue that the routines are protectable choreography under the Ninth Circuit’s holding in Hanagami verse Epic Games. Hanagami involved a claim by a YouTube dancer based on the video game creator’s use of Shortbit from one of Hanagami’s dances in the video game Fortnite. In Hanagami, the Ninth Circuit adopted the US Copyright Office’s definition of choreography, which isn’t really a bright-line definition. According to the US Copyright Office, a choreographic work contains one or more of the following elements. Rhythmic movements of one or more dancer’s bodies in a defined sequence and a defined spatial environment, such as a stage, a series of dance movements or patterns organized into an integrated, coherent, and expressive compositional whole, a story, theme, or abstract composition conveyed through movement, a presentation before an audience, a performance by skilled individuals, or musical or textual accompaniment.
ScottWow, Jamie, you weren’t kidding when you said that the Copyright Office office’s definition of choreography isn’t really a bright-line definition. The Copyright Office, while they gave us this generalized idea of what is choreography, they did give us some bright-line guidance here that was applicable to Anderson’s case. They did say that general exercise routines and athletic activities are not protectable choreography. I think the Anderson court could have stopped there. However, the court decided to create a new two-step analysis to navigate between Bikram and Haganami. So in determining whether Anderson’s routines are copyrightable or not, or whether anybody’s routines are copyrightable or not, at least in the central district and probably under the Ninth Circuit, plaintiff must first establish that the work is a copyrightable expression as opposed to unprotectible ideas, processes, or systems. And then, if the work is copyrightable, show that the dance rises to the level of protectable choreography under the Copyright Act. Now, with regard to Anderson’s routines, the Court found them to be an unprotectible process, system, and/or methodology. And although Anderson’s process was original and the result of substantial investment of time, the Court decided it could not be protected as copyright.
JamieRight. So although the Court dismissed Anderson’s copyright claim, it did not, however, dismiss Anderson’s claim that Roup was in breach.
ScottYeah, that’s right. The court found evidence that Roup sent out emails announcing her competing fitness program, The clients of Anderson’s, making use of Anderson’s client list and client information, and that this created a disputed issue of fact as to whether the client information constitutes confidential information and whether Roup used it, thereby breaching her employment agreement.
JamieSo, Scott, what can we learn from this? What’s the takeaway? Was there any chance that Anderson’s routines could have been characterized as protectable choreography?
ScottWell, the court does point out that Anderson refers to her routine as a method in many places. The court cites too many references by Anderson to the Tracy Anderson Method and to it being a fitness methodology. But even if there hadn’t been so many references to the routines as a method. As I think, as I mentioned above, the US Copyright Office said that exercises are excluded from being copyrightable. So I don’t think that Anderson could have prevailed on her copyright claim. However, Anderson’s breach of contract claim does seem strong. And that seems to be one lesson here: the value of a very strong confidentiality agreement.
JamieThanks, Scott. That’s really interesting. And I’m glad you brought this case to our attention.
ScottYeah, we’ll keep track as this goes through the court if there’s any further movement on her breach contract claim. But I’m assuming the parties are probably going to settle, so we’ll see.
JamieThanks for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please make sure to leave us a comment.
Did you know? In the U.S., terrestrial radio stations don’t pay royalties to non-songwriter performers or record labels! Unlike other countries, only songwriters and publishers get paid. Weintraub attorneys Scott Hervey and Jamie Lincenberg share how musicians are pushing Congress to change this with the American Music Fairness Act in this installment of “The Briefing.”
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:
ScottAs you are aware, or you may not be aware, that in the United States, terrestrial radio broadcasters do not have to pay royalties to the singer or the record label for the performance of music. That’s correct. While radio stations pay the songwriter and publisher or performance royalty, the non-songwriter performers, whether that be the singer, guitar player, or drummer, as well as the record label, get nothing. This is different than most other countries around the world and is also different from how royalties are paid for songs that are streamed over the Internet, such as on Spotify or Pandora. Some musicians are pushing Congress to change that. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by fellow Weintraub lawyer and frequent “Briefing” contributor Jamie Lincenberg. We are going to talk about what some are calling a loophole that benefits US radio station conglomerates and the arguments to change that in today’s installment of “The Briefing.”
Jamie, welcome back to “The Briefing.”
JamieThanks, Scott. Glad to be here again.
ScottSo, Jamie, before you heard my opening, did you know that US radio stations don’t make any payments to the non-songwriter, artist or record labels when they play music over terrestrial airwaves?
JamieI don’t think I did.
ScottI don’t think most people knew that, to be quite honest with you. So, the fact that non-songwriters and record labels get nothing when a US radio station plays a song has its genesis in the difference in rights a copyright holder in a composition has from the rights a copyright holder in a sound recording has. So, first, let’s clarify a couple of things. So one, a piece of recorded music has two copyrights. The first is in the underlying musical composition, and the second is in the sound recording itself. The rights in a musical composition are usually owned by a songwriter or the music publisher, and the sound recording rights are usually owned by either the artist or a record label if there is one. Now, the copyright act vests copyright holders with certain exclusive rights. However, the rights a copyright holder has in a sound recording is more limited than the rights a copyright holder has in a musical composition. The copyright owner of a sound recording has the right to make and distribute copies of the sound recording and make derivative works from it, such as remixes, videos using the sound recording, etc. The public performance rights for sound recordings, however, is limited only to digital audio transmissions.
This means that AM and FM radio stations do not have to get permission or pay royalties to publicly perform a sound recording. However, since the Copyright Act grants a copyright holder in a composition the right to control the public performance of that composition, a US radio station does have to pay the songwriter or publisher a royalty for the public performance of that composition when they play music over the airwaves.
Jamie
This is only the case for US radio stations, correct? Outside of the US, non-songwriter artists and labels are paid a royalty by radio stations. In the US, a digital audio transmission, such as streaming a song on Spotify or the like, triggers royalties for artists and labels.
ScottYeah, that’s right. So according to a post in Variety that’s written by senators Alex Padilla and Marshall Blackburn, foreign performance royalty collection entities, those who already pay their own local artists for radio airplay, currently withhold royalties to American music creators simply because the United States does not reciprocate by paying their performers. So those senators estimate that American artists are missing out on approximately $200 million each year.
JamieWow, that’s quite a big number.
ScottIt is.
JamieSo what legislation is being proposed on this now?
ScottSo, there was a bill that was proposed last year called the American Music Fairness Act, which would establish that the copyright holders of a sound recording have the exclusive right to publicly perform the sound recording through an audio transmission. So, this would essentially require terrestrial radio to secure a performance license for the sound recording. Now, this will most likely be a compulsory license, and the copyright royalty board will determine the royalty rates, just like they do for the compulsory license issued for compositions. Now, the bill proposes certain exemptions for smaller broadcast stations who would have really only have to pay, well, it’s proposed that they would only have to pay a flat fee of either $2 per day and not more than $500 annually to play unlimited music. And for certain public radio stations and college radio stations, and nonprofit radio stations, it would only be $100 per year.
JamieThat’s interesting, Scott. It seems like it’s interesting to me that, this hasn’t been adopted yet until this time.
ScottYeah, I agree.
JamieWhen’s the last time you listened to the radio?
ScottUm, that’s very funny. Last time I listened to the radio is actually this morning as I was driving in my car coming back from a conference, so, but I got to say, I do not normally listen to the radio. I do normally listen to satellite radio, so, which pays, by the way, a performance royalty to the performers and the songwriters as well. So, you know, it’s interesting with the kind of crash or decline, maybe is a kinder word in the audience for traditional terrestrial radio, this is an additional cost for terrestrial radio that they would have to bear. We may very well see maybe some, if this does in fact, pass, we may see some consolidation or some closings of some smaller radio stations.
JamieOr more ads.
ScottMore, yeah, more ads! More, but I mean, if you got less people listening to terrestrial radio, the value of those ads, the amount that the ad sale guys can sell those ads for, that goes down, too. It’s just a really, that kind of a really bad death spiral. But in any event, that’s the scoop. I thought everybody would be interested knowing that in the United States, non-songwriter performers have don’t get paid a royalty. Historically, since the beginning of radio in the United States, have not received a royalty.
JamieYeah. Thanks for sharing that with us, Scott.
ScottThank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and
Cher recently won a major lawsuit over her music royalties from her divorce from Sonny Bono. Join Weintraub attorneys Scott Hervey and Jamie Lincenberg on today’s episode of “The Briefing” as they break down this case and its implications for copyright law.
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:
ScottCher recently won quite a big victory in a lawsuit over whether a copyright termination in various Sonny Bono compositions could terminate her share of music royalties that were accorded to her in the divorce settlement between her and Sonny. I’m Scott Hervey from Weintraub Tobin, and I’m joined by frequent Briefing contributor Jamie Lincenberg. We are going to talk about this case on today’s episode of “The Briefing.”
Jamie, welcome back to “The Briefing.”
JamieThanks for having me, Scott.
ScottLet’s jump into the facts of this case. In 2016, Mary Bono, that’s Sonny Bono’s widow, issued a notice of copyright termination under Section 203 of the Copyright Act to various music publishers that held rights in Sonny Bono’s compositions. Under Section 203, authors or their successors may terminate copyright assignments and licenses that were made on or after January 1, 1978. Upon termination, all rights in the work that were covered by the grant revert to the author. However, any derivative works that were prepared under the authority of the grant before its termination may continue to be utilized under the terms of the grant after that grant is terminated. Apparently, though, in September 2021, Mary Bono notified Cher that pursuant to the copyright termination and their rights, Cher was no longer entitled to the 50% of royalties she was accorded under the divorce settlement agreement. Cher ended up suing for declaratory relief to enforce her rights under the marital settlement agreement she had with Sonny Bono.
JamieThere is some important language in the marital settlement agreement. Let’s highlight that first. The agreement, which is governed by California law, gave Cher a 50% interest in any record royalties, which is all contingent receipts payable after July 14th, 1978, from Atlantic Recording Corporation under the agreement dated August 30th, 1966, from Liberty, U. A. Inc, under the agreements dated from and after November 1, 1964, and from MCA Records Inc, under agreements dated January 1, 1972, and February 11th, 1971. It also gave a share of 50% interest in any composition royalties, which is the contingent receipts payable after July 14, 1978, from musical compositions and interests therein written and composed in whole or in part by Sonny or others prior to February 1, 1974, and/or were acquired by Sonny and certain other entities prior to the couple’s separation.
ScottThat’s right, Jamie. The marital settlement agreement also states that any of Sonny’s successors and interests or assigned are also subject to share rights in both the record royalties and the composition royalties. So, in Cher’s lawsuit for declaratory relief, she sought from the court a declaration that Mary Bono’s copyright termination notice did not terminate and could not have terminated the marital settlement agreement and its assignment to share 50% of the composition royalties. Mary Bono took the position that Section 304(c) of the Copyright Act, the copyright termination section, preempts state contract law as to the rights to the renewal terms of the copyrights at issue. And as a result, the marital settlement agreement is now preempted and lacks effect.
JamieThe key question before the court was whether the composition royalties and certain approval rights under the marital settlement agreement constitute copyright grants that were affected by the notice of termination.
ScottRight. Now, the court did find that the marital settlement agreement is linked to the musical compositions and Sonny’s corresponding property interests. However, the granting of a royalty and the approval rights that are within the marital settlement agreement did not refer to and were not a grant of a transfer or license of the underlying copyrights, and shares rights under the marital settlement agreement arise solely under state law. Section 304 of the Copyright Act expressly provides that it in no way affects rights arising under any other federal, state, or foreign law. As such, the notice of termination issued by Mary Bono cannot affect share’s contractual rights to receive financial compensation as was set forth in the marital settlement agreement.
JamieRight. This does align with the holdings of other courts finding that a right to receive royalties is distinct from a grant of copyright.
ScottYeah, that’s right. I think this case is a good reminder for those of us that may be involved in a dispute that involves copyright assets. So clearly, in any marital settlement agreement, when the community property involves copyright interest, it’s probably not the best course of action to transfer any interest in the copyright. But this also goes beyond the marital settlement situation and can include any type of settlement situation.
JamieYeah, that’s interesting and definitely a good reminder.
ScottYeah. Well, Jamie, thanks for joining us today.
JamieThank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and do share this episode with your friends and colleagues. If you have any questions about any of the topics that we covered today, please leave us a comment.
Trademarks perform a number of important functions. Scott Hervey discusses the spectrum of trademark strength in this archive episode of “The Briefing”
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:
Scott:
Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog
Scott:
Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001.
Josh:
In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share.
Scott:
Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse.
Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo. A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell. As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark.
Scott:
And while it’s true that a trademark can be anything, not everything can and should be a trademark.
Josh:
That’s right Scott. There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable.
Scott:
Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individuals consent Also, marks which consist or comprise of a portrait of a deceased president of the United States are not registrable during the life of the president’s widow except by written consent of the widow In addition, certain organizations, by acts of Congress, have been granted exclusive rights to use certain marks. For example, the United States Olympic Committee has been granted exclusive right to use a number of “Olympic” symbols, marks and terms
Josh:
Marks which describe the intended purpose, function or use of the goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are really not the best choice for a trademark. This type of mark is considered merely descriptive and is not registerable on the principal register absent establishing secondary meaning.
Scott:
Its iron Josh how often companies gravitate toward a descriptive mark. The penchant for a descriptive mark was explained to me by a client – they work because the consumer knows exactly what they are getting. That’s useful in the short term but does nothing for brand building.
Josh:
Here is a few examples of descriptive marks – NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks. The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive.
Scott:
The major reasons for not protecting marks that are merely descriptive is to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use language which naturally describes the goods or services, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own product
Josh:
Marks that are merely self-laudatory and descriptive of the alleged merit of a product are regarded as being descriptive. Laudation does not per se prevent a slogan or mark from being registerable. Like other descriptive marks, a mark that is self-laudatory may be registerable upon establishing secondary meaning. However, courts have refused registration even on the Supplemental Register of marks that are so highly laudatory and descriptive of the alleged product that they are incapable of functioning as a trademark
Scott:
One step up from descriptive marks, but miles away as far as protectability goes, are suggestive marks. Suggestive marks are registerable on the Principal Register without proof of secondary meaning. Suggestive marks are those which, while not really descriptive of the product’s qualities, nevertheless, suggest some benefit or property of the product. An example involves ROACH MOTEL® for insect traps, in which this mark was enforced against an infringer using “Roach Inn.” The Court explained,
We do not find the mark ROACH MOTEL® to be a merely descriptive mark. While roaches may live in some motels against the will of the owners, motels are surely not built for roaches to live in. Hence, the mark is fanciful on conception. Indeed, its very incongruity is what catches one’s attention
Josh:
The determination of whether a mark is merely descriptive and therefore not registerable absent evidence of secondary meaning or merely suggestive has always been a challenging task. The Trademark Trial and Appeal Board (the quasi-judicial body responsible for adjudicating issues which arise concerning the registration of a trademark ) has opined that there is “a thin line of demarcation involved in making a determination as to whether a term or slogan is suggestive or merely descriptive and, apropos, thereto, when a term stops suggesting and begins to describe the goods in connection with which it is used, it is, at times, a difficult question to resolve.”
Scott:
The Board suggested that in determining whether a mark has crossed the threshold from suggestiveness to descriptiveness, the following factors should be analyzed: (1) is the mark used in a trademark sense and not in a descriptive manner to describe the goods; (2) is the mark an expression that would be or is commonly used to describe the goods; (3) does the mark possess some degree of ingenuity in its phraseology; (4) does the mark say something at least a little different from what might be expected from a product, or say expected things in an unexpected way; and (5) does the mark possess more than a single meaning, namely, a double-entendre, which imparts to it a degree of ingenuity and successfully masks or somewhat obscures the intended commercial message
Josh:
The strongest marks are those which are coined words, having no intrinsic meaning or arbitrary words which, although they might exist as words in the English language, have no conceivable rational connection to the product, e.g. KODAK® (coined) for film and CAMEL® (arbitrary) for cigarettes. Because such coined or arbitrary marks are inherently distinctive, no proof of secondary meaning is necessary before a court will protect the trademark rights of the senior user of such marks.
Weintraub attorneys Scott Hervey and Jamie Lincenberg unpack the Supreme Court’s follow-up decision on damages in Neely v. Warner Chapel Music. Explore how this ruling could reshape future infringement cases.
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Scott:In a previous episode of “The Briefing,” we pondered just how far back a plaintiff in a copyright infringement case can go in recovering damages when we discussed the case of Warner Chapel Music versus Neely. Well, the Supreme Court answered that question on May 9th, 2024. The answer is as far back as they’re able. I’m Scott Hervey of Weintraub Tobin, and I’m joined today by my colleague and frequent briefing guest, Jamie Lincenberg. We will be talking about the Neely case and how the Supreme Court’s answer to what was a contested question in copyright law might impact future infringement cases on today’s episode of “The Briefing.”
Jamie, welcome back, and thank you for joining us today.
JamieThanks, Scott. I’m happy to be here.
ScottJamie, can you give us some background on this case?
JamieOf course. In the case of Neely versus Warner Chapel Music, which began in 2018, music producer Sherman Neely filed a lawsuit against Warner Chapel Music and Artist Publishing Group. It was a run-of-the-mill copyright infringement case in which Neely claimed that Flo Rida’s 2008 song, “In the Air,” featured an unlicensed sample of a 1984 track that Neely owned.
ScottAnd this case became not so run-of-the-mill when Neely’s lawsuit headed to the Supreme Court to answer the then unresolved question of whether damages in a copyright case are limited to just the last three years before the case was filed, or can damages go way back beyond the three years? The reason why this case was right for Supreme Court review was due to a circuit split on the issue.
JamieRight. The Second Circuit, the jurisdiction covering Neely’s case, applied a three-year damages cap that Justice Ruth Bader-Ginsberg explained in the Supreme Court’s past holding in Petrella versus MGM, as a successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be had for infringement in earlier years, and profits made in those years remain the defendants to keep. The Second Circuit applied the three-year limitation on damages, even in where a plaintiff alleges that his discovery of the infringement was only recently discovered. Despite the Supreme Court’s apparent endorsement of the three-year limitation on damages rule, the Ninth Circuit and the 11th Circuit later broke rank and held that if a plaintiff can prove they only recently discovered the fact that their copyright was infringed, not only can they bring a copyright lawsuit outside of the three-year limitation period, but the plaintiff can also see seek damages going back all the way to the very first infringement.
ScottThat’s right. So, the question on which the Supreme Court granted certiorari in Neely was whether under the discovery, a cruel rule applied by the circuit courts, a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. And the Court, the Supreme Court, ended up answering that question in the affirmative.
JamieRight. The Court points out that if any time limit on damages exists, it must come from the acts remedial sections, but these sections do not apply a time limit on monetary recovery. The Court points out that these sections just state without any qualification that an infringer is liable either for statutory damages or for the owner’s actual damages and the infringer’s profits. So, a copyright owner possessing a timely claim for infringement is entitled to damages no matter when the infringement occurred. The Court also took a shot at the Second Circuit’s logic for applying the three-year damages cap. The Court pointed out that the Second Circuit recognizes the discovery rule and allows a plaintiff to bring a lawsuit for acts of infringement that occurred more than three years earlier, but does not allow the plaintiff to recover damages for the infringement that is the very basis of the lawsuit.
ScottThat’s right, but the still unanswered question from this case is the validity of the discovery rule itself. In the majority opinion, the Supreme Court acknowledges that it has never decided whether a copyright claim accrues when a plaintiff discovers or should have discovered an infringement rather than when the infringement happened. In a dissenting opinion, Justice Gorsuch said that the discovery rule has no role in copyright infringement cases, option of finding a fraud or concealment by the defendant. Justice Gorsuch acknowledged that this court, deciding the Neely case, was not under any independent obligation to take up the question of the validity of the discovery rule since that was not the issue before the court. However, rather than spending time on the Neely case, Gorsuch said he would have dismissed it as improvidently granted and waited another case squarely presenting the question whether the Copyright Act authorizes the discovery rule since, in his words, it is better to answer a question that does matter than one that almost certainly does not.
JamieSo, Scott, based on this opinion, how do you think that this is going to impact the filing of infringement cases moving forward?
ScottI mean, think about it. There is a damage cap under the accrual where you know that infringement occurred and you’re aware of the infringement at the time that the infringement occurs. And it’s not an instance where you only recently discover an infringement that has been occurring for longer than the three-year statutory period. In those cases, you’re naturally limited to three years of damages because most likely you’re aware of the act of infringement when it happened. But taking into account the discovery rule where an act of infringement has been happening for a very long time, as was the case in the Neely case, where he was not aware of Flo Rida’s song. We previously talked about how anybody could not be aware of that particular song. But nonetheless, I think it’s going to I think it’s going to encourage more of these types of cases. I think it’s going to encourage more cases where it’s alleged that the plaintiff only recently discovered the act of infringement, and then it will be the burden of the defendant to disprove that, to prove that the plaintiff was actually aware or any reasonable person under similar circumstances would have been aware of the act of infringement, and then try to end the case based on late filing of the complaint and a running of the statutory period.
But I definitely think this will encourage more people to bring these types of cases because the pot of gold is so much bigger.
JamieRight. Yeah, that’s what I was going to say.
ScottBut I also think with more of these cases brought, I mean, justice such as dissenting opinion just teed it up for a potential defendant who is going to attack the discovery rule. I mean, that would be if I was defending a defendant who was the recipient of a copyright infringement claim, and the claim was based on the discovery rule, essentially, I would attack the validity of the discovery rule and appeal that all the way up because it seems if Justice Gorsuch, and the majority as well, they were basically welcoming an opportunity to rule on the validity of the discovery rule.
JamieRight. I feel like right now, the discovery rule, based on this opinion, is maybe in a little bit of a gray area. Do we follow it? Do we not? So, yeah, this leads us to maybe be a case that’s going to examine this discovery rule, maybe all the way up to the Supreme Court?
ScottYeah. Well, we’ll definitely keep an eye on that and basically see if the discovery rule falls out of favor in certain circuits. It’s based on this opinion because it somewhat puts its validity into question. Or definitely, like you said, puts it in a gray area for sure. We’ll have to track some of these cases and we’ll report back for sure.
JamieThank you for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered, please leave us a comment.
The FTC just issued a final rule banning post-employment non-compete clauses, and it’s shaking things up, especially in the non-scripted TV world. How will this impact talent deals? Join Weintraub attorneys Scott Hervey and Shauna Correia as they discuss what this means for networks and on-air talent on the latest installment of “The Briefing.”
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Scott
The FTC recently issued a final rule banning post-employment non-compete clauses in agreements between employers and their workers. While this is causing consternation with the standard corporate GC set, in-house counsel of television networks that are heavy into non-scripted television are quietly expressing concern. Why? Well, post-term exclusivity provisions are huge in the non-scripted television industry, and they’re used to prevent non-scripted talent from jumping ship. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by my partner, Shauna Correia. We’re going to talk about this FTC ban and how it will impact non-scripted talent deals on today’s installment of “The Briefing” by Weintraub Tobin. Shauna, welcome to “The Briefing.”
ShaunaThanks for having me, Scott.
ScottOkay, so Shauna, why don’t you tell us what this ruling actually says?
ShaunaThis 540-page rule that the FTC came up with prohibits an employer from entering into or attempting to enter into any post-employment non-competent clause with a worker in the United States. The definition of worker is very broad. It applies to all-natural persons, so that’s direct and indirect relationships with employees and independent contractors. There are a couple of important but narrow exceptions. First, it does not apply to senior executives, which is defined as individuals making over $151,164 in annual compensation and are in a policy-making position for the company like a CEO or president, and the non-compete agreement was in place before the rule took effect. Second, it doesn’t apply in connection with a legitimate sale of a business. Third, it doesn’t apply to a small number of industries, which include nonprofits or specific industries like air carriers or ground transportation or banks that are not governed by the FTC but are regulated by some other governmental agency. But the vast majority of industries are covered by this.
ScottWhat about existing non-competes?
ShaunaIt’s important to note that this rule will not take effect for 120 days from today, May 7th. We have until September 4th before it becomes law. But assuming the rule takes effect, unless this worker is a senior executive, the rule as written will apply to retroactively ban enforcement of existing non-competes. Also, to note, if a cause of action for a breach of a valid non-compete has accrued prior to the effective date of the rule, that can still be enforced.
ScottCompanies that have non-competed agreements in place, they’re also required to send out a notice of non-enforcement, correct?
ShaunaRight. Employers are going to be required to send out a clear and conspicuous notice to all workers that have a non-competent provision in their contract, and the notice will have to tell the workers that the non-compete provisions will not and cannot be legally enforced.
ScottA company can’t satisfy this by, say, putting a notice on its website, can’t it?
ShaunaNo. The rule will require individualized communication, but it’s pretty open. It can be by email, mail, or even text message. I think the key is that you want to have proof that the notice went out. The FTC rule does provide model language that can be used.
ScottOkay. Well, now let’s talk about how this rule defines a non-competent clause and how that could impact what we normally see in participant agreements in non-scripted television.
ShaunaSure. The rule defines a non-competent clause as a term or condition of employment that prohibits a worker from, penalizes a worker for, or functions to prevent a worker from seeking or accepting work in the United States with a different person, where such work would begin after the conclusion of the employment, or two operating a business in the United States after the conclusion of the employment that includes this non-competent term or condition.
ScottThe rule makes it clear that it would ban the enforceability of other contract clauses that have the same effect as a non-competent clause. The FTC provided an illustration, an NDA between an employer and a worker, written so broadly that it effectively precludes the worker from working in the same field after the conclusion of the worker’s employment with that employer.
ShaunaCorrect. Unlike under California state law, it doesn’t specifically ban non-solicitation provisions, but a super broad NDA like the example you gave, or for example, a non-solicitation clause, could be invalidated because the rule bars any provision or policy that functions to prevent someone from competing once their job for the company is done.
ScottOkay, so let’s see how this could impact participant deals in non-scripted television. So generally, in contracts with principal talent or participants in a non-scripted program, there is an exclusivity clause that generally requires the talent to be exclusive to the producer or the network. When these provisions are challenged in negotiation, networks like to argue that on-air talent becomes well known because of the network’s investment and reputation and that the network must be able to use this exclusivity provision to protect this investment. The scope of exclusivity can be very broad. For example, as an on-camera performer in all media, that’s a scope of the exclusivity. Or it could be narrower as an on-camera performer in unscripted television. Depending on the leverage the talent has, the talent could negotiate some carve-out, such as allowing the talent to participate in other types of non-scripted television, such as competition shows or something that is different than the format of the program that they’re being hired, or they can negotiate to allow for internet programming, such as a YouTube series. Now, to get this would require some leverage, and that’s not something that most participants that aren’t already celebrities have. Most of the average participants in non-scriptive television would start out with a very broad exclusivity provision.
ShaunaThe language in the exclusivity provision ends up essentially prohibiting this type of competition post-term.
ScottThat’s right. The term of the exclusivity generally spans the period of time the producer has options on the talent services. So, generally, a talent agreement gives the producer the option to hire the talent back for subsequent seasons. Usually, it’s for five, six, or seven seasons. The option period language you usually see is something like 12 months from the initial airing of the previous season of the program.
ShaunaSo effectively, how long could that be?
ScottSo, let’s look at the time period after the camera stops rolling. From the end of principal photography until the time that the show actually airs, could be as long as 6 to 12 months. Then you have the run of that particular season, so that could be an additional 6 to 12 weeks, depending upon the number of episodes ordered to production. Then you have the option window, the 12-month span from the first airing of the last episode of that season. So effectively, that period could be as long as 20 months to two years plus. The commission specifically declined to provide an exclusion to the rule for on-air talent. So, it’s clear that the commission intended this rule to be applicable to persons who participate in programming on air. Do you believe such an exclusivity provision, the type that we just talked about, would be interpreted as a non-competent clause?
ShaunaYeah, I think so because, as you described it, it would be seen as prohibiting that on-air talent from effectively doing any other work during this time, which could be, like you said, 20 months to 2 years.
ScottWell, let’s get it clear: prohibit them from doing any other work as an on-camera talent. Most of the time, these participants do something else. They have some other job or skill or expertise that may have something to do with being on camera.
ShaunaYeah, I think, as written, this would be seen as prohibiting on-air talent from effectively doing other work for another employer during this time, at least as on-air talent.
ScottCurrently, there are some legal challenges to the rule. Let’s focus largely on the lack of statutory authority of the FTC to enact this type of rule. However, if the rule is upheld, I can see networks, maybe in an attempt to get around this prohibition, revising how on-camera talent is paid. Instead of paying the talent over the course of production, which is how they’re normally paid, I can see a network stretching the payment all the way out to the very last date when the vast majority of the talent’s work is performed and making the last payment due on the date that the producer’s option would have to be exercised. I could see networks arguing that this is an intern prohibition and not a post-term and thus it doesn’t fall under the FTC’s rule or isn’t prohibited by the FTC rule.
ShaunaYeah. As you mentioned, there are these legal challenges right now. The US Chamber of Commerce and two private entities have already filed suit to enjoin this law from being enforced, both on grounds that it’s retroactive, arbitrary, exceeds the bounds of the FTC’s authority delegated from Congress, constitutional grounds, you name it. We’ll have to see what happens there. But to your point, I agree with you, networks are going to get creative to achieve their goals, and there’s room for that. In fact, the FTC itself seems to suggest that what is traditionally known in the old labor as garden leave could work here, which would mean, though, talent being paid the same pay and benefits to stay on the payroll for the whole exclusivity period while really not doing any work. As you say, that may just end up meaning the network stretching the same dollars of pay over longer period of time. Or there’s other options, maybe really beefing up the nondisclosure provisions and things like that to prevent leaks of information about the show before it’s air and things like that.
ScottI think the network’s focus really is going to be locking in the talent to that particular network and not allowing them to do another show for another network. I can see a network stretching out the pay because they’re paid by the episode. They’re not paid by the week or by the month. Stretching out that pay and making the last payment due on the date that the producer’s option to pick up their services for next season would otherwise expire.
ShaunaYeah, and to be clear, nothing about the rule prohibits exclusivity provisions during employment. So, I would think that that would be viable.
ScottYeah, interesting, interesting. Okay, well, let’s keep track of this and see what happens. And if we start seeing networks revising the way in which non-scripted talent are paid, if this rule, in fact, comes into effect as law, then we’ll have another subject to talk about. But thanks for joining us today, Shauna.
ShaunaAll right. Thanks a lot.
ScottThanks for listening to this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Did Scarlett Johansson’s voice inspire ‘Sky’? Scott Hervey and Jamie Lincenberg of Weintraub Tobin unpack the controversy between Scarlett Johansson and OpenAI’s Chat GPT. Explore potential legal claims and the intricacies of voice rights in AI on this episode of The Briefing.
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:ScottScarlett Johansson claims that Chat GPT’s voice of Sky is her voice, or is intended to be her voice. Despite Sam Altman, the CEO of OpenAI, attempting to engage Johansson to voice Chat GPT, Altman claims that Sky isn’t her, that it’s a voice actress OpenAI hired well before his initial discussions with Scarlett’s agent. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by a fellow Weintraub lawyer and frequent “Briefing” contributor, Jamie Lincenberg. We are going to talk about the Scarlett Johansson OpenAI controversy, the claims she could bring, and how those claims may fair on today’s episode of “The Briefing” by Weintraub Tobin.
Jamie, welcome back to “The Briefing.” I think this one’s going to be a good one.
JamieThanks, Scott. It’s good to be back. I’m excited to dive in.
ScottThis has been in the news for quite a while now, and the facts are mostly out there. In a nutshell, Sam Altman approached Scarlett Johansson in September 2023 about voicing Chat GPT. According to Scarlett Johansson, Altman said that he felt that by voicing the system, she could bridge the gap between tech companies and creatives and help consumers feel comfortable with the seismic shift concerning humans and AI. Apparently, Altman felt that her voice would be comforting to people. Scarlett Johansson ultimately declined. Two days before the Chat GPT 4.0 demo was released, Altman contacted Johansson’s agent asking that Scarlett reconsider. Now, also sometime before the Chat GPT demo was released, Sam Altman tweeted, “Her”, which seems to point to the 2013 movie where Scarlett Johansson voiced a Siri-like AI assistant. Now, apparently, before the two could connect, the Chat GPT demo was released, and Scarlett began getting calls and emails from friends and family who thought that the Chat GPT voice, Sky, was her. Altman claims that the voice of Sky is that of a voice actor who was hired before he contacted Scarlett Johansson’s agent.
JamieThanks, Scott. I think that sums up the facts. That’s far, fairly well. Let’s now talk about the type of claims that Johansson could bring. I think the first logical step is a right of publicity claim.
ScottYeah, I agree with you, Jamie.
JamieCalifornia’s right of publicity statute is Civil Code Section 3344 and prohibits the use of another’s name, voice, photograph, or likeness on or in products, merchandise, or goods, or for purposes of advertising or selling, such products, merchandise, goods, or goods without such person’s prior consent. California also has a common law right of publicity that’s a bit broader than the statute. If Johansson did bring a case, it would follow some of the soundalike recording cases that the Ninth Circuit has previously adjudicated.
ScottYeah, that’s right. The first was Midler versus Ford, and the second was Tom Waits versus Frito-Lay. Both of those cases involved the use of a soundalike singer singing a song in the style of that particular artist in TV commercial. Both Midler and Waits sued for violation of their rights of publicity under the Civil Code and also under California’s Common Law. The trial court in Midler initially granted Ford its motion for summary judgment. On appeal, the Ninth Circuit, addressing Midler’s Common Law claim, held that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated that which is not theirs and have committed a tort in California. The Waits Court, which relied on Midler, found similarly.
JamieThere are a few issues that I can already see with this type of claim if Johansson were to bring it. The Midler and Waits cases held that when a voice is a sufficient indicia of a celebrity’s identity, the right of publicity protects against its imitation for commercial purposes without the celebrity’s consent. The first hurdle Johansson would have to overcome is whether her voice is sufficient in indicia of her identity. Although she was the voice of the Siri-like personal assistant in the movie Her, it’s still an open question whether her voice is so recognizable that it’s linked to her and her celebrity.
ScottYeah, I tend to agree with you, Jamie. I’ve listened to Scarlett Johansson’s voice, and while she has a bit of a husky quality in her voice, it’s nowhere near Clint Eastwood’s. I think of celebrities who have tremendously recognizable voices: Arnold Schwarzenegger, Samuel L. Jackson, Morgan Freeman, James Earle Jones, Christopher Walken, and probably the most recognizable voice of all, Fran Drescher. I just don’t I think Scarlett Johannison’s voice is like theirs. There were two important jury findings in the Waits case. One was that the voice in the commercial was a deliberate imitation of Waits’ voice, and the second was that Waits had a distinctive voice, which is widely known. I don’t know whether Scarlett Johansson has that.
JamieTo your first point that you just made, there are some facts out there that tend to point toward the voice of Sky being a deliberate imitation of Johansson, and discovery would likely shed a lot more light on that.
ScottOh, I agree. In this case, if she were to sue, it would be all about discovery. But OpenAI, in a press release or in an article that I had read and prepping for this, said that its Chief Technology Officer was in charge of the voice casting, and Sam Altman wasn’t really that involved. It was an interview with NPR. She told NPR, Miriam Maradi, that she didn’t even know what Scarlett Johansson sounded like until people were comparing Skye to Scarlett Johansson?
JamieWell, whether Skye was a deliberate imitation would probably end up being a question for the jury, and there would be a lot of expert testimony comparing the two voices. It would also be a question of fact for the jury whether Johansson had a distinctive voice that was widely known. The jury instructions in the Waits case provide that a voice is distinctive if it is distinguishable from the voices of other singers, if it has particular qualities or characteristics that identify it with a particular singer.
ScottYeah, I think that would be the big hurdle for Scarlett, would be if her voice meets the elements necessary to be distinctive. All right, so let’s talk about the other claim she could bring, which is a false endorsement claim under Section 43A of the Lanham Act. That prohibits the use of false designations of origin, false descriptions, and false representations in the advertising and the sale of goods and services. Courts have widely recognized a false endorsement claims brought by celebrities for the unauthorized imitation of their distinctive attributes, such as a celebrity’s likeness, where those attributes amount to essentially an unregistered commercial trademark.
JamieRight. And these false endorsement cases make sense. A celebrity has a commercial investment in their name, appearance, and sometimes voice. And those are tantamount to the interests of a trademark holder. In a distinctive mark.
ScottYeah, I agree. And those cases are really well-established. And so, here’s the potential hurdle that Johansson would face. Both the Second Circuit and the Ninth Circuit, which cover the major media markets in New York and California, they require evidence of either recognizability or public prominence to support a false endorsement claim. So similar to the issue she would face in a write a publicity claim, Scarlett Johansson would have to show recognizability and public prominence in her voice. And this may prove to be challenging for her. For sure, it’s a question of fact for the jury.
JamieWell, regardless of whether Johansson sues, and if anyone were to have the backbone to go up against OpenAI, it would be her. I think there’s probably a bit more drama to come.
ScottI definitely agree with you, Jamie. There’s more drama to come here. Thanks for joining us today.
JamieThank you.
ScottThank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please leave us a comment.
The recent decision on Hayden vs. 2K Games is a big win for video game publishers. Dive into the fascinating world of copyright disputes over tattoos in video games. Scott Hervey and Jamie Lincenberg from Weintraub Tobin discuss how this case compares to past decisions and what it means for athletes, celebrities, and the video game industry on the latest episode of “The Briefing”
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Scott Two years ago, I took the position that the District Court for the Southern District of Illinois and the Court of Appeals in the case of Alexander versus Take2 Interactive Software got it completely wrong when they found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take2 Interactive infringed the tattoo artist’s copyright in the tattoos. I said that both the court’s rejection of Take-Two’s defenses, defenses that won the day in the US District Court for the Southern District of New York in Solid Oak Sketches versus 2K Games was absolutely incorrect. Now, we have the US District Court for the Northern District of Ohio deciding another copyright dispute over an inked athlete depicted in a take two interactive video game, and this court got it right. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor, Jamie Lincenberg, and we’re going to talk about this case, Hayden versus 2K Games, Inc, on this next installment of “The Briefing.” Jamie, welcome back to the briefing.
JamieThanks, Scott. It’s good to be here again.
ScottSo, let’s dive right into this case because these tattoo lawsuits, I find them interesting. Well, this one decision that I previously noted, the Alexander case, really got under my skin. But let’s talk about this one first. The result in Hayden versus 2K Games was a jury verdict. The jury found that 2K Games enjoyed an implied license to incorporate a depiction of certain tattoos on LeBron James and that the depiction, as depicted on a video game character, did not violate the copyright of Hayden, who was the tattoo artist that created these tattoos. This was the same result that the court reached in Solid Oak Sketches versus Take-Two Interactive.
JamieYes, that case also involved LeBron James’ tattoos and the NBA 2K video game.
ScottThat’s right. Solid Oak was a licensing firm that represented or represents, probably still, the go-to tattoo artist for NBA players. And Solid Oak Sketches sued Take-Two Interactive Software, the game publisher behind the popular NBA 2K basketball video game. And Solid Oak Sketches alleged that the game maker’s depiction of LeBron James and his tattoos, infringe the tattoo artist copyright in six tattoos. In ruling on the video game publisher’s motion for summary judgment, the court found that the publisher had an implied license to depict the tattoos in the video game. Now, an implied license exists where one party created work at the other party’s request and handed it over, intending that the other party copy and distribute or otherwise use it in the manner intended. The court in this case found that the players had an implied license to use the tattoos as elements of their likeness, and the defendants right to use the tattoos in depicting players in the video game derives from this implied license from the tattoo artist to the player. A crucial element of the court’s finding that the tattoo artist knew their subject was likely to appear in public, on television, in commercials, and in other forms of media. That was a crucial element of the court’s finding in Solid Oak Sketches.
JamieWhile we’ve only seen a copy of the verdict form, which noted a win for 2K Games based on an implied license, I do think it’s safe to assume that the reasoning was the same or similar to that in Solid Oaks.
ScottYeah, I would agree with you, Jamie. We have two video game cases, both finding an implied license, and then we have Alexander versus Take-Two, where an implied license isn’t found. Actually, where the jury instructions on an implied license were not given to the jury. There’s a factual wrinkle in that case on which the court hangs its holding, but I don’t know that that’s enough of a distinction to actually justify the results of the case. Let me talk about this case a little bit. Tattoo artist Katherine Alexander sued Take-Two and 2K Games in the US District Court for the Southern District of Illinois for depicting World wrestling entertainment wrestler Randy Orton in the video game WWE 2K. Alexander testified that she had never given permission to any of her clients to use copies of her tattoo works in video games and argued that the WWE and Take-Two conflated Orton’s rights to his own likeness and the right to appear in media with an implied license to use her copyrights in an unlimited and other commercial way, such as video games. In the ruling on the motion for summary judgment, the Alexander Court found that it wasn’t clear whether Alexander or Orton actually ever discussed whether and to what extent Orton had permission to copy and distribute the tattoos and whether any implied license would include sub-licensing rights and the Court denied summary judgment on the implied license affirmative defense.
JamieSo after the Court’s ruling on the motions for judgment, the matter then went to trial. Apparently, shortly before trial, the court refused to allow the jury to hear instructions on the implied license affirmative defense, even though neither party objected to the jury getting this instruction. There were also shortcomings in the court’s fair use instructions. So, it seems that the trial court didn’t get instructions on the affirmative defenses it should have, which led to a jury verdict for the tattoo artist in an amount just under $4,000.
ScottYeah, I think the results in the Alexander case are wrong for a number of reasons. First, I think that every tattoo artist who inks a musician, or a sports figure, or an artist understands that this public figure will be portrayed and depicted in many, many, many mediums: television, photography, animation, etc. Could you imagine if some tattoo artist, just before starting the work on LeBron James or any athlete or musician or artist, said, Oh, by the way, you can’t allow anyone to film or to pick this tattoo that I’m putting on your body. That’s going to last forever. I mean, it’s ridiculous, and most likely, I’m going to assume that the person would just get out of the chair and walk out of the tattoo parlor. For the court in Alexander not to allow the finder of fact to weigh the evidence related to whether this conversation ever happened was a huge mistake. But even crazier is the practical effect of this ruling. Essentially, according to, well, at least in Chicago, once someone gets a tattoo, that person loses full control over that body part. Now, the tattoo artist has essentially a blocking right on the depiction of that body art. If a celebrity has an arm tattoo, and that celebrity has to be shirtless in a movie, unless the producers cover up the tattoo with makeup, which they very well may need to do after the Alexander ruling, or at least if the actor is from Chicago, or there might be jurisdiction in Chicago, the producer would need to get a release from the tattoo artist. What if the tattoo artist didn’t want to grant the release, and for some reason, the producer couldn’t cover up the tattoo? Does that mean that the actor may lose that job, possibly. This sounds a bit extreme, but it’s a logical extension from the Alexander decision, and that’s why I think the case is wrong.
JamieScott, what if the arm tattoo is fully visible in the celebrity’s social media pictures? Technically, that would be an infringing public display of the work. I understand the fundamentals of a paparazzi suing a celebrity when that celebrity posts a picture taken by a paparazzi without permission. But I have a very hard time with a tattoo artist suing a celebrity when the celebrity, say, takes a selfie that captures the tattoo on the celebrity’s arm.
ScottYeah, I agree. This Alexander decision, which, despite these two courts getting it correct, means that the person who has tattoos no longer has complete control and autonomy over their persona. They don’t control their right of publicity anymore, or at least in Chicago, in Illinois, they don’t. Because a person’s outward appearance is part of that person’s right of publicity, how is it reasonably understood that when a person gets a tattoo, that tattoo becomes in actually merge with that person’s likeness and that any rights a person has in exploiting their likeness would extend to that tattoo. How is it possible to then fathom that a tattoo artist would have a blocking right on this individual’s right to exploit their personal rights?
JamieI’m curious: What’s your recommendation to your studio and production company clients based on this? I will say that I have seen in a lot of the brand endorsement deals that I work on that language has been added that your tattoo cannot be in the promotional content that you’re posting. Sometimes, as the talent reps, we push back on that. But I understand where the brands are coming from if this is really a concern that we might be facing.
ScottYeah, think about it. At least according to the Alexander Court, all the tattoo artist needs to say in order to get past the motion or summary judgment and drag a copyright infringement case all the way out is they just need to say, “Well, no, we never talked about an applied license.” Or, “No, I told him that he couldn’t show his arm in animation, cartoons, or video games.” That’s all that a tattoo artist would have to say. If an actor is going to be seen on camera, I guess at this point in time, given the Alexander case, the actor should get a release from the tattoo artist. Now, I mean, sometimes this could be impossible, in which case production might need to consider covering up the tattoo with makeup or clothing.
JamieWhat about video games?
ScottRight. I mean, that’s another thing because it’s a depiction of the artist. The point of a video game, you want video games to be fully immersive. You want them to be reflective of reality. I mean, could you imagine having LeBron James in a video game without any tattoos? That’s not the real LeBron James.
JamieYeah. How do you deal with content that’s already done and is out in the marketplace already?
ScottNow, be the first to file a deck relief action in the Southern District of New York or in the Northern District of Ohio, and at all costs, avoid Illinois.
JamieScott, I was also thinking and for these celebrities who are constantly getting new tattoos, and maybe they have relationships with certain tattoo artists, where they live, or they fly out to LA or New York or wherever to get their tattoos; maybe it makes sense that they enter into work for hire agreements with their tattoo artist beforehand. Those agreements set out that the tattoos, the results, and the proceeds of the tattoo artist’s services are owned by the celebrity. They have the right to use the tattoos moving forward in any way that they see fit.
ScottLook, I agree with you. I think that would be a smart idea. I think if you really want to be a customer-friendly tattoo parlor, maybe you have the forms already there that say, “We have no claim in the tattoo that we’re putting on your body, and you may fully use it.” I don’t know how many times a person goes to a tattoo artist fully prepared with a release or a work for higher acknowledgment or an assignment agreement. But I will say this seems to be not the norm. The vibe seems to be that most tattoo artists acknowledge that the tattoo on one’s body is an extension of their persona. And most tattoo artists really aren’t… They’re not making these claims. They’re not claiming copyright in any of the tattoos. But there’s always haters out there, and there’s always someone out there who’s going to try to game the system. It might behoove celebrities or athletes if they have a favorite tattoo artist to have that discussion with the tattoo artist, have them sign a piece of paper, and then you can go on your way and get it inked up.
JamieIt’s not an issue for the average Joe. I don’t think. I think it’s an issue for those celebrities who are making money off of their likeness and those tattoo artists are claiming a piece of their likenesses.
ScottYeah. Well, I don’t have a tattoo. I know lots of people do, and I think it’s becoming more acceptable and definitely more common nowadays. It’s definitely an issue that will bubble up from time to time, again and again. Thanks for joining me today, Jamie.
JamieThanks, Scott. Thank you for joining us on this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about what we covered today, please leave us a comment.
Paramount triumphs in the Top Gun Maverick copyright case. Join Scott Hervey and Jamie Lincenberg of Weintraub Tobin on ‘The Briefing’ as they dissect the court’s ruling.
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:ScottParamount was finally able to shoot down Ehud Yonay’s copyright infringement lawsuit, which alleged that Top Gun Maverick, the sequel to the popular 1986 motion picture Top Gun, infringed the copyright in his magazine article. The district Court granted Paramount’s motion for summary judgment and dismissed Yonay’s complaint. I’m Scott Hervey from Weintraub Tobin, and I’m here today with Jamie Lincenberg from Weintraub Tobin and we’re going to talk about the Court’s ruling on this installment of “The Briefing.”
Jamie, welcome back to “The Briefing.”
JamieThanks for having me today, Scott.
ScottGreat. Well, first, let’s get into the facts of the case a little bit. So, in May 1983, California Magazine published the article Top Guns by Ehud Yonay. This article was an inside look at the real Navy fighter’s weapons school, Top Gun, based out of Miramar, California. The article begins with a vivid description of two Top Gun F-14 Tomcat aviators, Yogi and Possum, on a hop, a simulated dogfight training against two Top Gun instructors. Then, the article continues with a deep dive into what makes Yogi and Possum and the other fighter pilots at Top Gun tick. A look at the Top Gun training regimen, what life on the base is like, and the history of Top Gun. When the article was published, it was optioned. In the credits for Top Gun, Yonay is credited in the original movie as the writer of the magazine article.
JamieOn January 23rd, 2018, the Yonays properly availed themselves of their right to recover the copyright to the story optioned by Paramount by sending Paramount a statutory notice of termination under the Copyright Act, and then filed it with the Copyright Office. As we have discussed previously on this program, Section 203 of the Copyright Act permits authors or their successors to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978, when certain conditions have been met. Upon the effective date of termination, all rights in the work that were covered by the terminated grant revert to the author. However, any derivative work prepared under the authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination. But this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant. The Yonays sued Paramount for copyright infringement, claiming that the Top Gun Maverick infringes that Yonays rite in their original article.
ScottIn Paramount’s motion for summary judgment, the court took into account expert testimony of both parties. The court found that the plaintiff’s expert testimony was unhelpful and inadmissible because that expert failed to filter out the elements of the article and the sequel that are not protectable by copyright law.
JamieIn order to state a claim for infringement, a plaintiff must show substantial similarity between the work’s protected elements. Determining whether works are substantially similar involves a two-part analysis consisting of, one, the extrinsic test and two, the intrinsic test. The extrinsic test assesses the objective similarities of the two works, focusing only on those protectable elements of the plaintiff’s expression. Whereas, on the other hand, the intrinsic test examines an ordinary person’s subjective impressions. Although a plaintiff must prove both to establish substantial similarity, a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury. As such, on a motion to dismiss, the court will only consider the extrinsic test, and the extrinsic test can end a plaintiff’s infringement case only when the similarities between the works are either wholly due to unprotected elements or where the amount of similar protected expression is de minimis as a matter of law.
ScottIn applying the extrinsic test and by filtering out the elements that are not protected under copyright law, that is, facts, ideas, sans affair, which are situations and incidents that flow necessarily or naturally from a basic plot line or plot premise. And stock elements, the two works are not substantially similar. The plaintiffs contended that the article and the sequel were substantially similar because they have similar plots, sequences of events, pacing, themes, moods, dialogs, characters, and settings. Paramount contended that the similarities identified by the Yonays were either not similarities at all or were similarities based on unprotected elements of the work. The court agreed with Paramount.
JamieThe court found that any similarities between the article and the sequel were due either to the inclusion of unprotectable facts, general plot ideas, or sans affair. The fact that both the article and the sequel contain Top Gun instructors and graduate fighter pilots is not actionable since those are factual elements and are not protected by copyright. The fact that the article and the sequel are similar because they depict or describe fighter pilots landing on an aircraft carrier being shot down while flying and cruising at a bar is a showing of familiar stock scenes or sans affair.
ScottThe court also found significant portions of the article and the movie dissimilar. The themes and the moods of the two works are dissimilar, as is the dialog and the selection and arrangement of elements, including the unprotectible elements. The court found those to all be dissimilar.
JamieThe selection and arrangement analysis that Scott just noted goes back to Feist, the telephone book case, where a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.
ScottThat’s right. The court here found that the selection and arrangement of the unprotectable elements were not necessarily original enough or not substantially similar enough. Not just that they were not original enough but that they were not substantially similar. Additionally, the court noted that the dialog in the article is unprotectable in any event since the dialog itself is a historical fact. In summing up the court’s objective comparison of the works, the article and Top Gun Maverick, their respective plots, their sequence of events, their pacing, their themes, their moods, their dialog, and their characters, the court found that the two works are not substantially similar. And while the article and Top Gun Maverick have some similarities, those similarities are all based on unprotected elements.
JamieSo, wrap this up for us, Scott. What’s our takeaway from this lawsuit?
ScottSo, first takeaway is the importance of expert opinion. And we really just touched on this for a moment, but it did loom large in the court’s opinion itself. Once a copyright case gets past the pleading stage, in the Ninth Circuit, at least, It really becomes a war of the experts on the battleground of substantial similarity, like how I kept to the military theme there. The second is that historical source material can be tricky. While the positive side for the producer is that your work won’t necessarily infringe on the source material, the negative side is that another work based on the same historical source material might not infringe on your work either.
JamieThanks, Scott. There are definitely more of these lawsuits on the horizon, so I’m sure you will keep a pulse on those, and we’ll see where these go.
ScottWe will. We’ll definitely track these termination lawsuits because they’ll definitely be interesting. Thanks, Jamie, for joining me today.
JamieThank you.
ScottThank you for listening to this episode of The Briefing. We hope you enjoyed it. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Unraveling the threads of Fair Use and how recent legal rulings threaten documentary filmmakers. Join Scott Hervey and Jamie Lincenberg as they dissect the Tenth Circuit’s Impact on filmmaking in this episode of ‘The Briefing.’
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:ScottLeading up to the Supreme Court’s decision in Andy Warhol Foundation versus Goldsmith, there was significant concern by documentary filmmakers about how the Court’s decision in favor of Goldsmith could upend how those filmmakers make use of fair use as part of the filmmaking process. Now, in light of the Tenth Circuit recent application of the Warhol case in Timothy Seppi versus Netflix, filmmakers are again concerned and are calling for a rehearing or an inbound rehearing. If left uncheck, the Motion Picture Association said that this decision threatens to severely impair the ability of filmmakers and other creators to create documentaries, docudramas, biographies, and other works based on the real world. I am Scott Hervey from Weintraub Tobin, and today I’m joined by my colleague, Jamie Lincenberg. We are going to talk about the Tenth Circuit’s controversial decision in Seppi versus Netflix. On this installment of “The Briefing.” Jamie, welcome back to “The Briefing.”
JamieThanks for having me, Scott.
ScottFor a while now, I have expressed some concern that the Warhol case does, in fact, remove a fair use basis that filmmakers have relied on for quite some time. The use of a third-party clip or third-party content as a biographical anchor. That is, quoting copyrighted works of popular culture to illustrate an argument or point, and the use of copyrighted material in a historical sequence. Those have been used for a very long time by filmmakers, and they’ve been regarded as a best practice in fair use.
JamieRight. A great example of what a biographical anchor looks like comes from the of Hofheinz first A&E Television Networks, where the court found that a TV biography that used a short clip of movie star Peter Graves from one of his earliest films was justified, not because it commented on the original film, but because it enabled the viewer to understand the actor’s modest beginnings in the film business.
ScottThat’s right. The Tenth Circus decision in Seppi runs the risk of forever reversing decades of jurisprudence. Seppi, some facts of the case. Seppi was a former Zoom employee who livestream the funeral of the husband of Joe Exotic. Joe Exotic, Tiger King, right? Everybody knows Joe Exotic and Tiger King. Netflix used a one-minute portion of the funeral video in its series, Tiger King. Netflix tried to dismiss Seppi’s infringement claim based on fair use, specifically based on the biographical anchor claim or jurisprudence. Post-war hall in determining fair use, courts ask, as part of the first factor, whether and to what extent the use at issue has a purpose or character different from the original and whether that supports a justification for copying. Now, the appeals court granted Seppi’s opposition to Netflix’s motion, finding that Netflix’s use was not transformative under the first fair use factor since it did not criticize or comment on the work itself, meaning the video that Seppi filmed, but instead was used to comment on and criticize Joe Exotic.
JamieThe concerns from the parties that filed briefs requesting review of this decision all express concern that the Tenth Circuit, whether it was intentional or not, has created a bright line comment on requirement and is not examining other justifiable uses beyond criticism or commentary.
ScottThat’s right. Left as is, there is a concern that this opinion will negatively impact filmmakers who use third-party content for historical value and newsworthiness, even though they do not target the underlying third-party content through criticism or commentary. A number of the amicus brief cite past cases supporting the use of third-party content by a biographer or a filmmaker as a biographical or historical anchor. These cases include Time, Inc. Versus Bernard Geis Associates, which involved the use of sketches of President Kennedy’s assassination that were taken from the famous Zapruder films, Bill Graham Archives versus Dorian Kindersley, which involved the use of Grateful Dead concert posters in a book about the history of the band. Sofa Entertainment versus Dodger Productions, which involved the use of a short clip from the Ed Sullivan show in a musical about the band, The Four Seasons, and Elvis Presley enterprises versus Passport Video, which used television clips featuring Elvis. While the funeral scene in Tiger King isn’t as significant as President Kennedy’s assassination, and while Joe Exotic doesn’t have the same cultural significance as The Grateful Dead or Elvis, the funeral does bear on an issue of public interest. And the funeral clip did serve as a historical marker and biographical anchor in the Netflix program Tiger King.
JamieThis uncertainty isn’t good for documentarians or the consuming public that enjoys these compelling documentaries.
ScottNo, Jamie, it certainly isn’t. I do think that the Tenth Circuit needs to reexamine its opinion, either as a rehearing or a rehearing in bonk, because left unexamined, I think this may be the beginning of the end of the ability to use the biographical anchor Exemption under fair use, essentially.
JamieYeah. For so many reasons, that would be a huge concern to the documentary space and to many of our clients who work in that area, and we advise them on fair use, and this is definitely going to dictate how we advise our clients.
ScottYeah. As a practical matter, as a practical matter, it really can end up prohibiting a documentarian from telling a story. If they are unable to express a fact, if they’re unable to explain how a fact or an event occurred in a compelling manner without paying an exorbitant license fee, they may be priced out of their ability to make their documentary, or they may not be able to tell their story in a way that would capture the viewer’s attention. Either way, I don’t think that this ruling really encourages the evolution of creative arts. It doesn’t encourage the reuse of works in a different and compelling and entertaining manner. I think it stymies creativity and puts unnecessary roadblocks in front of storytellers who sometimes need to be able to use existing material in a different way to tell their stories.
JamieYes, we will definitely follow along and see where this ends up.
ScottWe have an update in the case of Seppi versus Netflix. The day after we recorded the main portion of this episode, the portion you just listened to, the Tenth Circuit vacated its March 27, 2024 judgment and granted Netflix’s request for a rehearing. As part of the rehearing, the court asked for a supplemental briefing and oral argument on the questions of whether the principles of fair use jurisprudence that relate to documentary filmmaking, including the use of content as historical markers, are appropriate in light of, in this case, Netflix’s commercial use of the film clip, and what impact does the Warhol decision in general have on the fair use jurisprudence applicable to documentary filmmaking? So maybe the use of third-party content in documentaries as a historical marker or a biographical anchor is not that. We’ll wait and see what the Tenth Circuit does in light of this rehearing.
JamieThank you for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered, please leave us a comment.
Update on Rachel Williams’ defamation lawsuit against Netflix’s “Inventing Anna.” Weintraub lawyers Scott Hervey and Jamie Lincenberg discuss the recent court ruling as a warning for docudrama producers on “The Briefing.” Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:ScottWe have an update on the defamation lawsuit brought by Rachel Williams, the Vanity Fair photo editor whose friendship with Anna Delvey, who passed herself off as German heiress Anna Sorkin, was featured in the Netflix series Inventing Anna. The news is not great for Netflix, and this should be a warning for producers of docudramas who take creative license with facts. I’m Scott Hervey from Weintraub Tobin, and today, I’m joined by fellow Weintraub lawyer Jamie Lincenberg. We are going to review this lawsuit, the recent court ruling not allowing Netflix to get out from under William’s defamation claim, and talk about how this should be a concern for producers of the genre du jour docudramas on today’s installment of “The Briefing” by Weintraub Tobin. Jamie, welcome back to “The Briefing.”
JamieThanks for having me today, Scott.
ScottSo, let’s jump right into this. For those who may not remember, Rachel Williams is a real person. At the time of her portrayal in the Netflix program Inventing Anna, she was a Vanity Fair photo editor and a friend to Anna Delvey, also known as Anna Sorkin. Williams did not come across well in inventing Anna.
JamieNo, she didn’t. She comes across as a privileged freeloader who sponges off of Sorkin and then abandons her when her real situation comes to life.
ScottTrue, true. She does come across that way. As a result, Williams sued for defamation. Now, in order to prevail, she would have to demonstrate that her portrayal in inventing Anna was an assertion of fact was actually false or created a false impression about her, that it was highly offensive to a reasonable person or was defamatory. Since Williams is a public figure, she published a story in Vanity Fair and published a book about her experience with Sorkin; she must also prove by clear and convincing evidence the statements were made with actual malice, meaning that the defendants knew that the statements were false or had serious doubts about the truth of the statement.
JamieThere are numerous instances of William’s portrayal in this series, she claims to be actionable. We recently reran the podcast episode where you first reported on this lawsuit, where you covered all of the instances in detail. So, there’s no need to do that here. Instead, let’s look at the two portrayals addressed by the court in denying Netflix’s motion to dismiss. Both of those have to do with the scene in Morocco where Williams leaves.
ScottThat’s right. The first portrayal comes after several scenes depicting the problems with the credit cards at the hotel and a very expensive private museum tour. Williams tells Anna, who is portrayed as being alone in her room, drinking and heavily depressed, that she is leaving. Sorkin is portrayed as begging Williams not to leave her, but Williams leaves anyways. Now, the next portrayal is the following statements that’s made by another character in Inventing Anna. This character says, “Please, Rachel abandoned Anna, kicked her when she was down, and left her alone in some foreign country. Rachel’s happy to call herself Anna’s friend when it means free ‘stuff’ trips to Morocco. But as soon as times got tough, some friend.” actually, the character didn’t say “tough” or “stuff,” she said some expletive that we won’t use here on the pod. So according to the complaint, Williams alleges that these statements are false, as Williams had a pre-existing business meeting in France. And Williams told Sorkin, prior to the pair heading to Morocco, that she would have to leave early. Also, according to the complaint, when Williams left Morocco, Sorkin was not sad, was not depressed, and was not alone. Williams alleges that those statements in those scenes are defamatory because Williams is falsely portrayed as a fair-weather friend who abandoned Sorkin when she was alone, depressed, and in trouble in Morocco and needed help and support. Williams claims that these are negative personal traits or attitudes that she does not hold.
JamieThe court does agree that Williams plausibly alleged that both of these statements are false statements of fact and are defamatory. Netflix tried to argue that the statements were substantially true because Williams actually left Morocco before Sorkin to go to France, and before knowing Sorkin was a fraud, Williams had also decided to give the relationship some space. But the court didn’t buy it or the argument that other scenes in the series portraying Williams as a true friend, somehow make these two portrayals not defamatory.
ScottThat’s right. The court states that in context, these other scenes, which make Williams look like a true friend, do not nullify the portrayal of Williams leaving Sorkin in a troubled state, nor do they rectify the potentially defamatory nature of these two portrayals. Based on the finding that Williams had properly pled a defamation claim based on these two statements, the court said it did not need to decide whether any of the remaining allegedly defamatory statements were actionable. Now, remember, this is just a motion to dismiss where the court examines whether the complaint includes sufficient factual allegations to state a possible claim for defamation and it left the examination of these other statements for later action in the case.
JamieRight. But the result is that this case goes forward into discovery, which is not only time-consuming but expensive and William’s leverage and the potential settlement value just went up significantly, I would say.
ScottYeah, I agree with that assessment.
ScottAs we’ve seen with other docu-drama defamation cases, one of the big risk points seems to be when a producer fictionalizes part of a storyline, especially when the truth and the fictionalized version are so divergent that it would cause viewers to feel differently.
ScottRight. I can only imagine why Shonda Rimes decided to play the scene the way she did. I have no insight into why she did it. It certainly makes Anna look more sympathetic, and it supports the character’s role as the show’s anti-hero. Look, Delvey was convicted on eight charges, including second-degree grand larceny in theft of services and first-degree attempted grand larceny. But in watching the show, and I watch the show, you really can’t help but root for her. So certainly, Shonda Rimes may have had very good reason to play the scene the way she did, creatively. But this little twist in the narrative now exposes Netflix to liability. That’s the lesson for producers of docudrama. Any deviation from the truth needs to be examined from a legal risk perspective. If you need a scene to play a certain way in order to deliver a specific emotion or narrative, make up the scene and have the characters interact with made-up characters who display the necessary or needed defamatory traits.
JamieThat’s a good point. If the case doesn’t settle, I’m sure that Netflix will eventually bring a motion for summary judgment down the line. So, Scott, let’s be sure to report back then.
ScottOh, we certainly will. Thank you for listening to this episode of The Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
The ongoing dispute between Brandy Melville and Redbubble over trademark and copyright infringement continues. Despite previous setbacks, Brandy Melville has filed a new lawsuit against Redbubble, alleging the sale of counterfeit products and copyright infringement. Scott Hervey and Jamie Lincenberg from Weintraub Tobin explore the history of the dispute, the claims made in the new complaint, and potential legal strategies moving forward.
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Scott We have covered Brandy Melville’s dispute with Redbubble, including the Ninth Circuit’s refusal to hold Redbubble liable for contributory copyright infringement because Redbubble didn’t know or have reason to know of specific incidents of infringement by its users and the Supreme Court’s refusal to take on Brandy Melville’s certiorari petition. Despite these significant setbacks, Brandy Melville seems determined to hold Redbubble accountable and has filed a new lawsuit against Redbubble. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Weintraub lawyer Jamie Lincenberg to talk about this update in the Brandy Melville Redbubble Dispute on this installment of “The Briefing” by Weintraub Tobin. Jamie, welcome back to the briefing.
Jamie Thanks, Scott. I’m glad to be here and happy we can jump into this Brandy Melville Redbubble case again.
Scott This is our third conversation about Brandy Melville Redbubble, and I have the feeling that it will not be our last. Before we dive into this new complaint, can you take us back through the history of the Brandy Melville Redbubble dispute?
Jamie Sure. The dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble’s website that infringed the company’s trademarks. Initially, the District Court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement of the marks. Then, on appeal, the Ninth Circuit Appellate Panel overturned much of the lower Court’s findings.
Scott And then, as we know, the Supreme Court denied certiorari to Brandy Melville’s petition, thus letting stand the Ninth Circuit’s holding. So here we are again. Brandy Melville filed a new complaint against Redbubble on March 29, 2024, which alleges that Redbubble is advertising, creating, and selling counterfeit Brandy Melville products, which incorporate exact replicas of the Registered Chilled Since trademark and Radio Silence trademark. They’ve added a couple of new causes of action that we’ll talk about, such as a claim that these products infringe and include exact because of the Registered Comic Eyes copyrighted design.
Jamie The trademark claims made in this new complaint are mostly the same as the trademark claims Brandy Melville made in its case against Redbubble the first time around. So, Unless Brandy Melville alleges a failure to redress specific instances of infringement or infringers, it may seem the same result as the first case.
Scott I agree. But it’s worth noting that This new complaint does seem to focus on this heightened standard imposed by the Ninth Circuit. Brandy Melville claims that Redbubble continued to sell counterfeit items bearing one or more of the exact same designs and brands even after Brandy Melville had previously reported them to Redbubble. Brandy Melville also contends that Redbubble has been, and continues to be aware of, and contributing to the infringement of its trademarks and that it creates and distributes the infringing and counterfeit goods to end consumers and facilitates financial transactions. Brandy Melville also includes as an alternative basis for its contributory trademark infringement that Redbubble has remained woefully blind to the infringement and/or counterfeiting of the Brandy Melville trademarks.
Jamie Yeah, and the complaint also alleges direct copyright infringement and contributory copyright infringement claims against Redbubble. These claims weren’t raised in the first lawsuit.
Scott That’s right. In copyright law, direct infringement occurs when a third party reproduces, distributes, displays, or performs a copyrighted work or prepares a derivative work based on a copyrighted work, all without authorization from the copyright owner. In support of its direct copyright infringement claim, Brandy Melville contends that Redbubble infringed Brandy Melville’s copyrighted works by displaying, distributing, and selling products bearing Brandy Melville’s copyright without their permission.
Jamie Contributory infringement happens if a party, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another. Material contribution can be found where the party is providing services to the infringer and has an ongoing relationship with the direct infringer. In support of its contributory copyright infringement claim, Brandy Melville argues Redbubble has been and continues to be aware of and contributing to the infringement of Brandy Melville’s copyright on its site. The infringing products are prominently displayed and promoted on Redbubble’s website. Redbubble’s website is configured so that a search for Brandy Melville or other Brandy Melville trade names will lead directly to those infringing goods. Redbubble creates and distributes the infringing goods to the end consumer and facilitates all financial transactions.
Scott Yeah, that’s right. That’s what Brandy Melville alleges to be the case. Now, contributory copyright infringement would require actively encouraging or inducing infringement through specific acts or by distributing a product, distributees use to infringe copyright. If the product is not capable of substantial or commercially significant non-infringing uses.
Jamie I am certain there is enough evidence that Redbubble’s platform has commercially significant non-infringing uses, so the hook for establishing contributory infringement would hinge on showing that Redbubble actively induces infringement through making its platform available to users.
Scott Yeah, and it sounds like it’s going to be tough to prove.
Jamie Redbubble will certainly argue that it’s immune from copyright infringement based on user material posted to its websites, based on Section 512 of the Copyright Act, which shields online service providers from monetary liability as long as service providers cooperate with copyright owners to remove that infringing content.
Scott Right. Yeah. You’re talking about the safe harbor and notice and takedown provisions of the DMCA. Brandy Melville would have to show that Redbubble in order for Brandy Melville to get around Redbubble’s safe harbor rights under the DMCA, Brandy Melville would have to show that Redbubble failed to remove specific infringing content after notice. It will be interesting to see how both Redbubble and Brandy Melville deal with this. I am certain that Redbubble will file a motion to dismiss, so we’re going to see that in the near future.
Jamie Scott, why do you think Brandy Melville didn’t raise the copyright claim in the It’s an earlier lawsuit?
Scott So this is me just speculating. I would imagine that they considered the copyright claim and thought that it would probably be precluded by the safe hardware provisions of the DMCA. And at that point, they maybe didn’t have enough evidence that Redbubble was failing to take down infringing content once they were receiving notice. It’s interesting the arguments that Redbubble is making in the trademark part of their argument and the copyright part of their argument relating to Redbubble’s failing to address specific instances of infringement. What Brandy Melville seems to be arguing, as opposed to arguing about specific actors, they are arguing about specific material that is being infringed. When you read their complaint, they talk about specific trademarks that are being infringed, probably by a wide variety of different users on the Redbubble platform. It’s a different take on this argument about redressing specific instances of infringement. They’re saying that Redbubble failed to address specific instances of infringement of specific pieces of Brandy Melville IP, not fail to address specific instances of infringement by certain infringers. So, we’ll see how that one plays out. I think Brandy Melville is going to have a tough time with its copyright claim, though, against Redbubble.
Jamie What do you think their strategy will be with the second lawsuit?
Scott There’s a business purpose to lawsuit sometimes, right? And I am certain that there is a strategy behind Brandy Melville filing this second complaint against Redbubble. And as long as they have a good faith basis upon which to file a claim, I suspect that Brandy Melville will continue to file multiple causes of that, multiple claims against Redbubble. And I believe that there’s a strategy to… Because as long as Redbubble is making money off of the transactions, as long as Redbubble is making more money off the transactions, then it costs Redbubble to defend these claims. Redbubble has no business incentive to deal with this, essentially, right? But the minute it costs Redbubble more to defend the claims, they’re going to have to come up with a business solution. Now, one of the other things that Brandy Melville could do is Brandy Melville could go after the printers. The way that Redbubble works is a user uploads an image, somebody buys an item with that image on it, and the order is sent to a local manufacturer shop that prints whatever it is, the shirt, the cup, the whatever. They’re independent from Redbubble. Well, Brandy Melville could go after those printers. There may or there may not, be an indemnity provision in the printer’s contract with Brandy Melville. But if Brandy… Sorry, with Redbubble. With Redbubble, right? If Brandy Melville starts suing enough of those printers, pretty soon it’s going to be hard for Redbubble to find printers that will do work for them. And although it’s not a great PR look, and they’d have to really think hard about the correct defendant in this, the direct defendant But Brandy Melville, could sue the users as well. They could send a message, Find the right defendant so that there’s not a PR backlash against Brandy Melville. But they could find the right plaintiff, write the defendant, sorry, and really go after them because both the defendant and the defendant would be liable for direct trademark infringement and direct copyright infringement. There’s no DMCA safe harbor that they would be able to take advantage of, and going after the printers as well. If you take off the printer infrastructure and you create this fear amongst the users of being sued by Brand new Melville, it might then create a business rationale for Redbubble to deal with this.
Jamie Yeah, that’s an interesting thought. I had not thought about the printer’s liability in all of this, but you’re right. That’s certainly an avenue that Brandy Melville could explore, although there’s much more to be considered with that in the same way that going after individual people that could cause some PR backlash if they’re going after local printers or things like that.
Scott Yeah, I agree. You have to navigate the PR waters. All of a sudden go from being a victim to being the bully. But if they’re not getting results with the campaign of causing financial harm to Redbubble by constantly suing them, then they need to cut the legs out from under the chair in some other way.
Jamie Right. Well, we’ll see where this second lawsuit gets them.
Scott We certainly will. Absolutely. Thank you for listening to this episode of “The Briefing.” We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Kim Kardashian faces a lawsuit from the Donald Judd Foundation for allegedly using and promoting knockoff furniture in her office tour video. While Kardashian’s counsel denies liability, the case underscores the importance of due diligence in endorsements. Scott Hervey and Jamie Lincenberg from Weintraub Tobin dissect the legal drama in this installment of “The Briefing.”
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Jamie
Last week, the art world was buzzing with yet another dupe scandal. Kim Kardashian has been sued by the Donald Judd Foundation for using and promoting knockoffs of the late designer’s furniture. We will dive into the details of this case on today’s episode of “The Briefing.” I’m Jamie Lincenberg of Weintraub Tobin, and I’m joining my colleague, Scott Hervey, on today’s episode of “The Briefing.”
Scott
Thank you for joining me today, Jamie. Can you provide us with a recap of how this case came about?
Jamie
Of course. Yeah. In a lawsuit filed just two weeks ago on March 27th in California’s district Court, the foundation of artist Donald Judd, who passed in 1994, known famously for his minimalist designs, is suing reality television star and entrepreneur Kim Kardashian and the Los Angeles-based interior design firm, Clements Design, the company who’s been faulted for fabricating and selling allegedly infringing tables and chairs to Kardashian. The lawsuit asserts that the firm sold Kardashian fakes of Judd’s tables and chairs for the offices of Skin by Kim, which is Kardashian’s skincare company, and accuses Kardashian of false endorsement and Clements Design of trademark and copyright infringement, false advertising, and unfair competition.
Scott
So this dispute stems originally from a video Kardashian posted on her personal YouTube account. Where she gave a tour to her followers of the Los Angeles office of her skincare brand, Skin by Kim. It’s just a typical house tour, office tour-type video that influencers do. In this video, while showing a large communal kitchen and dining room, Kardashian said, “If you guys are furniture people, I’ve really gotten into furniture lately. These Donald Judd tables are really amazing, and they totally blend in with the seats.” As of late January of this year, the video had been viewed more than 3.6 million times, and this video was then subsequently removed from YouTube a few days after the lawsuit was filed.
Jamie
That’s right. So shortly after the video was posted, the Judd Foundation contacted Kim Kardashian and Clements Design, demanding that those furnishings in question be destroyed or recycled and that Kardashian issue a public statement. Kardashian ultimately declined to replace the furniture, retract the video, or issue a corrective statement. Her reps instead offered to update the caption information in the video and to create a separate social media post in which she would promote the Judd Foundation. The foundation rejected that as that would, of course, still allow the knockoff furniture to remain in the video online.
Scott
When the foundation learned that Clements Design, which is a well-known celebrity design firm, and apparently, they also custom-make furniture pieces. When they learned that Clements Design had made the knockoff furniture, it asked for an agreement that the design company would never make and sell fake Donald Judd furniture again and that it would return and recycle Kardashian’s furniture, according to the complaint. But the design company rejected both requests and denied the foundation’s rights to the furniture design.
Jamie
So, the foundation has now filed suit and is seeking injunctive relief, a retraction of the video by Kim Kardashian. Issuance of a corrective statement, recycling of the inauthentic furniture, and any profits that Kardashian and Clements’ design may have received from the purported misrepresentation of the tables and chairs in question, as genuine Judd works.
Scott
The foundation argues that consumers are likely to believe that the Judd Foundation and the Donald Judd brand are connected or affiliated with or otherwise sponsored or endorsed by Kardashian, which is particularly is misleading because the Judd Foundation categorically prohibits customers from using purchased Judd, Donald Judd furniture from marketing and promotional purposes.
Jamie
In an online statement, Rainer Judd, Judd’s daughter who leads and is the President of the foundation, says that the furniture in question is irrefutably fake and that the existence of inauthentic furniture undermines the integrity of Judd’s original work, which includes specifications of design, craftsmanship, and materials. In its argument, the foundation cites a design proposal, Clements Design created for Skin by Kim, that includes dining tables in the style of Donald Judd and dining chairs in the style of Donald Judd. The accompanying illustrations of the products being offered, as the lawsuit claims, are actually photos of authentic Judd furniture. His, and I might pronounce this wrong, La Mansana Table 22 and Chair 84, which are iconic pieces amongst furniture designers and collectors since they were first produced in 1982.
Scott
The lawyer for the foundation says that this case is about protecting the intellectual property rights of the Judd Foundation, including its trademark and copyrights. The fake furniture has the ability to cause massive consumer confusion, with millions of Kardashian followers being misled to believe that the furniture in Kardashian’s office is real Donald Judd furniture. The Judd Foundation claims that this undermines the foundation’s ability to control the quality of the works created using Judd’s iconic designs and the goodwill that exists in those creations.
Jamie
Kardashian’s outside counsel has denied any liability in this matter, and Clements Design has issued a statement that the foundation’s claims have absolutely no merit. We’ll need to keep up with the case to see where it goes. But in summary, I do think that this brings up a really important and relevant topic today, where in today’s world, copies and dupes and knockoffs, however you want to define it, seem to really be everywhere. These influencers and celebrities with massive audiences need to take responsibility for their actions. It’s a lesson to truly do your due diligence before maybe touting around the name of an artist or brand. When you’re not 100% sure that it’s the real thing. I do see this happen all the time. Scott, do you have any insights or takeaways from this as well?
Scott
Yeah. Look, we all know that in an endorsement situation, the endorser, so usually a celebrity or some influencer, has a truthfulness requirement under FTC guidelines. We did a whole podcast episode on that. They have an obligation to make sure that what they’re saying is truthful. Not only the endorser does, but the brand does as well. However, my understanding of this particular post is that it was editorial. This is not commercial speech. This was not an endorsement of Clements Design. At least, this is my understanding. I didn’t see any indication that this was a sponsor, that the office tour that Kim Kardashian did was a sponsored post that was sponsored by Clements Design. I’m going to go with my understanding that this is all editorial.
Jamie
Yeah, I think you’re probably right on that, Scott. And that’s probably why the foundation only brought that one cause of action against Kardashian, the false endorsement claim.
Scott
Right. I mean, they did bring a bunch of other claims against Clement’s designs, and we’ll see how that shakes out, it’ll be interesting. But we’re really just talking about the endorser liability, Kim Kardashian’s potential liability here. Look, if this were an advertisement or commercial speech if this were not editorial, but if Clements Design had paid her, then she may have liability under the false endorsement claim under the Lanham Act and maybe under other claims as well. But because this was not a paid-for speech, because this seems to be just purely editorial, I don’t think it meets the requirements of the claim under Section 1125A because it’s not used in connection with goods or services. I think that the Judd Foundation will have a tough time. I agree with you that endorsers have a huge obligation to make sure that when they are giving commercial speeches, they are giving paid endorsements and that what they’re saying is truthful because they have their own individual liability and issues dealing with the FTC. But in editorial, unless she knew that this was not true or unless I mean, I don’t know. I could see her saying that Kim Kardashian, she was under the mistaken belief that in the style of Donald Judd meant Donald Judd, that the two are interchangeable, that the style of Donald Judd is Donald Judd.
I could see her taking that position and really having that understanding and not meaning to imply that these particular pieces of furniture were made by Donald Judd, which would be literally impossible because he’s dead. I guess we’ll see how this shakes out. As for your take on endorser liability and endorser responsibility, I agree, but I don’t think that Kim Kardashian truly faces any liability here.
Jamie
Right. Well, I do wonder why her camp didn’t just take the video down. What was the harm? I think about when the foundation first approached them and said, “This is not true Donald Judd furniture, and you are posing as if it was; please take this video down.” I don’t know. I don’t know why, but I guess the tour of the office was very important.
Scott
Well, I think the Judd Foundation was asking for a lot more than that in their initial letters. Weren’t they asking her to destroy the furniture? It’s like, No. I mean, even though it’s not designed by, I mean, made by Donald Judd, it’s still custom-made furniture. It’s still beautiful, and I’m sure it was very, very, very expensive. Unless the foundation is going to pony up the money for Kim Kardashian to buy new furniture, I mean, it would be fiscally irresponsible for her to destroy that furniture.
Jamie
I don’t know. I don’t think she needs anybody’s money at this point.
Scott
Well, I mean, and by the way, I don’t think any judge would require the destruction of that furniture. We’ll see. We’ll see. Hey, thanks for bringing this case to our attention; it was quite interesting. We’ll follow it as it goes on.
Jamie
We will.
Scott
Thank you for listening to this episode of “The Briefing.” We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Delve into the complexities of vicarious infringement and DMCA violations in AI training. Scott Hervey and James Kachmar from Weintraub Tobin dissect the recent district court ruling on OpenAI’s copyright infringement allegations on this installment of “The Briefing.” Watch this episode on the
Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Scott As we have previously reported, in 2023, several authors, including the comedian Sarah Silverman, filed putative class action lawsuits against OpenAI’s ChatGPT, alleging various copyright infringement claims. On February 12th, 2024, a district court in the Northern District of California issued its order and ruled on the OpenAI defendants’ motion to dismiss various claims in the two pending putative class action lawsuits. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my partner, James Kachmar, and we’re going to discuss the Court’s order on this installment of “The Briefing by Weintraub Tobin. James, welcome back to “The Briefing.”
James Thanks, Scott. It’s good to be back.
Scott So, James, could you give us some background on these cases?
James Sure, Scott. The author plaintiffs alleged that OpenAI infringed on their published works by using these works to help train its Large Language Model or LLM. Basically, OpenAI is alleged to have scanned the books into their system to help train the language models. The authors claim that because these books are protected by copyright law, using them in this training and the output generated by OpenAI, which the app is known ChatGPT, by summarizing their books, constituted an infringement of their copyright protections in their works. The plaintiffs in the two separate lawsuits alleged similar claims against OpenAI for both direct and vicarious copyright infringement under the Copyright Act, as well as violation of Section 1202(b) of the Digital Millennium Copyright Act or DMCA, which is removal of copyright management information. The OpenAI defendants moved to dismiss all the claims alleged by the author plaintiffs, with the exception of the first cause of action for direct copyright infringement. It’s a bit unclear from the Court’s order as to why the defendants did not move to dismiss that claim as well.
Scott Yeah, I found that to be interesting. The Court began by recognizing the general rules that govern motions to dismiss in federal actions. In essence, to survive such a motion, a plaintiff must plead enough facts to state a claim to relief that is plausible on its face. In essence, the plaintiff must allege sufficient factual content that allows the Court to draw the reasonable inference that the defendant is liable for the misconduct alleged.
James That’s correct, Scott. Let’s first look at the vicarious copyright infringement claim. The Court noted that the Copyright Act grants the copyright holder exclusive rights to reproduce the copyrighted work and any copies thereof, to prepare derivative works, and distribute copies of the copyrighted work to the public. However, the Court noted that the mere fact that a work is copyrighted does not mean that every element of the work may be protected.
Scott That’s right. To allege a valid copyright infringement claim, the plaintiff must show that one, he or she owns a valid copyright in the work alleged to be infringed, and two, that the defendant copied aspects of protectable aspects of his or her work.
James That’s right, Scott. The Court was really focused on this second prong, which really contains two separate components: copying and unlawful appropriation of a copyrighted work. Generally, a plaintiff can satisfy these elements by showing that the defendant had access to the plaintiff’s work and that the two works share similarities probative of copying, while the hallmark of unlawful appropriation is that the work shares substantial similarities.
Scott The Court noted that a claim of vicarious infringement requires a threshold showing of direct infringement.
James Right. The OpenAI defendants sought to dismiss the vicarious infringement claim on the grounds that, number one, the plaintiffs did not allege direct infringement occurred. Two, that there was allegation that the OpenAI defendants had the right and ability to supervise. Three, there was no allegation that the OpenAI defendants had a direct financial interest. For the Court’s order, it’s really that first element that it focused on in its order.
Scott Ok. The author plaintiffs argued that because the defendants directly copied the copyrighted books to train the language models, they did not need to show a substantial similarity between the two works.
James That’s right. They were relying on a 2012 Ninth Circuit case, Range Road Music, Inc., Versus East Coast Foods. That really involved a cover band playing songs in a venue and copying other musicians’ music that had been copyrighted. The Court here said that the plaintiffs were apparently misunderstanding the holding in Range Road because the Court there excused them, the plaintiffs in that case, from having to show substantial similarity because it was the actual songs that were being played in the venue. The Court noted here that the author plaintiffs had not alleged that ChatGPT outputs contained direct copies of the copyrighted books. Therefore, the plaintiffs really had to allege that there was a substantial similarity between the outputs of ChatGPT and the copyrighted materials. For example, if ChatGPT was asked, “Can you read me Chapter 2 of Sarah Silverman’s book?” That may have been evidence of direct infringement, but here, it was more summarizing what the themes or meaning of the books were. The Court decided to give them leave to file an amended complaint to try to correct this to just satisfy the substantial similarity element.
Scott That’d be interesting if they do, in fact, amend the complaint, and then the Court rehears, we’ll It probably will be another motion to dismiss. If it really is about summarizing themes and concepts, there’ll be an entire argument over whether or not those in and of themselves are protectable under the Copyright Act. Let’s talk about the DMCA claim because this is an interesting one. The DMCA is part of the US copyright law, and it was added in 1999. The DMCA stands for, as you said previously, the Digital Millennium Copyright Act. The DMCA was meant to address the relationship between the copyright and the internet in 1999. There are three main parts of the DMCA. It is when establishing protections for online service providers in certain situations if their users engage in copyright infringement, including by creating the notice and takedown system, which allows for copyright owners to send a notice to an online service provider about infringing material and instructing that service provider to take down that infringing material. Encouraging copyright owners to give greater access to their works in digital formats by providing them with legal protections against unauthorized access to their works, for example, hacking passwords or circumventing encryption technologies. And three, making it unlawful to provide false copyright management information. For example, the names of authors, the names of authors and copyright owners, and the titles of work, or to remove or alter that type of information in certain circumstances. Now, here, the plaintiffs alleged the violation of the provisions of the DMCA dealing with copyright management information and the removal thereof. So, James, how did the Court treat this claim?
James Well, Scott, the Court recognized that one of the essential elements in stating a claim under this portion of the DMCA is alleging what CMI was removed or altered. Then, you must show the requisite mental state, showing that you know or have reasonable grounds to know that removing the CMI would enable, induce fa, facilitate, or conceal infringement.
Scott Yeah, and the plaintiffs allege that OpenAI defendants had, by design, removed CMI from the plaintiff’s copyrighted books during this large language model training process. But this wasn’t enough for the Court, was it?
James No. The problem the Court found was that in the allegations in the, there was nothing specific to support the claim that the CMI had been intentionally removed. In fact, in the complaint, they cited some of the summaries produced by ChatGPT, which referred to the plaintiffs by name, basically identifying the author of the work. The Court said that even if the plaintiffs could show that the OpenAI defendants had knowingly removed CMI during the training process, they had not alleged how admitting CMI and the copies used in the training gave defendants reasonable grounds to know that ChatGPT’s output would induce, enable, facilitate, or conceal infringement, especially since it was identifying the authors by name.
Scott Yeah. The plaintiff presented another unique argument to the Court that OpenAI’s refusal to state which books it was using to train its models would deprive ChatGPT users from knowing if any output is infringing.
James Right, and it’s an interesting claim and position, but what the Court said is there’s no legal authority out there. Plaintiffs did not cite any in opposing the motion to dismiss to support that theory of violation.
Scott Are we expecting an amended complaint here, James?
James Yes. I would assume that the plaintiffs will not give up this easily and will try to amend, especially since their first cause of action is still technically viable.
Scott Yeah. If they do file an amended complaint, you can be almost certain that OpenAI will again move to dismiss the claims, and they probably will raise some preemption issues and other state law claims. We definitely have not seen the last of this specific case or AI training cases in general. James, thanks for bringing this one to our attention.
James Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please feel free to leave us a comment. Thanks, Scott.
ELVIS Act —Breaking down the Ensuring Likeness, Voice, and the Image Security Act of 2024. Scott Hervey and James Kachmar from Weintraub Tobin discuss its impact on AI audio technology and how it protects musicians in the next installment of “The Briefing.”
Watch this episode on the Weintraub YouTube channel here or listen to this podcast episode here.
Show Notes:Scott: Tennessee’s ELVIS Act isn’t what you think. The acronym stands for Ensuring Likeness, Voice, and the Image Security Act of 2024. It’s about protecting a musician’s voice from AI clones. The bill was signed into law on March 21st, 2024, amid a growing concern by the music industry and musicians over AI soundalikes and deep fakes. I’m Scott Hervey from Weintraub Tobin, and I’m joined again by my partner, James Kachmar, to talk about this bill and its impact on the nascent AI audio space in this episode of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.”
James: Thanks, Scott.
Scott: So, James, let’s dive right into this bill and see what it does and doesn’t do. So, this bill amends Tennessee’s existing right of publicity statutes. Tennessee’s existing law has previously provided that individuals, or in the case of a deceased individual, their estate, have a proprietary right in the use of that person’s name, photograph, or likeness in any medium, in any manner. Now, one could probably have argued that likeness included voice, but this bill now makes it clear that a person’s voice is among the personal property rights this statute now protects. James: Right, Scott. And in the bill, voice is defined as a sound in a medium that is readily identifiable and attributable to a particular individual, regardless of whether the sound contains the actual voice or a simulation of the voice of the individual. So essentially, a soundalike.
Scott: That’s right. So, let’s talk about what this bill protects against. Tennessee’s right of publicity statute now protects against the use of a person’s name, photograph, voice, or likeness for the purpose of advertising products, merchandise, goods or services, or for the purposes of fundraising, solicitation of donations, purchases of products, merchandise, goods, or services. The bill also adds new language which provides that a person will be civilly liable If they publish, perform, distribute, transmit, or otherwise make available to the public an individual’s voice or likeness with knowledge that the use of the voice or likeness was not authorized by the individual.
James: So, Scott, I assume that this bill is going to put a target on AI voice companies for possible lawsuits?
Scott: Yeah, it does. It absolutely does. The bill provides for civil liability for any person that distributes, transmits, or otherwise makes available an algorithm, software tool, or other technology, service, or device, the primary purpose or function of which is the production of an individual’s photograph, voice or likeness without authorization from the individual.
James: Scott, do I understand the bill correctly that not only the individual performer will have a cause of action, but it also gives record labels a right to sue for violations?
Scott: Yeah, absolutely. That’s right. The bill adds a paragraph to the section that discusses remedies for violations of the section. This new paragraph states that well where a person has entered into a contract for an individual’s exclusive personal services as a recording artist or an exclusive license to distribute sound recordings that capture an individual’s audio performances, an action to enforce the rights set forth, and this part may be brought by the person or individual. So, in other words, record labels.
James: I’m sure there’s a lot of them in Nashville, Tennessee. Scott, even though the statute does not appear to be limited to commercial advertising, previous federal court decisions have limited its scope to the advertising or promotional context. And have excluded performances, sports broadcasts, websites, and creative works from its reach. The new language from this bill seems to also target creative works, such as the fake Drake AI song, and other AI soundalike recordings.
James: I agree with you, and I think that this may be problematic.
Scott: In what way?
James: Well, if an artist or a recording label attempts to sue under the statute for an AI soundalike recording that is a creative work, such as the AI Johnny Cash cover of Barbie Girl, well, I think that may run afoul of Section 114B of the Copyright Act. Now, Section 114B permits soundalikes. A publication by the US Copyright Office specifically says that, quote, Under US copyright law, the exclusive rights and sound recordings do not extend to making independently recorded soundalike recordings. If that isn’t clear enough, the notes to Section 114 by the House Judiciary Committee provide as follows quote: Section B of Section 114 makes clear that statutory protection for sound recordings extends only to the particular sounds of which the recording consists and would not prevent a separate recording of another performance in which those sounds are imitated. Mere imitation of a recorded performance would not constitute a copyright infringement, even where one performer deliberately sets out to simulate another’s performance as exactly as possible, end quote.
Scott: So, when the inevitable lawsuits start to get filed as a result of this new law, do you think a potential defendant has a good preemption argument?
James: I do think they have a good preemption argument.
Scott: I guess we’ll just have to wait and see and assume we won’t have to wait too long for that.
James: I conclude James, that you’re correct in that. Thank you for listening to this episode of “The Briefing.” We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Safeguard your brand in the world of social media marketing, from IP infringement risks to FTC guidelines compliance. Scott Hervey and Jessica Marlow from Weintraub Tobin continue the discussion on legal risks brands face in part 2 of our social media marketing series on “The Briefing.”
Make sure to catch Navigating the Legal Risks for Brands in Social Media Marketing – Part 1.
Watch this episode on the You Tube channel here
Show Notes:Scott:Brands spend a lot of money on social media marketing, and that amount continues to grow. According to a recent survey, ad spend on social media is projected to reach 129 billion in 2024. However, social media marketing presents unique legal issues, not generally present in more traditional advertising. Last week, we discussed the legal risks for the celebrity endorser in social media marketing. This week, I’m joined again by my partner, Jessica Marlow, and we’re going to discuss the legal risks for brands in social media marketing. I’m Scott Hervey with Weintraub Tobin; this is “The Briefing.” Jessica, welcome back.
Jessica:
Pleasure to be back.
Scott:
Last week, we discussed the risks celebrities or influencers face in social media marketing. Today, we’re going to talk about the risks brands face in social media marketing. Let’s first talk about FTC compliance. Like influencers, brands have FTC compliance requirements. As you mentioned last week, Jessica, we did an entire episode on this.
Jessica:
Right, but let’s review a few points because it seems that this can be one of the biggest blind spots for brands.
Scott:
Sure, you’re right because this really is the biggest blind spot for brands. Previously, the FTC would hold an advertiser liable for misleading or unsubstantiated statements made through endorsements when there is a connection between the advertiser and the endorser. Now, the FTC has recently deleted the wording when there is a connection between the advertiser and the endorser. So generally, there’s always a connection between an advertiser and an endorser because it is, after all, a marketing or a promotional message. However, the FTC pointed out that a connection is not always needed for an advertiser to be liable for an endorsement. If, for example, an advertiser retweets a positive statement made by an unrelated third party or publishes in an advertisement a positive review by an unrelated third party, those statements or reviews become endorsements for which an advertiser may be liable. The despite the lack of any connection.
Jessica:
Right. Then, there are performance claims. Performance claims must be for the typical result. If the results being hyped are atypical, then the advertiser must clearly and conspicuously disclose the generally expected performance in the depicted circumstances. To be effective, the disclosure must alter the net impression of the advertisement so that it’s not misleading. Scott: If the brand is reposting content from a paid endorser or someone who received anything of value to make that initial post, the brand must make sure that the material connection between the brand and the endorser is conspicuously disclosed.
Jessica:
In boosting, upvoting, reposting, pinning, or liking consumer reviews of products, a brand should not take action that have the effect of distorting or otherwise misrepresenting what consumers think of their product. This includes suppressing or deleting negative reviews or comments.
Scott:
Like risks with FTC compliance, similar to influencers, brands also face IP infringement risks. In an influencer marketing campaign, a brand will hire an influencer to create content for the purpose of endorsing and promoting a product. Even though the contract between the brand and the influencer generally requires the influencer to create the original content and not use content that belongs to someone else, sometimes that doesn’t happen. Sometimes an influencer may use, whether intentionally or unintentionally, content that doesn’t belong to them. If that happens in an integration post, the brand faces a risk of being tied up in the copyright infringement case.
Jessica:
True. As an example, let’s look at the O’Neill versus Ratajkowski case. In that case, model Emily Ratajkowski posted a photo of her outside of a flower shop in downtown Manhattan. The photo showed Ratajkowski with her face covered by the bouquet of flowers. O’Neil sued Ratajkowski and her loan-out company for copyright infringement. But it’s important to note that the content used doesn’t necessarily have to be the entire photo. It could be many things, an image, footage, or even music. The infringement by the influencer may not be intentional. It’s amazing how many people who make their living by posting content think that if something’s on the internet, it’s available to be used.
Scott:
That’s so true. Even though the agreement between the brand and the influencer may have an indemnity provision, as we said last week, indemnity is only as good as the indemnitor’s pocketbook. While an influencer may contractually have an obligation to indemnify the brand, if the influencer doesn’t have the resources to mount a defense, the defense will end up falling on the brand.
Jessica:
Right. Occasionally, brands will use UGC or user-generated content on a brand’s social media account. What may be okay in an ordinary person’s post, such as a photograph with multiple cosmetic brands, could become trademark infringement if a brand were to post the same image on its own social media accounts.
Scott:
That’s right. That could present a big problem for a brand. It’s not so much of the risk that comes from the brand’s interaction with the person that originally created the post or its interaction with the UGC. It’s more that the brand’s social media manager not really understanding the the complexity of the risks involved in using that post as an endorsement.
Jessica:
Sometimes it’s also social media representatives who also believe that just because something is on the internet means it’s available to be used, or they think that just because an image is in a meme generator, that meme that includes someone else’s image may be freely used by the brand. Failing to understand that just because content is on the internet doesn’t mean it’s available for use can be legally problematic for a brand. Similarly, failing to review the license agreement or terms of use for that meme generator site or photo library site could also be legally problematic. I can’t tell you how many times I’ve looked into a library or a meme site’s terms of use, and I found that they make no representations or warranties whatsoever about having any licenses and don’t provide any indemnity.
Scott:
Another area where I see brands have issues with is using a stock library where they fail to understand the limitations on the usability of image designated as editorial only. Generally, when an image is designated as editorial only, this means that some type of necessary clearance element, an element that would make the image safe for commercial use, is missing if a brand uses an image that is marked as editorial only, that could have fairly significant legal issues.
Jessica:
True. If that stock photo contains an image of a person and that person’s rights have not been cleared, then the brand could be facing a right of publicity lawsuit, and if that person is famous, a false endorsement claim.
Scott:
So, as you can see, there are a fair number of risks that need to be navigated when it comes to brands and social media marketing. Now, these risks can be navigated. We do it all the time, and brands do it all the time. But, it does require thoughtfulness. I think one key takeaway here, Jessica, tell me if you agree, is start with a general understanding that just because it’s on the internet doesn’t mean that it’s available for use. And treat clearance as if you were producing a television show. We take television clearance very seriously, but somehow, for whatever reason, that doesn’t seem to translate all the time to digital marketing. I think if brands and their staff approach digital marketing with that degree of caution, there might not be so many issues.
Jessica:
I agree completely. It really comes down to doing your due diligence, because if you don’t, the potential liability could be massive.
Scott:
I understand that digital marketing moves fast, but liability is expensive, and it’s worth slowing it down just a little bit.
Jessica:
Absolutely. Where’s to live by? Yeah.
Scott:
Thanks for joining us again, Jessica.
Jessica:
Thank you for listening to this episode of “The Briefing”. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
Delve into the legal terrain of influencer marketing from IP infringement risks to FTC guidelines compliance. Scott Hervey and Jessica Marlow from Weintraub Tobin navigate the complexities of brand deals with expert insights on safeguarding your brand partnerships on this episode of “The Briefing.”
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:
Influencer social media marketing is big business, whether it’s a brand integration on Instagram by an influencer or a long-term brand endorsement deal by an A-list movie star. Each deal is different, but there are similar issues that are apparent in all brand deals. I’m Scott Hervey with Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. Today is part one of our profile on understanding and navigating risks in brand marketing deals on today’s installment of “The Briefing” by Weintraub Tobin.
Jessica, welcome back to “The Briefing.”
Jessica:
Thank you. Happy to be back.
Scott:
This is something we both deal with frequently from both the brand and the talent side. There are certain risks that celebrities and brands have to navigate in these types of deals. Making these risks more prevalent is the fact that we’re talking about digital marketing, where things tend to move quicker. And for whatever reason, people, even marketing professionals, may sometimes believe that the laws applicable to terrestrial or regular advertising don’t apply to the Internet. Let’s talk about our top general risks from a talent perspective and how to deal with them. Now, we have a bunch of lawyers that listen to our podcast, and you might have a different list, and we would love to hear from you if you think we should have covered something that we didn’t. But this is what we think are the top legal issues in a talent brand deal.
Jessica:
One of the major risks is IP infringement. Now, this is multifaceted, and the risk of infringement comes from a few different places. First, there is infringement risks that the celebrity or influencer imposes on themselves, which can happen in a few ways. The first way is by using content where the copyright is owned by a third party, for example, where a celebrity or influencer posts an image that they don’t own. You’ve covered a few cases on “The Briefing” about this.
Scott:
That’s right. One of the more well-known case is what is O’Neill versus Ratajkowski. While that case didn’t necessarily involve brand marketing, it’s a perfect example of this type of risk. In 2009, O’Neill, who was a professional paparazzi, took a photo of Ratajkowski outside of a flower shop in downtown Manhattan. Now, the photo showed Ratajkowski with her face covered by this bouquet of flowers. O’Neill subsequently registered his photograph with the Copyright Office. Now, shortly after O’Neill posted the photo online, Ratajkowski posted the photo on her own Instagram account. The photo she posted was the same, except that she added the words “Mood Forever” to the bottom of the Instagram post. Now, O’Neill, of course, sued Ratajkowski and her loan-out company for copyright infringement.
Jessica:
Right. And Ratajkowski tried to get out of the case on a fair use defense on a motion to dismiss, but she was unsuccessful. And this case was before the Supreme Court ruling in Warhol versus Goldsmith. Under the new fair use analysis, it’s almost certain that Ratajkowski would not have had a fair use defense.
Scott:
Yeah, that’s true. And this type of liability isn’t just limited to cases where the photo that is used makes up the entire post. This type of potential liability can exist where the third-party photo only makes up a portion of the poster video.
Jessica:
Right. It’s just not limited to photos. This could be a video or other similarly copyrighted, protected material like music or logos.
Scott:
Yeah, and music can be a bit tricky. You would think that almost everyone would understand that you can’t just use your favorite band sound recording in a YouTube video or Instagram story. Unless, of course, it’s offered as music library content from the platform. But you still see that happening.
Jessica:
True. But where there tend to be more problems with music is not in the use of the sound recording, but in the use of the composition. As you know, there are two copyrights in music. One copyright covers the actual sound recording, and those rights are generally owned by the record company. The other copyright is in the composition, meaning the actual music and the lyrics. The copyright in the composition is generally owned by either a music publisher if the song have a publishing deal, or by the songwriters themselves. When you normally see issues of publishing is where the celebrity or influencer performs as in sings the song.
Scott:
Now, normally, if you are a celebrity or influencer and you want to record the performance of a song, you have to get what is called a synchronization license from whoever holds the publishing rights in the music, whether that be the publisher or the songwriters. Without obtaining a sync license, your recording and subsequent broadcast of the performance of the song is copyright infringement.
Jessica:
So not only is this a potential issue for the endorser with the owner of the copyright, but this also could result in a big issue for the brand. First, it’s likely to constitute a breach of the agreement with the brand and result in the endorser not getting paid. Also, if there’s any action by the copyright holder, then the endorser will likely have to indemnify the brand.
Scott:
Yeah, that’s right. Now, there is another type of infringement risk that an endorser potentially faces. And this one usually comes as a big surprise to endorsers and, frankly, their agents. That’s the endorser’s exposure to either a trademark or a copyright infringement claim based on something the brand does. Now, we previously talked about a trademark case where Molly Sims was sued for trademark infringement, all because of a of a sponsored post she did for a beauty product, which another cosmetic company claimed infringed its trademark.
Jessica:
I remember that case well. Sims’ involvement in the matter was no different than any other influence or marketing campaign. As part of a product launch, the defendant cosmetic company hired Sims to post a review of its product on her blog. Sims’ blog post acknowledged that the review was sponsored, as she’s required to for the FTC, and included a link to the defendant’s website. The plaintiff, a competing cosmetic company, sued the defendant cosmetic company and Sims for trademark infringement and other related claims.
Scott:
So Sims tried to get out of the case early, but the court denied her motion to dismiss. In order to establish direct trademark infringement, the plaintiff must establish the use of its mark by the defendant in commerce and the likelihood of confusion. The judge found that the plaintiff had adequately pled that the blog post was likely to cause confusion as to the source of the product and that Sims’ post was essentially advertising, thereby satisfying the use and commerce requirement. Sims raised some arguments why her use should not constantly trademark infringement as a matter of law, including that the blog post was non-commercial editorial speech. The court said that because this was paid content, it crossed the line from editorial or consumer commentary to commercial use.
Jessica:
Most endorsers don’t appreciate that a one-off integration for a brand could land that endorser right in the middle of a trademark infringement case. This is why we always fight hard to get indemnity from the brand in every deal we do. But as mentioned in your coverage of the Sims case, indemnity is only as good as the solvency or the corporation of the indemnitor.
Scott:
Speaking of solvency of the indemnitor, this brings to mind the rash of promoter liability lawsuits against the celebrity endorsers from the fallout over FTX’s bankruptcy. If I told Tom Brady, Giselle Bündchen, Steph Curry, and Shaquille O’Neal that they could face potentially millions in civil liability all because they just appear in a TV ad for FTX, they and their agents probably would have laughed me out of the room. But that’s what’s happening now. Tom Brady, Giselle Bündchen, Steph Curry, Shaquille O’Neal, and others are all defendants in massive lawsuits seeking to hold these celebrities liable for the money’s lost by FTX customers. The customers claim that the celebrities were promoting unregistered securities which fall under the Regulatory Authority of the Securities and Exchange Commission. Under federal law and securities law, anyone who promotes a securities offering has a legal duty to ensure that the information they publish is complete, accurate, and not misleading.
Jessica:
And not only is there potential civil liability, but there’s also potential liability from the SEC. In March 2023, the SEC announced charges against multiple celebrities who were accused of participating in a fraudulent scheme to promote TRX and BitTorrent cryptocurrency securities. The SEC alleged that the celebrities violated federal law by illegally touting the TRX and the cryptocurrency without disclosing that they were compensated for doing so and the amount of compensation. And these penalties can be substantial. In October 2022, Kim Kardashian entered into a $1.26 million settlement with the SEC following its investigation of her online promotion of EMAX tokens. According to the SEC, Kardashian failed to disclose the payment that she received when promoting the crypto asset security on social media.
Scott:
And your example is a perfect lead in for the next potential legal landmine, and that’s an endorser’s failure to comply with the FTC disclosure guidelines.
Jessica:
Right. That is a big issue. We did an entire episode on that and the recent changes to the FTC guidelines, so our audience should certainly listen to that episode. Scott, I think we should cover on an additional episode sort of the risks related to product liability and when an endorser is promoting a product, particularly if we’re talking about food or skincare or makeup, ingestible, vitamins, those sorts of products, and where the liability could ultimately lead for our celebrities and our influencer clients.
Scott:
Yeah, absolutely. That’s a huge topic and certainly would need its own episode.
Jessica:
Absolutely. But next week, we’re going to cover the company side of the legal risk coin.
Scott:
Yes, we are. I’m looking forward to that. Jessica, thanks for joining me today.
Jessica:
Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a defamation dispute between Rachel Williams – a victim of con artist Anna Sorokin – and Netflix, over her portrayal in the docudrama “Inventing Anna.”
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott: Netflix finds itself mired in yet another defamation and false light lawsuit, this one brought on by its portrayal of Rachel Williams, the Vanity Fair photo editor who’s friendship with Anna Delvey – who passed herself off as German heiress Anna Sorokin. Williams’ complaint raises some interesting questions about the portrayal of Williams in the program. We are going to discuss this lawsuit on the next installment of the Briefing by the IP Law Blog
Scott: Rachel Williiams does not come across well in the Netlix program, Inventing Anna. Rather, she comes across as a privileged, freeloader, who sponges off of Sorokin and then abandons Sorkin when Sorkin’s real situation comes to life. So, let’s talk about what Williams will have to establish in order to move her claim forward.
Josh: Williams. brings claims for defamation and false light. For her defamation claim Williams will have to establish: that the statements were defamatory; that the statements were published to third parties; that the statements were false; and that it was reasonably understood by the third parties that the statements were of and about herf. Since Williams is a public figure – she published a story in Vanity Fair and a book about her experiences with Sorkin – she must also prove by “clear and convincing evidence” the statement was made with “actual malice” meaning that the defendant knew the statement was false, or had serious doubts about the truth of the statement. In most states, libel is defined similarly.
Scott: A false light claim is a type of invasion of privacy, based on publicity that places a person in the public eye in a false light that would be highly offensive to a reasonable person, and where the defendant knew or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the aggrieved person would be placed. A false light claim is equivalent to a libel claim, and its requirements are the same as a libel claim, including proof of malice.
So, in order for Williams to prevail on both her false light and defamation claims, she would have to demonstrate that her portrayal in Inventing Anna was (1) assertions of fact, (2) actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice.
Josh: Actual malice would be established by showing that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact.
Scott: So, let’s take a look at the various portrays of Williams she claims to be actionable. Williams notes a scene in episode 2 where Sorokin’s friend Neff Davis states or implies that Williams used to be Sorokin’s best friend, but Williams dropped her as a friend because she was
jailed and could not pay for Williams’ social life and clothes. Williams claims that these scenes are false. Williams was friends with Sorokin because she liked her, not because Sorokin would pick up the tab, and she did not drop Sorokin as a friend because Sorokin was no longer able to pay for her social life and clothes, but rather because she discovered that Sorokin had made the fraudulent statements and promises which induced her to incur significant liabilities, and that Sorkn was a liar and a con artist. That Sorokin never bought clothes, shoes, earrings, or a bag as gifts for Williams, who never wore Sorokin’s clothing or accessories and never told
Neff that Sorokin had bought her clothes. Williams claims that the statements are defamatory because Williams is falsely portrayed as a disloyal and opportunistic friend, a sponger, and a freeloader.
Josh: There are other scenes referenced by Williams which portray Williams as a freeloader or a false friend. For example, a scene in episode 5 where Williams is portrayed in attempting to convince Sorkin to pay for an expensive hairstyle for Williams and a scene in episode 6 where Williams is portrayed trying to get Sorkin to pay for a more expensive hotel room in Moracco. Williams claims. Williams claims that this scene is false and never happened. Williams never tried to get Sorokin to pay for an expensive hair stylist for her, and Sorokin never paid for her hair. Also, Sorokin made the arrangements with the Hotel herself, and Williams did not make any suggestions to her about the accommodation there. Williams also takes offense to her being portrayed in the program as not paying for any dinner, drinks or spa outings with Sorkin. Williams claims that this wrongfully portrays her as a freeloader. IN the complaint Williams claims that she regularly paid her way.
Scott: In the complaint Williams also takes issue with a scene in episode 6where Williams is portrayed as abandoning Sorkin in Morocco. After the scenes depicting the problems with the credit cards at the Hotel and the private museum tour, Williams tells Anna who is alone in her room, drinking heavily and depressed, that she is leaving. Sorokin begs her not to leave her, but Williams leaves anyway. According to the complaint, Williams had a pre-existing business meeting in France and Williams had told Sorkin prior to the pair leaving for Morocco, that she (Williams) would be leaving on a certain date and that Williams left Morocco Sorkin was not sad or depressed. Williams alleges that The statements in these scenes are defamatory because Williams is falsely portrayed as a fair weather friend who abandoned Sorokin when she was alone, depressed and in trouble in Morocco, and needed help and support. These are negative personal traits or attitudes that Williams does not hold.
Josh: Another set of interesting allegations has to do the programs treatment of the charges from Williams and Sorokin’s Morocco trip on Williams’ company credit card. The program portrays Williams as not being entirely upfront with her employer, Vanity Fair, about the charges. In fact in the program there is an exchange between Williams and one of her supervisors where Williams is portrayed feigning knowledge of the outstanding charges; essentially Williams is portrayed as lying to her employer. Williams states that this is a false statement and/or attribution in that she never lied to her employer about this charge, but rather, she voluntarily told her employer that a large personal charge had been placed on her Business Amex and that she accepted responsibility for it.
Scott: Before the court even gets to the question of whether Williams’ portrayal is defamatory, the court would first have to determine whether her portrayal was substantially true. If the court determines that a statement is substantially true, that’s the end of the defamation and false light claim. Its only after the court determines that the statement or portrayal is not substantially true that the court will consider whether the statements or portrayals are statements of fact or the dramatized opinion of the producer.
Josh: In deciding whether a statement is substantially true, courts typically compare the language or portrayal with the actual truth to determine whether the truth would have a different effect on the mind of the average reader/ viewer. Taking the allegations in the complaint as true – that Williams did not say or act in the way she is portrayed in the series, I think the court would not find the various complained of portrayals as being substantially true,
Scott: I agree Josh. Williams’ portrayal in the series was was commented on by a few media outlets. In an article entitled “Inventing Anna has a brutal vendetta against Rachel Williams – is Netflix bitter she sold her story to HBO?”, the Independent wrote, “Inventing Anna really, really wants us to hate Rachel Williams… Williams features as a character in Inventing Anna, a show which seems hellbent on making her out to be the worst person in the world…The New York Post wrote “Shonda’s most insane move, however, is treating poor Vanity Fair photo editor Rachel Williams like she’s the Wicked Witch of the West. The complaint also alleges that, as a result of Netflix’s portrayal, Williams was subjected to substantial online abuse, negative in-person interactions and negative characterizations in podcasts. The complaint includes a representative sample but notes that Williams has received thousands of similar abusive messages. The allegation is that if Williams was not falsely portrayed in this manner, she would not have been subject to this negative treatment by the public.
Josh: If a statement/portrayal is not truthful, then the next question would be whether an average, reasonable viewer, watching the scenes in their original context, would conclude that they are statements of fact and not the dramatized opinion of the producer. The 9th Cir believes that viewers of this type of programming know that they are “more fiction than fact.” however New York does not go this far. In Fairstein v. Netflix, the United States District Court for the Southern District of New York declined to conclude that viewers of When They See Us would assume the program is “more fiction than fact” but rather that the dialogue in the dramatization “is not a verbatim recounting of the real-life participants and is intended to capture the essence of their words and deeds.”
Scott: According to the Fairstein court, the key to determining the difference between non-actionable statements of opinion and actionable statements of facts (or an opinion that implies that it is based upon facts which justify the opinion) is the implication that the statement is based on undisclosed facts known to the defendants. So, is. Williams’ portrayal the unactionable, dramatized opinion of the producers, or is her portrayal based on, or does it appear to the average, reasonable viewer to be based on undisclosed facts known to the producers?
Josh: The producers include a very conspicuous disclaimer at the beginning of every episode. The disclaimer generally states “This story is completely true, except for all the parts that are total bullshit or totally made up.” Usually disclaimers give the producer some room to claim that a work or parts of a work are dramatized opinions. However, as the United States District Court for the Central District of California pointed out in Gaprindashvili (Ga prin dash vill) v. Netflix (the Queens Gambit defamation suit), the presence of a disclaimer is a “factor in the analysis, albeit not a dispositive one.”
Scott: That’s right Josh, in that case the court found that Gaprindashvili ((Ga prin dash vill) had plead sufficient facts to support her defamation claim and the court reminded Netflix that works of fiction are not immune from defamation suits if they disparage real people.
Josh: The distinction between fact and opinion is an issue of law for the courts, and the determination will be based on the court’s assessment of how the statement would be understood by the average person exposed to the statement in its full context. I think it’s possible that the court will find that as to some of the depictions, especially the scenes in which Williams is portrayed as a less than truthful and forthcoming employee of Vanity Faire, the average viewer would not have a reason to conclude that such actions reflect a dramatized opinion of the filmmakers and such viewer could fairly conclude that the depiction was based on undisclosed facts known to the defendants.
Scott: Let’s look at the remaining elements as I think they somewhat run together – actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice. I think the media stories on the negative depiction of Williams and the evidence of the hatred being aimed at her online establish that a false impression was made and that this false impression was highly offensive to a reasonable person. As for actual malice, Williams would have to show that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact.
Josh: The Complaint has a separate section devoted entirely to establishing actual malice. According to the complaint, the production had hired a researcher whos job it was to investigate the Sorokin story and provide the research to the writers. . Shonda Rhimes, the executive producer and creator of the Series, explained in an interview, “We were telling a story that was based on fact, so needed a document to build an extensive timeline of events, to dig into little things that we weren’t even sure were going to matter. For this particular show, having someone who has read every transcript of the trial, who was paying close attention to every detail in Anna’s life, was really, really important, because we wanted to know what we were thinking. We wanted to know what we were making up; we didn’t want to be making things up just for the sake of it.” She added, “we wanted to intentionally be fictionalizing moments versus just accidentally be fictionalizing them.”
Scott: The complaint also points to the fact that the New York post article upon which the series is based does not contain any negative portrayal of Williams. Also, the fat that Williams had published the Vanity Fair article and book, My Friend Anna. Also, it appears that Williams’ attorney sent Netflix two letters during the shows production expressing concern that Williams would be portrayed falsely- Based on the complaint it seems that Netflix was likely on notice.
Netflix doesn’t shy away from a lawsuit and if what they have done in previous indicators I expect Netflix will hit back hard, arguing that the portrayals are substantially true…to the extent they are not the producer’s dramatized opinion. We will have to see where this case goes
Discover how truth became the ultimate defense in the legal battle between Cynthia Love and Kanye West. Join Scott Hervey and Eric Caligiuri from Weintraub Tobin as they unpack the court’s ruling on whether displaying historical footage amounts to defamation on this episode of ‘The Briefing’.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Truth is a defense to a defamation claim. So, it would be no surprise to think that displaying a recording of the way someone actually behaved at some past date would also not be defamation. That assumption was put on trial, literally, in the case of Cynthia Love versus Kanye West in the Central District of Illinois. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Weintraub lawyer and frequent guest of “The Briefing,” Eric Caligiuri, to talk about this case and the court’s ruling on today’s episode of “The Briefing.”
Eric, welcome back to “The Briefing.”
Eric:Good to be here again, Scott. So, Scott, can you tell us a little bit about the history of the case?
Scott:Sure. Absolutely. So, in 2003, Cynthia Love appeared in a Kanye West music video for “Talking Through The Wire.” Love apparently does some short dance number in a barbecue restaurant before asking West for some change. She, according to the complaint and according to the court documents, she looks unsteady and sounds slurred. Fast forward to 2022, when Netflix released a docuseries called “Jeen-yuhs,” a Kanye trilogy, which included clips of Love from that music video, plus previously unreleased footage, all totaling about two minutes of screen time. Love took issue with how she was portrayed in the clips taken in that barbecue restaurant decades ago, and so she sued.
Eric:The basis of her claim is that the documentary captures Love at her darkest moments, and that is not who she is now. Love bases her defamation claims on the grounds that she is not the same person now that she was in 2003 when they made the music video.
Scott:That’s right, Eric. That’s the basis of her complaint for defamation, false light, and other causes of action. On the defendant’s motion to dismiss, the court analyzed Love’s defamation claim. Now, under Illinois law, to state a defamation claim, a plaintiff must present facts showing that the defendant made a false statement about the plaintiff, that the defendant made an unprivileged publication of that statement to a third party, and that this publication caused damages.
Eric:Similar to California law, in Illinois, truth is an absolute defense to defamation. True statements cannot support a defamation claim.
Scott:That’s correct. And the court found that any allegations about Love in the “Jeen-yuhs” docuseries were true. The docuseries included real-world, real-life clips of Love without doctoring the content or adding any false material. It shows true clips of a real event. The court noted that the docuseries makes clear that the footage is from 20 years ago, and the fact that Love later turned things around does not make the footage from years earlier false.
Eric:So, a defamation claim fails if the allegedly defamatory statement is a historical truth, even if it’s not necessarily the current truth.
Scott:That’s right. If a defamatory statement is a historical truth, even if it’s not currently true, it’s true, and the defamation claim must fail. The “Jeen-yuhs” video accurately portrayed Love in a moment of time several decades ago. The video does not suggest that Love in this day remains in an intoxicated state or anything of that sort. The video shows a past truth without suggesting that the past is the present. The footage is historically accurate. So Love’s defamation claim and false like claim fail.
Eric:There were other claims, too. A violation of publicity rights and intentional infliction of emotional distress.
Scott:That’s right, and the court made short work of the right of publicity case, finding that the exemption for audiovisual works under the Illinois right of publicity law covered the docuseries. And as for the intentional infliction of emotional distress, the court had this to say, “A lighthearted dance by some barbecue is not extreme or outrageous. If anything, dancing while a little intoxicated near some barbecue is an all-American activity. It sounds like the 4th of July, lots of viewers might think, been there, done that.” As an aside, kudos to Justice Steven Seeger for the United States District Court for the Northern District of Illinois, the Eastern Division, for writing quite a pithy order.
Eric:Scott, you work with a lot of production companies. Does this case surprise you at all?
Scott:The ruling didn’t surprise me. Given that truth is a complete defense to a defamation claim, it is important for producers to understand that the reason the defamation case was dismissed is due in large part to the fact that the producers didn’t try to apply the footage out of context or otherwise manipulate matters to give an inaccurate impression. If the producers used the footage in a manner to imply that the footage was of a recent event, or that Love hadn’t changed her mannerisms from 20 years ago, the results might have been much different.
Eric:Thanks, Scott. That was a really interesting case. Thanks for bringing that to our attention.
Scott:Thank you for listening to this episode of “The Briefing.” We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues, and if you have any questions about the topics we covered today, please leave us a comment.
Can AI inventions be patented? Scott Hervey and Eric Caligiuri explore recent USPTO guidance on patenting AI-assisted inventions in this installment of “The Briefing” by Weintraub Tobin.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Can AI inventions be patented? Can inventors use AI assistance in the creation of an invention, and can that invention be patented? On February 12, 2024, the United States Patent and Trademark Office issued guidance on the patentability of inventions developed with the assistance of artificial intelligence. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Weintraub lawyer and frequent guest to the briefing, Eric Caligiuri, to discuss this new development in patent prosecution on this episode of “The Briefing.” Eric, welcome back to “The Briefing.”
Eric:Good to be here, Scott.
Scott:So, Eric, the USPTO recently issued a guidance statement that addressed the listing of non-humans on patent applications. Now, this seems to stem from the various patent applications filed by Stefan Thaler or Thaler, which lists his AI tool device for the autonomous bootstrapping of unified sciences, or DABUS, as the inventor. The USPTO denied these applications, and this denial was upheld by the Federal Circuit.
Eric:Right, Scott, in the guidance, the USPTO explained that AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents. The USPTO reasoned that the US Supreme Court has indicated that the meaning of invention in the patent act refers to the inventor’s conception. Similarly, the Federal Circuit has made clear that conception is the touchstone of inventorship. Conception is often referred to as a mental act or the mental part of the invention. Specifically, it is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice. Because conception is an act performed in the mind, it has to date been understood as only performed by natural persons.
Scott:Eric, there has been some question about the patentability of inventions created using AI tools. The USPTO issued guidance on this issue as well.
Eric:That’s right. The USPTO explained that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity. Thus, patent protection may be sought for inventions created through the use of AI tools under specific circumstances.
Scott:So the USPTO made it clear that inventions created through the use of AI tools are not per se unpatentable.
Eric:That’s correct. The USPTO said that there are no specific sections of the patent act that support a position that inventions that are created by natural persons using specific tools, including AI systems, result in improper inventorship or otherwise unpatentable. The statutes only require the naming of natural persons who invented or discovered the claimed invention. Irrespective of the contributions provided by an AI system or other advanced technology system.
Scott:So, Eric, what are the circumstances under which a creator or inventor using an AI tool can claim ownership of the invention?
Eric:In the context of AI-assisted inventions, natural persons who create an invention using an AI system or any other advanced system must still contribute significantly to the invention. There is no requirement for a named inventor to contribute to every claim in an application or patent. A contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent or patent application. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application. Inventorship is improper if any patent or patent application that includes a claim in which at least one natural person did not significantly contribute to the claimed invention, even if the application or patent includes other claims invented by at least one natural person.
Scott:In determining whether a person significantly contributes to an invention created using AI tools, the USPTO will look to the same test it uses to determine inventorship in claimed joint inventions, right?
Eric:Correct. The USPTO looks at the Pannu factors. Each inventor must contribute in some significant manner to the conception or reduction to practice of the invention, make a contribution to the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention, and do more than merely explain in the real inventor’s well-known concepts and or the current state of the art.
Scott:So, Eric, what can applicants expect when filing an application for an invention created using AI tools?
Eric:When applying the Pannu factors to determine whether natural persons significantly contributed to an AI-assisted invention? This determination is made on a claim by claim or a case by case basis, and each instance turns on its own facts. While the USPTO generally presumes those inventors named on the application data sheet are the actual inventor or joint inventors of the application, patent examiners will carefully evaluate the facts from the file record or other extrinsic evidence when making determinations on inventorship. When the facts or evidence indicates that the named inventor or joint inventors did not contribute significantly to the claimed invention, the civic claim and possibly the entire application may be rejected.
Scott:No inventor wants to go through the time and expense of filing a patent application only to have it rejected. We know that an inventor must significantly contribute to the creation of the invention, and such contribution must meet the Pannu factors. What else can the inventor consider?
Eric:Agreed. The USPT of them provided the following non-exhaustive list of principles that can help determine whether an AI assisted invention is patentable. First, merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system. However, a significant contribution can be shown by the way the person constructs the prompt and view of a specific problem to elicit a particular solution from the AI system.
Scott:Now, reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.
Eric:That’s right. A natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill in the art, is not necessarily an inventor. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system’s output could demonstrate that the person provided significant contribution to the invention, even if that person is unable to establish conception until the invention has been reduced to practice.
Scott:A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention, even though the person was not present for or a participant in each activity that led to the conception of the claimed invention.
Eric:Correct. In some situations, the natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created by the AI system.
Scott:Maintaining intellectual domination over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system. Right?
Eric:Exactly! A person simply owning or overseeing an AI system that is used in the creation of an invention without providing a significant contribution to the conception of the invention does not make that person an inventor. The USPTO reminded applicants that they still have a duty to disclose, and in applications for AI-assisted inventions, this information could include evidence that demonstrates a named inventor did not significantly contribute to the invention because the person’s reported contribution was made by the AI system.
Scott:Thanks, Eric, that was quite fascinating. Actually, I’m quite fascinated by the USPTO; having said that, a significant contribution could be shown by the way a person constructs the prompts in view of a specific problem to elicit a particular solution from the AI system. I think that’s, that’s pretty groundbreaking, right? I mean, that’s basically saying that an inventor could be considered to have significantly contributed to an invention that is created due to the output of a generative AI system based solely on the structure and construction of the prompts that they feed into the system. I think that’s pretty groundbreaking. Would you agree?
Eric:No, I totally agree with that. I mean, essentially, what you’re saying is, based solely on the inputs into the AI system, they could potentially be considered an inventor, assuming that those inputs significantly contributed, I guess, to the output, which would be the conception of the invention.
Scott:Yeah, I guess it has to do with the, it seemed from at least that statement that it seemed to be the work that goes into structuring the input, creating and structuring the input. Fascinating. I think we’ll definitely have to keep our eye on future patent applications that are filed based on the use of AI tools and see how this all shakes out. Thanks again, Eric, for bringing this to our attention.
Eric:Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues, and if you have any questions about the topics we covered today, please leave a comment.
How far back can a plaintiff recover damages in a copyright infringement case? Scott Hervey and Jamie Lincenberg discuss this contested copyright law question in this installment of “The Briefing” by Weintraub Tobin.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Just how far back can a plaintiff in a copyright infringement case go in recovering damages? I’m Scott Hervey of Weintraub Tobin, and today, I’m joined by my colleague Jamie Lincenberg. We will take a look at an important and contested question in copyright law, which is headed to the Supreme Court this spring, on today’s episode of “The Briefing” by Weintraub Tobin.
Jamie, welcome back, and thank you for joining us today.
Jamie:Thanks, Scott. Happy to be here.
Scott:Jamie, can you tell us more about the topic that we’re diving into here?
Jamie:Of course. In the case of Nealy versus Warner Chappell Music, the Supreme Court will be discussing the question of when the clock starts ticking in the Copyright Act’s three-year statute of limitations and whether a copyright claim plaintiff can recover damages beyond the three years from when the claim was filed. The justice’s decision to hear this case highlights a circuit split on the matter. The case began in 2018 when music producer Sherman Nealy filed a lawsuit against Warner Chappell Music and Artists Publishing Group. It was a run-of-the-mill copyright infringement case in which Nealy claimed that Flo Rida’s 2008 song “In The Sir” featured an unlicensed sample of a 1984 track that Nealy had owned. And now, almost six years later, Nealy’s lawsuit is headed to the Supreme Court to answer the unresolved questions of whether damages in a copyright case are limited to just the last three years before the case was filed or can damages go back for years, potentially dramatically increasing the amount of damages that a plaintiff can recover?
Scott:The debate at the center of the case against Warner Chappell goes back to the case of Petrella versus MGM, when the Supreme Court ruled that the movie studio MGM could be sued for copyright infringement over the Scorsese-directed film “Raging Bull”. Great film, by the way, even though the case was filed decades after the film had first been released in 1980, MGM argued that such a long delay was unfair, but the Supreme Court decided that the Copyright act has a three-year statute of limitations that resets with every new infringement.
Jamie:Yeah, that’s right. Under the court’s interpretation of the law in that case, as long as copies of allegedly infringing material, whether a book or a song or movie, had been sold during the three years prior to the lawsuit, it was ripe for a copyright case. Unsurprisingly, that ruling then led to a burst of infringement cases that had been long delayed, including a high-profile lawsuit against Led Zeppelin over the very popular 1971 song “Stairway to Heaven.”
Scott:But with respect to the awarded damages in the Raging Bull case, the late Justice Ruth Bader Ginsburg stated that a successful plaintiff can gain retrospective relief only three years back from the time of the suit. No recovery may be had for infringement in the earlier years. Profits made in those years remain the defendants to keep. In the years since the rulings in the New York U. S. Court of Appeals for the Second Circuit have abided by that decision, and copyright accusers have not been awarded damages for any conduct past that three-year mark. In 2021, the judge of the Nealy case cited “Raging Bull” and ruled that Nealy was not entitled to damages from earlier than 2015. Nealy said he had only learned of the illegal sample in 2016 and wanted damages dating back to the song’s release in 2008, and the judge cited the Supreme Court’s binding precedent in “Raging Bull” that had explicitly limited damages to the three years prior.
Jamie:That’s true, Scott, but that’s actually not the case in the US Court of Appeals for the 9th Circuit, which covers California and has held that if a plaintiff can prove they only recently discovered the fact that their copyright was infringed, they can seek damages going back all the way to the very first infringement. So we’re talking about potentially decades worth of damages. And earlier this year, the US Court of Appeals for the 11th Circuit overturned that 2021 ruling in the Nealy case. Siding with the 9th Circuit’s approach, the appeals court held that a copyright plaintiff may recover relief for infringement occurring more than three years before the lawsuit’s filing, so long as the plaintiff’s claim is timely under the discovery rule, a rule under which a claim accrues when the plaintiff discovered or should have discovered the infringement. The 11th Circuit stated that the Supreme Court’s ruling in Petrella does not apply the statute of limitation under the discovery rule but only under the injury rule, a rule under which the claim accrues at the time of infringement, and that Nealy’s late discovery of the infringement was an entirely different situation than the one dealt with in “Raging Bull,” and any similar discovery rule cases would be able to seek damages as far back as they want.
Scott:Warner Chappell has now appealed that decision to the Supreme Court, arguing that the discovery rule approach unfairly expands the financial exposure of a copyright defendant and could potentially lead to an onslaught of frivolous and maybe not-so-frivolous lawsuits aimed to extract settlements and that the discovery rule should actually be inapplicable to the case because the statute of limitations commences at the time of the infringement, which is the injury rule, making completion of the cause of action or marking the completion of the cause of action. Additionally, Warner asserts that applying the discovery rule would contravene Congress’s original intent, as language pertaining to the discovery rule is intentionally absent from the federal copyright laws. According to Warner Chappell, an artist publishing group, the plain language of the Copyright Act is unambiguous and says that a civil action must be commenced within three years after the claim has accrued, and the Supreme Court needs to look at what Congress had in mind when they drafted the term accrued. According to Warner Chappell and Artist Publishing Group legal dictionaries, as well as many Supreme Court decisions, support the idea that a cause of action accrues at the time of injury. They also assert that the Supreme Court has already recognized a three-year time limit for copyright plaintiffs to seek relief under the Copyright Act in the MGM “Raging Bull” decision.
Jamie:On the other hand, Nealy argues that this challenge on the discovery rule exceeds the scope of the issue presented to the Supreme Court, as the lower courts already presume the application of the discovery rule in this case, and that introducing a separate damages bar, a cap on damages that can be awarded to a plaintiff in federal copyright cases, would undermine Congress’s purpose, as copyright law does not impose such a bar. So now here we have the two courts that really contain the majority of the country’s creative industries directly divided over how this segment of copyright law works. The case has big implications for copyright heavy industries such as music and film, and will unquestionably affect the scope of infringement cases initiated by copyright holders, as well as alter the burden of proof for each party in future cases. If the Supreme Court ruled in favor of Nealy, it would almost certainly encourage a surge of lawsuits similar to what happened after the Petrella MGM case. And as Nealy’s attorneys argued at an early stage of his case, when it comes to long-delayed copyright claims, the vast bulk of damages will typically fall outside of the three-year limit.
Scott:This means music labels and publishers are also watching this case closely. In brief, the Recording Industry Association of America and the National Music Publishers Association didn’t advocate for either side, but they did urge the justices to take on a case that is vitally important to the music industry. In support of Warner Chappell and Artist Publishing, the Association of American Publishers argues that the discovery rule burdens publishers who face extensive discovery costs and potential exploitation by plaintiffs aiming to leverage settlements. They argue that it is generally difficult for publishers to keep track of the ownership or license relating to photos or illustrations used in the books that they published and that plaintiffs have tried to take advantage of these difficulties to obtain the amount of settlement price that is higher than the actual advantage to the defendant publishers or the lost value to the plaintiffs. On the other hand, the Authors Guild, in support of the plaintiffs, contends that the discovery rule enhances artistic development by safeguarding artist’s rights suggesting that the rule preserves an artist’s ability to sue for infringement that could not have been reasonably discovered earlier by extending the time period for legal action. They point out that the development of the Internet and technology has presented challenges for copyright holders to identify and respond promptly to infringements. About a dozen organizations have also filed amicus briefs in the case, most of them urging the court to at least analyze and provide guidance on the discovery rule and the injury rule at hand.
Jamie:Scott, I’m curious if you have a prediction on how the justices might rule on this case. My inclination is that they will side with the 11th Circuit here in favor of Nealy.
Scott:I don’t like to make calls because I’ve ended up being wrong on so many of them. It’s interesting, though. You look at the plain language of the Copyright Act and it uses the accrual language. It doesn’t use language relating to the discovery rule but rather the injury rule. I think that the Supreme Court’s precedent in the MGM case, the “Raging Bull” case, does set the standard. So I think that the petitioners, Nealy, I think they would have a very tough road to hoe and a tough argument to make and a tough precedent to overcome. I think that the chances are favorable that the Supreme Court may double down on its past decision and hold that the damages that are recoverable are reflective of the limitation period and that you can’t go back further than that. But I’ve been wrong before. The one thing that I will say is if they do find that the plaintiff is able to pursue damages further back than the three-year limitation period, then these cases, as they evolve, will all be about establishing that the plaintiff either knew or should have known of the infringement well prior to the three years running. And with regard to Nealy, I’m sorry, how could Nealy have not been aware of this song in the air? I mean, please. There’s no way that a person that maybe goes to social events or goes to a club or there’s no way or has children in college. There’s no way that they would have been unaware of this song up until when was it? 2015? 2015? 2014? 2015? No way. But I have no concrete proof of that. But that’s just kind of my, well.
Jamie:I might have to stop you there because, and I don’t know all the details of this piece, but there is a portion of time, a few years when Nealy was in jail and was not part of pop culture and wasn’t going to know all the new songs coming out so
Scott:I don’t know. Don’t they? I mean, I think people, I think you’re allowed to have a radio in jail.
Jamie:Never been to jail. I don’t know how it works.
Scott:I don’t know, I think you’re allowed to radio in jail.
Jamie:I think, at the very least, Scott, the invested parties here, whether part of the case or not, are looking forward to at least having some guidance.
Scott:Yeah, I definitely agree that there needs to be guidance. The Supreme Court does need to chime in because what you have now is a race to the courthouse between New York and California. And it depends if you’re the plaintiff or the defendant, and what that doesn’t do, it doesn’t encourage resolution of disputes. What it encourages is a side to quickly file a lawsuit, even if there’s a whiff of some type of dispute, so that they are able to obtain jurisdiction and jurisdiction over a case in a locality that is more favorable to their position. And that doesn’t do anybody any good. So we’re going to have to watch this one really carefully and either it will be status quo or it’ll be a whole new bag for copyright plaintiffs. Jamie, thanks a lot for bringing this to our attention.
Jamie:Yeah, thanks, Scott.
Scott:Thank you for listening to this episode of “The Briefing.” We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
Delve into the new WGA and SAG contract provisions relating to AI. Scott Hervey and Jamie Lincenberg tackle the terms and changes in this installment of “The Briefing” by Weintraub Tobin.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott
AI ended up being a bigger than expected part in the writers’ and actors’ strikes. What exactly are the new WGA and SAG contract provisions relating to AI? I’m Scott Hervey from Weintraub Tobin, and today, I’m joined by my colleague Jamie Lincenberg. We are going to talk about the AI terms and the 2023 changes to the WGA and SAG MBA on this installment of “The Briefing” by Weintraub Tobin.
Jamie, welcome back to “The Briefing.”
Jamie
Thanks. It’s good to be back. Looking forward to getting into this topic with you.
Scott
Yeah. So, let’s dive right in. So, let’s first talk about the changes to the Writers Guild MBA related to AI. I think the most logical place to start is with how the WJ defines AI. So the term generative artificial intelligence, or let’s call it GAI, because we don’t have enough acronyms, let’s call it GAI. And that generally refers to a subset of AI that produces content based upon learned patterns like Chat GPT, DALL-E, and Llama, and it does not include traditional AI technologies such as those used in computer-generated imagery like CGI and visual effects.
Jamie
Scott, the WGA terms say that GAI cannot be a writer or professional writer as defined in the MBA because it’s not a person, and therefore, materials produced by GAI should not be considered literary material under any MBA. This is important because the fact that GAI output can’t be considered literary material has a direct impact on a writer’s credit and compensation.
Scott
Yeah, that’s right. While a producer can provide a writer with GAI output and instruct the writer to use it as the basis for writing a story or a script, that GAI output cannot be considered assigned or source material for the purpose of determining compensation or writing credit, and it can’t be used to disqualify a writer from that writer’s eligibility for separated rights.
Jamie
While writers can use GAI in the process of preparing literary material, for example, a screenplay with consent of the company, a company may not require that a writer do so as a condition of employment. Material created by writers who elect to use GAI should be considered literary material as opposed to material produced by GAI.
Scott
That’s right, but given the issues surrounding the protectability of GAI output and the requirements that must be satisfied when registering a work that includes GAI output with a copyright office, it’s not clear to me why a producer would want a writer to incorporate GAI output into any literary material. The WGA terms do acknowledge that producers can establish their own policies with respect to the use of GAI that writers will be required to adhere to, and companies can reject the use of GAI, including when that use could threaten the copyrightability or the exploitation of the work.
Jamie
We should also talk about the 2023 changes to the SAG Basic Agreement related to AI. Those revisions seem to be a bit more involved.
Scott
Yeah, they are. I would agree with you there. So, the 2023 changes in the SAG Basic Agreement, they really address three different types of digital replicas. The first is an employment-based digital replica. The second is an independently created digital replica. And then the third is called a synthetic performer.
Jamie
Let’s talk about the employment-based digital replica first.
Scott
Sure, let’s do that. So, an employment-based digital replica is a replica of the voice or likeness of the performer that is created in connection with the employment, performer’s employment on a motion picture. And note that this can be both the program for which the performer was employed and a program other than which the performer was employed. And it’s a replica that’s created using digital technology with the performer’s physical participation, and is for the purpose of portraying the performer in photography or on a soundtrack in which that performer did not actually perform.
Jamie
If a studio wants to use an actor in the creation of an employment-based digital replica, the studio must give 48 hours of advance notice prior to the services and get written consent, which must be clear and conspicuous.
Scott
It is also important that the producer gets written consent where the producer desires to use an employment-based digital replica. Now, the scope of consent and the manner in which it can be obtained is the same for the creation because you have to get consent for creation and consent for use. So, I would think it would be best practice to get both required consents in the same document. This consent it can be contained in either a section in the performer’s employment contract that’s separately signed or initialed by the performer, or it can be an entirely separate writing that is signed by the performer, like a writer or a side letter, whether it’s a provision in the talent agreement or it’s a side letter. This language, the language that must be in there, must include a reasonably specific description of the intended use. Now, once the consent is granted, it’s good for the life of the performer, and it can also continue after that performer’s death unless it is expressly limited within the consent document itself.
Jamie
And there are special rules addressing compensation to be paid to the actor in connection with creating the digital replica, but no additional compensation is due if the performer participates in the creation of the digital replica on the same day that the performer is providing other services to the producer. If the performer participates in the creation of the digital replica on a day that the performer is not providing other services, then the producer would have to pay one day at performer’s pro rata daily salary, but not less than day performer’s minimum. Now, if the work on the digital replica was scheduled on a separate day to accommodate the performer, the producer would only owe one-half of the performer’s pro rata daily salary for a four-hour session. Over 4 hours would be at the full day rate. However, no pay would be due for schedule f players or if the work happens during the player’s guarantee.
Scott
There are also compensation rules attached to the use of the digital replica. If a producer wants to use a digital replica in a motion picture or program episode for which the performer was employed, the producer would have to pay the performer’s pro rata daily rate or the minimum rate, the scale minimum rate, whichever is higher for the number of production days that the producer determines the performer would have been required to work had the performer worked instead of using the digital replica. Now, the producer must make a good faith effort to estimate the number of production days that the live person, the live performer, would have rendered services utilizing objective criteria. Now, no additional compensation is due if, based on the performer’s form of engagement, their compensation would have covered the work had it been performed by the performer. For example, where overscale compensation is applied to this type of work at the minimum scale daily rate or the digital replica is used in a scene in which the performer actually performed in person.
Jamie
So, for example, if a digital replica was used instead of a retake.
Scott
Right! And also, no additional compensation is due where the performer is under schedule f. So an employment digital replica could be used in a scene where an actor is playing multiple characters in the same scene, like the barbershop scene in “Coming to America,” where Eddie Murphy is playing almost every character, or if for some reason, the performer isn’t available at that time.
Jamie
For example, if AI was around when Paul Walker died, an employment digital replica could have been used to finish “Fast and Furious.”
Scott
Right! So the 2023 SAG changes, they also addressed when the studio can use a digital replica in a program for which the performer was not employed. Those rules say that the studio has to get written consent for this type of use at the time of use and not at the initial employment.
Jamie
That’s true. However, there is an exception, right?
Scott
Right. Yeah. Consent for use in another project may be obtained at initial employment if one, the project or projects are specifically identified and there is a reasonably specific description of the intended use that’s provided for each of the identified projects, and two, the performer is also employed in those other identified projects, or the performer is deceased at the time the other identified projects commence production. So this may be something to look at for principal cast members where the studio has options for additional seasons.
Jamie
The compensation payable for the use of a digital replica in a program for which the performer was not employed is similar to the compensation payable for the use of a digital replica in a program for which the performer was employed. It’s the daily rate, or if the use is in a field or medium covered by another SAG after collective bargaining agreement, it’s no less than the minimum wages and residuals in that agreement, and if the artist is schedule f, no additional compensation is due.
Scott
The 2023 SAG rules also provide for an independently created digital replica. This is a digital replica of a performer that is used in a project that the performer is not employed in. The rules require written consent that includes a reasonably specific description of the intended use, and fees are left for the parties to bargain.
Jamie
The 2023 SAG rules also left open the potential for producers to use a synthetic performer. This is a completely made-up digital performer that is not voiced by a natural person. The producer does have to give notice to the union, and there’s language about a good faith negotiation over lost compensation.
Scott
So I think, Jamie, I think the question will be, that producers and that talent reps will struggle with what does this consent actually look like and what actually has to be in it? What does a reasonably specific description of the intended use look like? What does it mean, and what do I actually have to disclose, and what if there are conceptual changes that later change the intended use? Does that mean that the initial consent is no good, and we have to go through an entirely new round of negotiated consent? You know, this does answer a number of questions with regard to when compensation is due to an actor for both the creation and the use of a digital replica. And it seems that from the actor’s perspective, they get paid. They get paid if a digital replica is used, and they get paid in connection with the creation of a digital replica, just like they would get paid where they’re providing post-production services, if they’re schedule f, or if it’s during their guarantee period, they’re not going to get paid anymore, but they’re already being paid over scale, so that amount is applicable to them. With regard to the use of a digital replica in a new episode, that performer has to get paid for that episode anyway. So it’s interesting to see how producers may use this, how it may become a tool to use where a performer isn’t available for travel due to travel conflicts or conflicting productions. And instead of kind of rejiggering the entire production schedule for that one scene, the producer may just elect to use an employment-based digital replica, pay the talent that rate for that particular episode, and move on.
Jamie
Right.
Scott
We’ll see. One thing is for certain: I think last year, digital, moving digital AI generative content wasn’t really quite ready yet, but I think it is now.
Jamie
Yeah, I agree with you, Scott. The AI technology is changing every day.
Scott
Right, I mean, just recently, at least on the date that we recorded this, just recently, OpenAI released Sora, which, if you look at it, it’s pretty amazing. It’s AI-generated graphic content. It still has its problems, for sure. It’s not ready for primetime yet. But looking at this as the beginning of where we’re going to go for video generative AI content, it will be ready for primetime really, really soon. So I guess it was a really good thing that SAG spent so much time in negotiating these terms for the 2023 changes to the NBA, because if they would have waited, they might have been behind the eight ball.
Jamie
Thanks for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.
Graffiti artists Nekst and Bates have filed a lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing. Scott Hervey and James Kachmar discuss this case in the next installment of “The Briefing.”
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:This case is a head-scratcher. Graffiti artists Nekst and Bates have filed the lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing manufactured by Guess and sold by Macy’s. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We are going to talk about this lawsuit on the next installment of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.”
James:Thanks, Scott.
Scott:So it seems that Guess manufactured various clothing items that incorporated the tags of graffiti artists Nekst and Bates, and those pieces of clothing were then sold by Macy’s. Now, a tag, in the parlance of street art, graffiti art, is a design element that reflects, among other things, the artist’s elaborately expressed signature or name. The plaintiffs contend that these tags are the primary calling cards and source identifiers of their artwork and, well, themselves.
James:That’s right, Scott. The plaintiffs in this case bring a number of claims in the complaint, including a false endorsement claim under the Lanham Act, a right of publicity claim under California law, and a copyright infringement claim. Let’s talk first about the Lanham Act claim.
Scott:Sure. So that’s section 43A of the Lanham Act, and that imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin or false or misleading description of fact or false or misleading representation of fact which is likely to deceive consumers. As to the affiliation, connection, association, sponsorship, or approval of another person’s goods or services, courts have held that a person’s physical likeness, voice, or other unique or distinguishing characteristic, such as a signature, constitutes a symbol or device as specified in that section.
James:That’s right, Scott. The mere use of a celebrity’s image or likeness is not ordinarily actionable. But using the celebrity’s image or likeness to suggest sponsorship or approval could constitute false endorsement where the celebrity hasn’t, in fact, given their endorsement. A false endorsement claim must also be something that is likely to confuse consumers or must lead them to thinking that the celebrity endorsed a product or brand when, in fact, they actually have not.
Scott:That’s right, James. The complaint alleges that Guess falsely used artwork reflecting artists’ names and signatures on apparel, creating the false impression that the artists endorsed Guess and Macy’s. Now, we can’t show you the pictures of the apparel on the podcast, but it’s pretty blatant. The plaintiffs argue that the use of the artist’s name and signature is designed to create and does, in fact, create the false and deceptive commercial impression that these artists and their products are somehow associated with or somehow endorse the Guess merchandise.
James:So, Scott, I suppose that Guess may try to argue that a tag is not a symbol device or any of the other enumerated items in section 43A. That seems like a pretty thin argument.
Scott:Yeah, I would agree with you, James. It does seem like a thin argument.
James:So, Scott, what about the California right of publicity claim?
Scott:Well, California Civil Code section 33 44A provides any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise, goods, or services without that person’s prior consent, or in the case of a minor, the prior consent of the parent or legal guardian shall be liable for any damages sustained by the person or persons injured as a result thereof. So, the plaintiffs claim that Guess is using their name and their signature on merchandise, and they also claim that Macy’s is using their name and their signature in advertisements to sell Guess’ merchandise.
James:Seems to be a very straightforward claim. Scott, what about the copyright claim? Normally, the Copyright Office will not recognize a copyright using short words or phrases.
Scott:That’s true, James. The Copyright Office generally does not recognize a copyright in short words or phrases. Now, this claim is advanced by Bates only the depiction of Bates’ signature. It does have a very unique design elements, design element. Nekst does as well, but I think the reason why this is advanced by Bates only is because it seems that Bates has secured a copyright registration in the graphic depiction of his signature. And we know that a copyright registration is a prerequisite to the filing of a copyright infringement claim. So, it might be possible that Nekst just had not secured a copyright registration for the graphic depiction of his signature. So, to me, it seems like Bates has sufficiently pled a copyright claim, right?
James:And it’s not readily apparent to me what defenses Guess may rely on. I guess we’ll have to wait and see and maybe do another briefing on this topic in the future.
Scott:Yeah, we’ll definitely wait and see what happens. I suspect, though, this case is going to be settled rather quickly. That’s my guess. Thank you for listening to this episode of “The Briefing.” We hope that you enjoyed this episode. If you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
As James Kachmar previously wrote on the IP Law Blog, the man who was photographed as a naked baby in 1991 for Nirvana’s iconic “Nevermind” album cover is now suing the band for distributing child pornography. Scott Hervey and James discuss the Ninth Circuit’s opinion on the case in this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:James:
In 1991, the grunge band Nirvana was one of the most popular musical acts in the United States with its anthem “Smells like Teen Spirit”, which was featured on its album Nevermind. Many will remember the cover of that album, which featured a naked baby swimming underwater and reaching for a dollar bill on a fishing hook. Three months after its release, Nevermind rose to the top of the Billboard 200 rankings and since then has sold over 30 million copies. The picture on the album was licensed for use on other merchandise, such as t-shirts, and was also the subject of various parodies. Now, 30 years later, Nirvana, its surviving members, and its record companies face a civil lawsuit for allegedly distributing child pornography by the now-grown man who was depicted on the album cover as a baby. I am James Kachmar from Weintraub Tobin, and I am joining Scott Hervey from Weintraub Tobin to talk about this case on the next installment of “The Briefing.”
Scott:
James, welcome back to The Briefing. This case, the case of Elden versus Nirvana, has been on my mind since I read your excellent article on the case. Can you give us some background?
James:
Sure. Scott, the baby in that photo, is now a gentleman. His name is Spencer Elden, and he was four months old at the time the photograph was taken. He turned 18 in 2009 12 years later in 2021, at the age of 30, he filed a lawsuit, and after two rounds of amended complaints, filed a second amended complaint in January 2022. Mr. Elden asserts a single claim against the defendants for a violation of 18 USC section 22 55, which allows victims of child pornography to bring a civil cause of action for their injuries.
Scott:
And, James, what is the nature of Mr. Elden’s complaint? What’s it based on? What is it based on?
James:
Mr. Elden’s complaint alleges that the cover of Nevermind depicting him in the nude constitutes child pornography and that the defendants, quote, knowingly possessed, transported, reproduced, advertised, promoted, presented, distributed, provided, and obtained, end quote, this alleged child pornography depicting him. He further alleges that the image has been reproduced and redistributed during the ten years preceding his lawsuit, and since then, pointing out that Nevermind had been rereleased in September 2021, claimed that he had suffered personal injury as a result of the ongoing violations of section 22 55.
Scott:
So initially, the defendants moved to dismiss Mr. Elden’s complaint, arguing that it was barred by the applicable tenure statute of limitations for such claims. The district court agreed with the defendants and dismissed the complaint with prejudice. Mr. Elden appealed that dismissal to the 9th Circuit. And what happened on appeal, James?
James:
Well, Scott, just days before Christmas last year, the 9th Circuit issued its opinion in Elden versus Nirvana, LLC, and reversed the dismissal of his claims. Importantly, the 9th Circuit, in its decision, did not decide whether the album cover, in fact, constituted child pornography. Rather, it only decided whether his claims were timely. The issue of whether the album cover constitutes child pornography will be decided on remand by the lower court.
Scott:
So, what was the basis for the 9th Circuit’s reversal of the district court’s dismissal?
James:
Well, the 9th Circuit began by examining the text of the statute of limitation provisions in section 22 55, which set forth two pertinent time frames. First, the plaintiff must have been a minor when victimized by the violation, such as the distribution of child pornography. And two, the plaintiff must have suffered personal injury as a result of the violation, regardless of whether the injury occurred when the plaintiff was a minor or as an adult. The 9th Circuit made clear that while the violation of the criminal law must have initially occurred while the plaintiff was a minor, the plaintiff could pursue a claim for personal injury that did not occur until after he or she became an adult.
Scott:
Okay, and how does the tenure statute of limitations apply to the violation? Then when can the plaintiff bring a claim either? Well, the plaintiff can bring a claim that was based on an injury that occurred either before or after the plaintiff was an adult.
James:
Well, Scott, a plaintiff can bring a claim within ten years after the date of which the plaintiff reasonably discovers the violation that forms the basis of the claim.
Scott:
Okay, but this album was released in the early nineties, and that’s well over 30 years ago. So how is it that the 9th Circuit found the statute of limitations, a ten-year statute of limitations, had not yet run?
James:
Well, the 9th Circuit examined various types of personal injury the victim of child pornography may sustain, such as injury to the child’s reputation and other injuries, such as emotional wellbeing or emotional distress. The 9th Circuit continued by drawing an analogy to reputational harm that a plaintiff who is the victim of a defamatory statement may suffer. In using this analogy, the 9th Circuit pointed out that victims of child pornography, like someone who has been defamed, may suffer a new injury. Upon the republication of the offensive material, the 9th Circuit concluded that with regard to Mr. Elden’s claims, quote, we hold that if a predicate criminal offense occurred when the plaintiff was a minor, the statute of limitations does not run until ten years after the victim reasonably discovers a personal injury resulting from the offense, which may include republication of the child pornography. That was the basis of the predicate criminal offense, end quote.
Scott:
So, the first prong of the statute would require Mr. Elden to bring his claim within ten years after the date on which he discovered the use of the photos. There was no dispute that Mr. Elden was aware of the distribution of the Nevermind cover at a very young age, and thus, he could reasonably discover any additional violations of the statute as they occurred. So, to the extent a violation occurred in 2009 when Mr. Elden turned 18, he would have to bring his actions by 2019 to avoid the ten-year bar under the first prong of the statute of limitations. Had the statute only contained that type of statute of limitations, Mr. Elden’s claim would have likely been barred, right?
James:
That’s correct, Scott. However, the second prong of the statute of limitations provision allows a complaint to be brought within ten years from the date on which the plaintiff reasonably discovers the personal injury that forms the basis for his or her claim. Under this prong, the 9th Circuit concluded that Mr. Elden had timely alleged a claim for violation of section 22 55. While he alleged that the violations began in 1991 when the photograph was taken, and he was still a minor, it wasn’t until the rerelease of Nevermind in 2021 that he had sustained additional personal injuries that formed the basis of his claim. The 9th Circuit concluded that because of that rerelease and other republications after 2011, which could give rise to personal injuries under the second prong, Mr. Elden had ten years from those dates to file his complaint. And under this approach, the 9th Circuit concluded that his complaint had been timely.
Scott:
The 9th Circuit was very clear in its rejection of the defendant’s claim that the statute of limitations for violations of section 22 55 should run against a particular offender when a plaintiff, quote, knows that a particular offender is responsible for the predicate offense and subsequent injuries. The 9th Circuit said that this was not supported by the statute’s text, and logically, the child pornography victim suffers the same injury when a new individual or the original creator redistributes the image.
James:
Right, and the 9th Circuit also rejected the defendant’s argument that the plaintiff’s claim should be treated like those other cases in which a plaintiff may not have discovered all of the latent or the full extent of his or her injuries from the initial violation, which would not normally amount to a new injury. Rather, the 9th Circuit found that Mr. Elden was alleging new injuries that stemmed from each redistribution or republication of the album covered during the ten years prior to his filing of the lawsuit, and the court concluded those would be within the statute of limitations.
Scott:
Additionally, it’s important to point out the 9th Circuit rejected the defendant’s argument that Congress’s codification of a discovery rule in this specific statute displaces any common law discovery principles. The 9th Circuit reason that Mr. Elden was not arguing that he had belatedly discovered injuries arising from the initial violations of section 22 55, but rather he discovered new injuries caused by the defendant’s new actions, the 2021 rerelease of Nevermind within the limitations period. The 9th Circuit concluded that because the district court had erroneously determined that the statute of limitations barred Mr. Elden’s claim, the district court had erred. Thus, the 9th Circuit reversed the district court’s dismissal and remanded the case back to the district court. So, James, it seems that Mr. Elden will now have an opportunity to finally litigate whether the Nevermind album cover is child pornography and whether he is entitled to at least some amount of damages resulting from the redistribution of the album in 2021.
James:
That’s correct, Scott.
Scott:
And so, James, what’s the lesson? There’s got to be a lesson from this case. What’s the lesson here?
James:
I think the Elden case is a good reminder for potential plaintiffs to consider whether the republication of offending material can give rise to a new claim within the applicable statute of limitations. This approach may be useful in pursuing claims for copyright infringement where the initial infringement may have occurred years ago, but there may be acts of recent republication that could give rise to new causes of action for infringement.
Scott:
That’s true, James, and a very good point raised. James, thanks for joining us today to discuss this case.
James:
Thank you for listening to this episode of “The Briefing”. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please feel free to leave us a comment.
Brandy Melville has asked the Supreme Court to review the 9th Circuit's decision in its dispute with Redbubble. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Jamie:This past summer, we analyzed the willful blindness doctrine, which was highlighted by the 9th Circuit's decision in the case of Redbubble, Inc. Versus Y.Y.G.M. doing business as Brandy Melville. The 9th Circuit in that case refused to hold Redbubble liable for contributory infringement because Redbubble didn't know, or have reason to know of specific incidents of infringement by its users. The matter seems settled, but Brandy Melville has asked the Supreme Court now to review the 9th Circuit's decision, which now causes a circuit split. I'm Jamie Lincenberg of Weintraub Tobin. We're going to talk about this update in the Brandy Melville Redbubble dispute on this installment of The Briefing.Scott:I'm Scott Hervey of Weintraub Tobin. Jamie, welcome back to The Briefing.Jamie:Thank you, Scott. It's great to be here again.Scott:So before we dive into Brandy Melville's petition for assert to the Supreme Court, can you take us back through the history of the case?Jamie:So this dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble's website that infringed their company's trademarks.Scott:Initially, the district court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement. Then, on appeal, the 9th Circuit appellate panel overturned much of the lower court's findings, holding that a party is liable for contributory infringement when it continues to supply its products to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to infringement. In short, willful blindness requires the defendant to have knowledge of specific infringers. General knowledge of infringement on the platform is not enough.Jamie:This decision for the first time defined the 9th Circuit's legal standard for contributory liability, and it really heightened the hurdle for brand owners to establish contributory infringement. Now, six months later, Brandy Melville argues that the appellate court was wrong in its holding and has asked the Supreme Court to review the 9th Circus decision that liability for user-submitted trademark infringement only stands when there's specific knowledge of the infringement.Scott:Brandy Melville argues in its petition for rid of Cert. That the 9th Circuit has adopted an erroneously narrow view of such liability and points to the Second Circuit and the 10th Circuit, where once a defendant knows or has reason to know that it is assisting in trademark infringement, it has a legal duty to take reasonable steps to stop it? The attorneys for Brandy Melville argue that the 9th Circuit's decision has no basis in background principles of common law and effectively flips the burden of ensuring compliance with the law from the defendants to the plaintiffs. In its writ for Cert. Brandy Melville argues that the issue is whether the defendant must know or have reason to know to trigger such liability. In particular, is contributory trademark liability limited solely to a defendant's knowledge of and failure to redress specific instances of infringement or infringers, as the 9th Circuit holds? Or does it extend to a defendant's knowledge that it is assisting infringement of the plaintiff's trademark and fails to take reasonable steps to stop such assistance as the Second and 10th Circuit holds in.Jamie:
As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Cases Discussed: Jack Daniels Properties v. VIP Products Rogers v. Grimaldi Punch Bowl v. AJ Press 20th Century Fox Television v. Empire Distribution, Inc.Show Notes:Scott:The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel's dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I'm Scott Hervey from Weintraub Tobin, and I'm joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing.Jamie:Thanks, Scott. It's good to be back after a little bit of a hiatus.Scott:Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case.Jamie:That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity's name in the title of the work.Scott:The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can't be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California's 9th Circuit.Jamie:On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test.Scott:On appeal, the Supreme Court said that the issue really was not whether the dog toy was an expressive work but rather the nature of the use of Jack Daniel's mark by VIP products. The Supreme Court found that VIP's use of the marks, while humorous for sure, was for the purpose of serving as a source identifier, trademark use. In other words, the Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it's also used to perform some expressiv...
Fruity Pebbles failed to attain a trademark for the various colors of its cereal. Scott Hervey and Jessica Marlow discuss the TTAB's decision to reject the trademark application on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:A trademark examiner refused to register a trademark for the various colors that make up the colors of Fruity Pebbles Cereal on the grounds that the proposed color mark fails to function as a trademark. The applicant, Post Foods, could not stomach the refusal, and it appealed it to the Trademark Trial and Appeal Board. On January 4, 2024, the TTAB upheld the examiner's refusal. This case exemplifies the difficulty of securing a color trademark. And there's some other takeaways, important takeaways, too.We're going to discuss this on this next installment of The Briefing by Weintraub Tobin. Welcome back to The Briefing. I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by my law partner, Jessica Marlow. Jessica, welcome back to The Briefing.Jessica:Thank you. Happy to be back.Scott:So, Jessica, I know that you're a fan of fruity pebbles, right?Jessica:I am.Scott:Okay.Jessica:At all ages.Scott:Yeah, this case is right up your alley. So Post Foods applied to register a trademark for the various colors that make up the colors of Fruity Pebble Cereal. Understanding just how difficult it would be to register the color mark, the application included a declaration from the applicant's counsel supporting the two-f claim, which is a claim of acquired distinctiveness and allegations of long use, extensive advertising and, unsolicited media coverage and significant product sales. Supporting this claim of acquired distinctiveness. The examining attorney refused to register the mark because it consisted of a nondistinctive product design or nondistinctive features of a product design that are not registerable on the principal register without sufficient proof of acquired distinctiveness. And while the applicant's two-f claim and all the evidence that the applicant submitted in support of the two-f claim was an attempt of establishing acquired distinctiveness, the trademark examiner said that the section two-f claim showing was insufficient to demonstrate acquired distinctiveness.Jessica:Right. And in response to the office actions, the applicant submitted additional evidence of the mark's acquired distinctiveness, including the results of a consumer survey, long use of the mark, significant advertising expenditures and sales revenue, extensive media coverage, and customer statements. Despite all of this, the examiner found the additional evidence insufficient to show acquired distinctiveness and continued to refuse registration on the grounds that the mark failed to function as a trademark. Post appealed this refusal to the TTAB.Scott:Now, color marks are never inherently distinctive when used on products or on product designs. Where a color mark is not functional, it may be registered on the principal register if it is shown to have acquired distinctiveness. The TTAB noted that the burden of proving that a color mark has acquired distinctiveness is substantial there are six factors that are considered in determining whether a color mark has acquired distinctiveness, and those six factors are the association of the trade dress with a particular source by actual purchasers, and usually that's measured by customer surveys, the length, degree, and exclusivity of use the amount and manner of advertising the amount of sales and the number of customers, intentional copying and unsolicited media coverage of the product embodying the mark. No single factor is determinative, and all six factors are to be weighed together in determining the existence of secondary meaning.Jessica:In response to the evidence submitted by the applicant, which included product history and length of us...
The FTC recently made changes to its guide concerning the use of endorsements and testimonials in advertising. Scott Hervey and Jessica Marlow discuss these changes and their expected impact on the influencer marketing industry in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:It's a new year, and some changes are in place for those in the influencer marketing business, whether it's on the brand side or on the talent side. We'll be covering recent changes to the FTC's guide concerning the use of endorsements and testimonials in advertising on this installment of The Briefing by Weintraub Tobin. Happy New Year, and thank you for tuning in to today's installment of The Briefing.I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by a first-time guest to The Briefing, my law partner, Jessica Marlow. Jessica, welcome to the briefing.Jessica:Thank you, Scott. Happy to be here.Scott:So, Jessica, can you give us a little background on the FTC's involvement in endorsements and testimonials and the endorsement guide?Jessica:Absolutely. So, the FTC has the authority to investigate and bring cases related to endorsements made on behalf of an advertiser under section five of the FTC Act, which generally prohibits deceptive advertising. The endorsement guide is intended to give insight into how the FTC perceives various marketing activities involving endorsements and how the FTC's acts prohibition against deceptive advertising might apply to those particular activities. The guides do not have the force of law, but they are considered to reflect safe practices, meaning that if your marketing activities are inconsistent with the guides, that could result in law enforcement actions alleging deceptive advertising, which could include fines or restitution.Scott:That's a great summary. So, I understand that the guides have been around since, believe it or not, 1979, with the biggest update occurring in 2009, which addressed bloggers. Remember those celebrity endorsers and UGC user-generated content. Since then, the guides have continued to be updated to address the evolution of social media advertising. So, what's new? Or what's new in this most recent update to the guide?Jessica:Well, the FTC has provided some new guidance on what is an endorsement and who is an endorser. The historical definition of endorsement is any advertising, marketing or promotional message for a product that consumers are likely to believe reflects the opinions beliefs finding experiences of a party other than the sponsoring advertiser. So, the FTC has now included tags and social media posts in the list of things that can be considered.Scott:Endorsement and the FTC's position on who is an endorser. Now that changes. A reflection of the proliferation of AI influencers. The FTC now defines an endorser as that which quote appears to be an individual, group or institution. The FTC did make it clear that this language does not just apply to virtual or fabricated influencers. It also applies to writers of fake reviews and nonexistent entities that purport to give endorsements. So, let's talk about something that I'm sure everybody loves talking about. That's liability.Jessica:Oh, yes, liability. So, let's dive into that a little bit further. Everyone likes talking about how they can be sued. So, the previous language about advertiser liability said that advertisers are subject to liability for misleading or unsubstantiated statements made through endorsements. When there is a connection between the advertiser and the endorser, the FTC has deleted the wording. When there is a connection between the advertiser and the generally, there's a connection between the advertiser and the endorser because it is, after all, a marketing or promotional message. However, the FTC has pointed out that a connection is not always needed for an advertiser to be lia...
While iconic catchphrases from TV and film can hold significant equity, protection of them can be spotty. Scott Hervey and Tara Sattler talk about the protectability of short phrases on this archive episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:“Show me the money.” “Who are you going to call?” “Go ahead, make my day.” These are a few iconic phrases with significant equity, but protection of catchphrases like these is spotty. We're going to talk about the protectability of short phrases on this next installment of The Briefing by Weintraub Tobin. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by my partner, Tara Sattler. Tara, thank you for joining us.Tara:Thanks for having me, Scott. Glad to be here.Scott:So, Tara, we deal with this quite a bit. Iconic short phrases that come up usually in script search reports. Now, these phrases are worth their weight in gold, and the creators of these short phrases would probably like to prevent others from using those phrases under any circumstances. But that's not always the case.Tara:Yeah, you're right, Scott. So let's first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under copyright law, and that isn't the case.Scott:That's right. Short phrases are not protectable under U.S. copyright law. According to a copyright office circular, short phrases such as slogans are unprotectable because they contain an insufficient amount of authorship, no matter how creative or catchy they may be. The copyright office will not register short phrases, even if they're novel, distinctive, or lend themselves to a play on words.Tara:And if a work is not protectable under copyright, then it cannot be the subject of a copyright infringement claim. But that doesn't mean that all uses of a third party's short phrase are always okay.Scott:That's right. While the quotation of a short phrase in books or in movies may not be actionable, the use of let's get ready to rumble in connection with the sale of goods or services could certainly bring a lawsuit.Tara:It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for "let's get ready to rumble" and has been quite active in policing its use.Scott:He's been very active in policing its use. Trademark protection is the best form of IP protection for such short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and they're used in connection with goods or services.Tara:Just do it is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie?Scott:Well, if it's a quote like ET phone home, that could be protectable for merchandise but not likely for the movie itself.Tara:Yeah, that's right. And the same applies to may the force be with you.Scott:The problem that one may encounter is when is a short phrase not a short phrase? Right. When does it become longer material such that there's a sufficient amount of authorship and thus protectable under copyright law? I like to think that if it's more than a sentence or two, that's when there's enough authorship that it's protectable under copyright law.Tara:I would agree with that. And I also think it matters what is included in those sentences, because another element that the copyright office considers in what material can be protected by copyright is originality.Scott:Right. But we all know from the FIS case that the organization of a telephone book can be sufficient to meet that level of originality. So it can be a low threshold. Obviously, if it's the same words over and over again for four sentences,
In the case of Martinez v. Zoom Info Technologies, the Ninth Circuit addressed the "Public Interest" exemption to California's anti-SLAPP law. Scott Hervey and James Kachmar talk about this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Show Notes:Scott:The 9th Circuit was recently asked to address the public interest exemption to California's anti-SLAPP law in a proposed class-action lawsuit brought by a plaintiff whose photo and personal information were used without her consent to advertise subscriptions to the website Zoom info. The case is Martinez v. Zoom Info Technologies. My colleague James Kachmar recently wrote an article exploring the interesting substantive and procedural issues concerning the interplay between one's intellectual property rights and California's anti-SLAPP law that arose in this case. James is joining me today to talk about this case on this installment of The Briefing by Weintraub Tobin.James, welcome back to The Briefing.James:Thanks for having me. Scott.Scott:James, you wrote an extremely insightful article about the holding in Martinez versus Zoom Info Technologies, Inc. Can you give us some background on the case?James:Sure, Scott. Zoom Info is a website. It boasts a database of approximately 125,000,000 business professionals and contains their relevant information. When someone searches for a person or a business person, either through a web search or through Zoom Info's website, they can view a teaser profile of Zoom Info with some information about that person, such as their photo, maybe some limited business information, but most of the information is redacted. This teaser profile then contains the subscription buttons that invite the viewers to subscribe to Zoom info for a fee to access more information about that person and do other searches. The plaintiff in the case, Kim Martinez, is a political and legislative director of a labor union representing California public sector employees. Zoom Info has a profile dedicated to her that includes information regarding her job title, her employment at the union, contact information, and names of several of her business colleagues. Her teaser profile included options for a viewer to subscribe to Zoom Info, including, apparently, an option for a $10,000 annual subscription. Ms. Martinez alleged she never used Zoom Info and had not consented to the use of her profile by Zoom Info for marketing purposes.In September 2021, Ms. Martinez filed a lawsuit against Zoom Info in federal court on behalf of herself and a proposed class of California citizens whose profiles might have been used without their consent, like hers. She claimed that Zoom info violated California law, particularly the right of privacy statute, by unlawfully profiting from her intellectual property of herself and the class. Members, such as the use of her name, photo and employment information and Zoom.Scott:Info responded to this filing by filing a motion to dismiss under California's anti-SLAPP laws, correct?James:Yes. It filed two motions, a motion to dismiss saying that the lawsuit had no merit, and a motion to strike under the anti-SLAPP law in California. California's anti-SLAPP laws, designed to protect against lawsuits brought primarily to suppress free speech and petition rights while encouraging participation in matters of public significance. The district court denied Zoom Info's motions, including the motion to strike under the anti-SLAPP, which led Zoom Info to file an immediate appeal to the 9th Circuit.Scott:Now, California's anti-SLAPP law includes several exemptions or exceptions where the anti-SLAPP statute may not apply. These exemptions are designed to ensure that the law is appropriately applied in cases where there are legitimate concerns or disputes that go beyond free speech and public participation. If the alleged conduct falls under one of these exem...
Country singer Andy Stone, A.K.A Vince Vance, has renewed his lawsuit against Mariah Carey, which claims that her holiday hit 'All I Want for Christmas Is You' infringes the copyright of his song with the same name. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Show Notes:Scott:Andy Stone, known professionally as Vince Vance, is suing Mariah Carey and Sony Music Entertainment for copyright infringement. Vance claims that the decades-old Christmas hit ‘All I Want for Christmas is You’ infringes his 1989 song ‘All I Want for Christmas is You.’I'm Scott Hervey with Weintraub Tobin, and I'm joined today on this holiday edition of The Briefing by my partner Tara Sattler to discuss this Christmas-themed copyright infringement dispute on this next installment of The Briefing by Weintraub Tobin.So, Tara, I think nothing rings in the holiday like a good copyright infringement lawsuit.Tara:Yeah, who doesn't want to spend the holidays with their lawyers in court?Scott:I know I certainly do. So, Tara, according to the complaint, Stone and his co-writer Troy Powers claim that in 1989, they co-wrote a country music hit also titled ‘All I Want for Christmas is You.’ That song was recorded by Stone's band Vince Vance and the Valiants, and apparently, it went to number 23 on Billboard's Hot 100 airplay list. He claims that he has performed this song over 8000 times in concerts across 20 countries. He also claims that this song was licensed by Kelly Clarkson, who recorded her version of it in 2021.Tara:In the complaint, Stone alleges the unique linguistic structure of his song was copied and that his song is about a person disillusioned with expensive gifts and seasonal comforts, wants to be with their loved ones at Christmas, expresses that wish to Santa, and that the loved one and unnamed you standing under the Christmas tree would be a dream come true. Stone also identifies the phrase 'All I want for Christmas is You' as an element that was infringed. Lastly, the plaintiff claims that similarities in the melody support its claim.Scott:So, let's take a look at these claims and see how Carey and her team may respond and also how a court, right here in the Central District of California, may analyze the plaintiff's claims. So, as we know, a court will analyze the complaint by applying the extrinsic test, which, as we've discussed before, is used in the determination of substantial similarity. After the plaintiff has identified specific criteria that it alleges to have been copied, the court separates the unprotectable elements, such as facts or ideas, from those elements that are protectable. And then it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the plaintiff's work. So, let's look at two of the elements the plaintiff identifies as being infringed: the linguistic structure and the phrase 'All I want for Christmas is You.'Tara:Sure? There are many songs that express the sentiment of wanting to be with a loved one during the Christmas season, and I can think of a few songs that draw on the theme of expressing wishes to Santa, such as Ariana Grande's 'Santa, Tell Me,' 'My Grown-Up Christmas List' by Amy Grant, and even 'Santa Baby' by Earth A. Kitt.Scott:That's right, and I suspect that Carrie's team will argue that the theme of expressing the desire to be with a loved one for Christmas is too common of a theme for Christmas songs to be protectable. They will argue that the concepts of love, longing to be with a loved one at Christmas, and expressing desires to Santa are frequently present in Christmas songs, and that places them outside of the protection of copyright law.Tara:Similarly, I think that Carrie's team will argue that 'All I w...
Mariah Carey has widely been referred to by fans as the 'Queen of Christmas,' but when she attempted to trademark the title last year, it was met with pushback from another singer and songwriter who claimed to hold the same title. Scott Hervey and Tara Sattler discuss this dispute on this Holiday edition of The Briefing.Watch this episode on the Weintraub YouTube channel here.Show Notes:Scott:In 2022, Mariah Carey sought to register the trademark ‘Queen of Christmas’ for a wide variety of goods and services. Her application was opposed by a singer-songwriter who claimed she was known as the Queen of Christmas. I'm Scott Hervey with Weintraub Tobin, and I'm joined today by my partner Tara Sattler to discuss this holiday trademark dispute on this next installment of The Briefing, Christmas edition, by Weintraub Tobin.Tara, welcome to The Briefing. You have a great holiday sweater on.Tara:Thanks for having me, Scott, and so do you.Scott:So, as you know, Tara, Mariah Carey is extremely well known for her 1994 holiday hit "All I Want for Christmas is You", which has reportedly made more than $60 million in royalties alone. In 2022, her company filed a trademark registration application for Queen of Christmas, covering a wide variety of goods and services. In the prosecution of her trademark application, while the United States Patent and Trademark Office trademark examiner assigned to the application raised a few issues, the application pretty much sailed through to publication.Tara:Then, later that year, singer-songwriter Elizabeth Chan filed an opposition to the registration of the mark. The basis of Chan's opposition was likelihood of confusion. In her filing, Chan claimed that she is pop music's only full-time Christmas singer-songwriter and has herself been repeatedly dubbed the Queen of Christmas. She claims to have prolifically written, composed, and performed only original Christmas holiday-themed songs for more than a decade, and due to the notoriety that she's attained for this singular and specific achievement, Elizabeth Chan has been referred to as the Queen of Christmas by multiple media, including in 2018 by the New Yorker Magazine.Scott:In her opposition, Chan claims to have been in continuous use of the Mark Queen of Christmas since at least 2014. Chan further argued that Queen of Christmas should not be owned or controlled by Ms. Carey's company since Ms. Carey herself has admitted that she did not create the title or moniker Queen of Christmas, and she does not even consider herself the Queen of Christmas.Tara:So, with the opposition filed, Ms. Carey's company was required to file an answer by a date certain, which did not happen. As a result, a default was entered against Ms. Carey's company, and the application to register the mark was deemed abandoned by the TTAB. So Scott, do you think that Carey was being Scrooge in filing her trademark application?Scott:I don't think so. She was represented by a highly reputable law firm and she certainly could have pressed her rights if she desired to do so. Maybe she was moved by the opening paragraph in Chan's petition, which said Christmas is big enough for more than one queen. Over the decades, several recording artists have been dubbed with the nickname Queen of Christmas, including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come. I mean, whatever Carey's motivation was not to defend against the petition and to allow her application to go abandoned. This thing we can be certain of, as certain as there is a Santa Claus, that there will be more than one queen of Christmas.Tara:Well, that's a really interesting case study and example. Scott, thanks for telling us about this one.Scott:Thank you for listening to this episode of The Briefing.
Netflix has been ordered to pay GoTV Streaming $2.5 Million in damages for infringing one of its wireless technology patents. Scott Hervey and Eric Caligiuri discuss this update on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:I'm Scott Hervey with Weintraub Tobin. In a prior discussion with my colleague, Eric Caligiuri, earlier this year, we talked about a case where a federal court denied discovery requests aimed at uncovering details surrounding the financing of a plaintiff's patent litigation. That case was GoTV Streaming LLC versus Netflix in the Central District of California. In response to some inquiries and requests for further updates from some of our viewers and listeners, we wanted to give you an update on the broader outcome of this case. That's coming up on this installment of The Briefing by Weintraub Tobin.Eric, welcome to another episode of the Briefing. Thanks for joining us today.Eric:Great to be here, Scott.Scott:Eric, what can you tell us about what's happened in the GOTV streaming versus Netflix case since we last spoke?Eric:Well, Scott, California jury has found that Netflix did in fact, infringe one of GOTV Wireless's technology patents with its television and movie streaming platform, and found Netflix owes GOTV Streaming 2.5 million for the infringement. In the verdict, the jury said that Netflix should pay GOTV the damages in one lump sum as a penalty for infringing US patent number 898715. But the jury did find that Netflix did not infringe a second patent that was also included in the suits. Both patents generally covered methods for rendering content on a wireless device.Scott:So, 2.5 million is not really a lot of money for Netflix. But I do have a technical question for you, and maybe you might not know, based on the judgment, does the judgment include ongoing royalties? In other words, will Netflix be able to continue to use this technology if it continues a particular royalty payment? Or does that $2.5 million include ongoing use of the patent, or is this just for past use, and Netflix can't use this technology without further infringement? Do you know?Eric:Yeah. So, that judgment was just for past infringement. It was a lump sum payment. There's nothing about ongoing royalties or future payments. There's probably a bit of an open question in terms know what Netflix can do in the future, and they may have to go and license the patent. But there was nothing specific in the jury verdict about going forward. It was simply damages for past infringement.Scott:Okay, so either Netflix has to enter into a commercial deal with GOTV, or they need to come up with a technology that doesn't infringe that particular patent. Interesting. Eric, can you tell us about some of the background of this case?Eric:Yeah, sure. So GOtV first sued Netflix in October of 2022, alleging certain parts of Netflix's streaming service infringed two of its wireless technology patents. Specifically, GOTV alleged Netflix's streaming service uses the methods covered by GOtV's patents to lay up content on its app and website, like its widgets, menu buttons, photo imagery. Netflix argued in response that it had no pre-filing knowledge of the patents, and without that knowledge, there couldn't be any indirect infringement or induced infringement. Instead, Netflix argued that GotV tried to create knowledge of the patents by filing suit, sorting the patents, and then alleging inducement and an amended complaint. But, according to Netflix, in order to claim induced infringement, there has to be proof that the infringer had knowledge of the patents in suit before the complaint was filed.Scott:Interesting. So what happened next?Eric:Well, after conducting discovery, including covering some of the issues into litigation funding that we discussed last time, the jury found that Netflix did in fact infringe ...
The Supreme Court rejected a trademark infringement claim against the producers of the Quentin Tarantino film ‘Once Upon a Time… in Hollywood’ over its portrayal of the late actor Christopher Jones. Scott Hervey and Tara Sattler discuss this decision in this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Show Notes:Tara:The laws surrounding false endorsement claims in the United States are rooted in section 43 A of the Lanham Act. There's quite a bit of case law that analyzes false endorsement claims brought by celebrities who claim that a company or brand used a lookalike or soundalike to promote the brand in advertising or marketing campaigns without the celebrity's permission. Recently, the U.S. Supreme Court refused to review a California case about this exact topic. This time, the case was brought by the partner of the late actor Christopher Jones concerning the popular 2019 Quentin Tarantino film ‘Once Upon a Time in Hollywood.’ This is what we will be discussing in today's installment of the Briefing by Weintraub Tobin.Scott:I'm Scott Hervey from Weintraub Tobin. Tara, thanks for joining me today. So you're right that celebrities bring these types of false endorsement claims under section 43 A of the Lanham Act relatively frequently. So, let's talk about the specific language in the Lanham Act that addresses false endorsement.Tara:That's a great place to start. Section 43 A imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol or, device, or any combination thereof, or any false designation of origin. False. Or misleading description of fact or false or misleading representation of fact, which is likely to deceive consumers as to the affiliation, connection, association sponsorship, or approval of another person's goods or services.Scott:Right. And courts have held that a celebrity's physical likeness, voice, or other unique or distinguishing characteristics does constitute a symbol or device as specified in section 43 A of the Lanham Act. So, this is the usual basis for a celebrity false endorsement claim. These types of claims often arise in marketing and advertising campaigns where a brand or a service will use a lookalike or a sound alike of a celebrity. And I've even seen cases where they've used photographs of a celebrity to market that brand. Vanna White from Wheel of Fortune and the pop culture and music icon Ariana Grande, to name just a few, have brought false endorsement claims in the past.Tara:This recent case that went up to the U.S. Supreme Court concerns the likeness and unique physical attributes of the late actor Christopher Jones. Jones was a popular actor in the 1960s, starring in both TV and movies. Jones passed away in 2014 and assigned the rights in his likeness to his partner, Paul McKenna. Sony released Quentin Tarantino's film Once Upon a Time in Hollywood in 2019. The film is loose historical fiction based in the 1950s and centers around fictional characters played by Leonardo DiCaprio and Brad Pitt. It also touches on the Manson family murder of Sharon Tate McKenna.Scott:The executor of Jones's estate brought both a false endorsement claim and a trademark infringement claim against the producers of Tarantino's film. The plaintiff cited a few examples as the basis of the claim. First, Jones's name was mentioned in Tarantino's film. Second, a television advertisement and a marquee advertisement that mentions Jones's name and one of Jones's films. Three in The Addict are shown on screen in Tarantino's film. And third, Jones was used as the inspiration for the fictional character played by Brad Pitt and Leonardo DiCaprio. While these characters interacted with commercial brands.Tara:In Tarantino's film, the trial court evaluated the merits of McKenna's claim. While evaluating the defendant's anti-slapp motion on the false endorsem...
The creator of a LEGO brick Second Holy Temple product is accusing another LEGO creator of copyright infringement for their interpretation of the same temple. Scott Hervey and Eric Caligiuri discuss this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here or read Eric's article about this case here.Show Notes:Scott:I'm Scott Hervey from Weintraub Tobin. My colleague Eric Caligiuri wrote an interesting article for The Briefing about a recent copyright ruling involving competing LEGO sets. And we're not talking about just any old LEGO set, but a LEGO Brick interpretation of the Second Holy Temple. We are going to talk about this case, the case of JBrick versus Chazak Kinder, Inc, on this installment of The Briefing by Weintraub Tobin.Eric, welcome back to the podcast.Eric:Thanks, Scott. Good to be here.Scott:Great. Can you give us a rundown of the case?Eric:Yeah, sure. Of course. The founders of Plaintiff JBrick created a LEGO brick Second Holy Temple product that was based on independent research and at least three years of studying of historical teachings. Plaintiff also consulted with various rabbis as part of the design process. According to the court, the Second Holy Temple product is a tangible, sculptural interpretation of what the Second Holy Temple may have looked like in real life, based on the written words and interpretations of Hebrew scholars and philosophers.Scott:And JBrick even went so far as to obtain copyright registrations for its Second Holy Temple product, along with the copyright registrations for the product's photographs, right?Eric:Yes, that's correct. And now the plaintiff, JBrick, alleged that the defendant's product was almost an exact replica of its own Second Holy Temple product, containing all the unique features that set JBrick's product apart from its competitors. Accordingly, JBrick filed a complaint in May of 2021, citing claims for copyright infringement and unfair competition against these defendants. The defendants responded by claiming or by filing counterclaims for non-infringement of copyright, copyright invalidity, torture's interference with prospective economic advantage, and false advertising.Scott:And let's forward to the recent court ruling. And in that ruling, the court addressed the plaintiff's motion for summary judgment on the defendant's counterclaim for copyright invalidity. So, under the Copyright Act, a copyright registration creates a rebuttal presumption that the copyright is valid. This presumption of validity may be rebutted where other evidence casts doubt on that question. So, given what we have here, given that JBrick has copyright registrations, the burden it shifted to the defendant to come forward with evidence that the works in question were copied from the public domain.Eric:Yes, that's exactly right. So, the defendants argued that because the information concerning the Second Holy Temple is in the public domain, the plaintiff's copyrighted works are not original. As a result, the defendants contended that the plaintiff's second Holy Temple product can be copied and used in derivative works. The defendants further argued that a historically accurate replication does not constitute a new and original work.Scott:So I can see that Eric being a fairly compelling argument. How did J Brick respond to this?Eric:The plaintiff responded that there's no evidence to support the defendant's depiction of the Second Holy Temple in the public domain, that there's no evidence that plaintiff's depiction is a historically accurate replication because the Second Holy Temple was destroyed almost 2000 years ago and there are no images from before when the building was destroyed. In order to create the Second Holy Temple product, the plaintiff had to read numerous textual descriptions and translated words into a 3D sculpture, further supporting its claim. Originality.
The Supreme Court recently heard oral arguments in the case of Vidal v. Elster to determine whether the USPTO’s refusal to register the trademark “Trump Too Small” violates the applicant's First Amendment rights. Scott Hervey and Eric Caligiuri discuss this case on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here.Show Notes:Scott:Today, November 1, 2023, the Supreme Court will hear oral arguments on whether the Trademark Office's refusal to register the trademark “Trump Too Small” on the grounds that it violates Section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual's consent violates the applicant's First Amendment rights. We are going to talk about this case on this installment of The Briefing by Weintraub Tobin. The case is Vidal v. Elster. The facts are relatively simple. Elster sought to register the mark "Trump Too Small" for T-shirts. The USPTO refused to register the mark based on section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual's consent. Elster appealed this refusal to the Federal Circuit, where Judge Timothy B. Dyke held for a unanimous panel that the government's interest in protecting the privacy and publicity rights of President Trump did not outweigh Elster's First Amendment right to criticize that public figure.Eric:USPTO suspended the examination of applications of trademarks that cover phrases that are critical of government officials or public figures and petitioned the Supreme Court for review?Scott:That's right. The question for review by the Supreme Court is whether the Section Two C Bar of the Registerability of trademarks that identify a particular individual without their consent, including those that are critical of government officials or public figures, is a condition of a government benefit, the trademark registration, or a restriction on speech.Eric:So let's talk about this in light of Matal vs. Tam, which struck down a ban on trademarks that may disparage groups of people, which included marks that incorporated racist or demeaning terms on First Amendment grounds, and also Iancu v. Brunetti that invalidated a ban on profane or lewd trademarks, also on First Amendment grounds.Scott:That's a good point, Eric. In its petition to the Supreme Court, the USPTO distinguished these two cases from this instant case. The USPTO argued that the restrictions at issue in Tam and Brunetti were viewpoint-based restrictions. The USPTO contends that Section Two C is viewpoint neutral, meaning it doesn't matter whether the application is for a mark that is critical of a live person, complimentary of a live person, or neutral. If the mark contains the name of a live individual, it can't be registered without their consent under section two C.Eric:So, Scott, putting aside the argument that Section Two C is a viewpoint neutral, do you think that the trademark Office's refusal to register Chill's political speech?Scott:I don't remember. Registered trademark is a protectable right. So what happens if this applicant was granted registration? Then, others who want to express a similar political sentiment on a T-shirt or a bumper sticker would be prohibited from doing so. The granting of a trademark registration to Marx that includes political criticism of notable figures would actually limit that kind of speech. Specifically, the office stated that it is the registration of marks like the respondents, not the refusal to register them, that would chill such speech.Eric:Thanks, Scott. Very interesting. Be sure to update us when the Supreme Court issues a ruling.Scott:I certainly will. Thank you for listening to this episode of the Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe,
Thomson Reuters sued Ross Intelligence for using its content to train its AI technology. Scott Hervey and Tara Sattler talk about this copyright dispute on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:Thompson Reuters, the provider of the Westlaw Legal Research Platform, sued Ross Intelligence for copyright infringement based on Ross's use of Westlaw content to train Ross's IP technology. This court ruling on a motion for summary judgment may provide guidance for future similar cases, and it even provides some additional guidance into the application of a post-Warhol fair use defense. We're going to talk about this case on the next installment of The Briefing by Weintraub Tobin. These are the basic facts underlying this lawsuit. Ross is an AI legal startup. Ross hired a subcontractor to create memos with legal questions and answers. The questions were meant to be those that a lawyer would ask, and the answers were direct quotations from legal opinions. Those memos were used to train Ross's AI tool. Thompson Reuters contends that these questions were essentially Westlaw case Headnotes. Ross denies that the Westlaw Headnotes were copied but also raises a fair use defense. As the case went forward, both sides moved for summary judgment on Ross's fair use defense. The court denied the party's motions for summary judgment on Ross's fair use defense, but there are a few points in this opinion that may shape the way future AI training cases play out.Tara:Before we get into the analysis of Ross's fair use defense, the court spent a significant amount of time talking about the scope of Westlaw's copyright. Westlaw's copyright extends to its Headnotes and its arrangement of the Headnotes and opinions, but its copyright does not extend to the opinions itself.Scott:That's right, and the reason the court spent so much time talking about the scope of Westlaw's copyright was because Ross challenged Westlaw's copyright claim in the Headnotes. Ross claims that the Westlaw Headnotes follow or closely mirror the language of the judicial opinions. And if a Headnote merely copies a judicial opinion, it's not copyrightable. But if it varies more than a trivial amount, then Westlaw owns a valid copyright. The court found that this leaves a genuine factual dispute about how original the Headnotes are. If the Headnotes are mere regurgitation of parts of an opinion, this will severely impact the strength and the extent of Westlaw's copyright case and Westlaw's copyright in its whole, including in the Headnotes. And it also goes to whether Ross was copying the Headnotes or the opinions themselves.Tara:So, how do you see this applying to other copyright cases involving AI training?Scott:Well, this analysis is part of the extrinsic test, which is used in the determination of substantial similarity after the plaintiff has identified specific criteria which it alleges have been copied. The court separates the unprotectable elements, such as facts or ideas, from the elements that are protectable. And then, it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the protected elements of the plaintiff's work. This analysis is part of any copyright case, and it certainly will be part of an AI training case as well.Tara:Okay, so back to Ross's fair use defense, because the court finds that Ross actually copied the head notes. So fair use balances four factors: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for the copyrighted material. The first factor assesses whether the use is transformative,
A tattoo artist is suing Netflix for showing one of her tattoos in the series "Tiger King" without her permission. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:On this installment of The Briefing, we're going to talk about yet another post-Warhol fair use case. However, in this case, the Court finds the secondary use to be transformative. This case also makes me think that fair use, grounded in use as a biographical anchor, isn't quite as dead as I may have thought it is. We're going to talk about Molly Cramer vs. Netflix on this installment of the Briefing.The case is Molly Kramer vs. Netflix. It arises from a tattoo artist's lawsuit against Netflix due to the portrayal of her Joe Exotica tattoo, actually, a picture of her Joe Exotica tattoo as tattooed on her husband's arm that she posted on Facebook, and the use of this image in the first episode of the second season of Tiger King. The context of the display of this photo and the tattoo is relevant to the Court's analysis. So the opening of the episode, this is the first episode of the second season, is meant to be reflective of the popularity of Tiger King and Joe Exotica and how it spread like literal wildfire during the first half of COVID The montage shows approximately 27 TikTok videos depicting dancers dressed as Joe Exotica are wearing animal print clothing and a clip from a Trump press conference where he asks, is that Joe Exotica?Then there are about 58 seconds into the episode, an eight-way split-screen montage appears with all types of images of or relating to Joe Exotica, and this includes the photo of the tattoo in the lower left-hand corner. And this appears on screen for about 2.2 seconds. The barrage of images and videos continue on for about three minutes in total, all of which is to show how Joe Exotica, Carol Baskin, and the other cast of characters from Tiger King became a huge part of the cultural zeitgeist for that specific moment in time.Tara:So the tattoo artist here, Molly Kramer, obtained a copyright registration covering the tattoo and then sent Netflix a demand letter. The court opinion says that she demanded $10 million to settle the infringement claim.Scott:So, let's talk about that demand for a second. If, as a plaintiff in a case like this, you come out with such a huge demand number, a number that, at least as far as I'm concerned, has no relation to the amount of damages that you would likely be awarded. I think it only pushes the defendant to defend the case because it says that you either aren't reasonable or that you don't understand how damages in a copyright case are to be assessed. So, yes, I mean, Netflix has a lot of money, but it isn't handing out bags of money to plaintiffs who have a potentially defensible claim.Tara:And it seems like that's probably what happened here, because it seems that Netflix and Kramer's attorney did exchange further letters, and Kramer eventually offered to settle for $50,000 instead of 10 million. But Netflix continued to insist that their use was fair use. Kramer eventually filed a copyright infringement lawsuit, and Netflix filed a twelve B six motion to dismiss the case on the grounds that Netflix's use of the tattoo image was fair use.Scott:So, to determine whether a work constitutes fair use, courts engage in a case-by-case analysis and a flexible balancing of relevant factors. Those factors are the purpose and character of the use, including whether the use is of commercial nature or is for a nonprofit educational purpose. The second factor being the nature of the copyrighted work that's copied, the third factor being the amount and substantiality of the portion of the work that's used in relation to the copyrighted work as a whole. And the fourth factor is the effect of the use upon the potential market for or value of the copyrighted w...
Former New York prosecutor Linda Fairstein is suing Netflix over her portrayal in the limited series "When They See Us," which tells the story of the 1989 Central Park Five case. Scott Hervey and Tara Sattler discuss this dispute on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.Show Notes:Tara:There have been quite a few high-profile defamation cases making their way through the courts recently. One of those cases is Fairstein v. Netflix, a defamation case brought by attorney Linda Fairstein, the New York City prosecutor who ran the sex crimes unit and oversaw the prosecution of five African American men known as the Central Park Five, who were wrongly accused and imprisoned for a near-fatal rape in Central Park. Fairstein sued Netflix for defamation over her character's depiction in the limited series When They See US, that was released by Netflix and produced by The Streamer. Even though the case has not yet gone to trial, there have been several interesting pretrial rulings. In the most recent ruling, a federal judge in New York denied Netflix's motion for a summary judgment, which means that the case is one step closer to trial. On this installment of the briefing, we're going to talk about the recent ruling and the potential impacts that this ruling may have on the uber-popular film and television programming that's based on real events and real people.Scott:Since it has been a while since we've talked about this case, let's briefly talk through Fairstein's allegation of defamation. She alleges that she was incorrectly portrayed by actress Felicity Huffman as having a larger role in the Central Park Five's fate than was factually accurate. She mentions three specific episodes and that she is portrayed in a false and defamatory manner in nearly every scene in those episodes. Her original complaint claims that this series depicts her using her true name as a racist, unethical villain who is determined to jail innocent children of color at any cost.Tara:Decades of case law has established that in order to prevail in a defamation case, the plaintiff has the burden of proof to establish that the statements at issue were indeed false. And here, because the plaintiff is considered a public figure, the plaintiff also has to prove that the defendant acted with actual malice in making the statement at issue. While there are some other factors in defamation, these factors are the most interesting in this particular case.Scott:That's right. And the last element you mentioned, that the defendants acted with actual malice, was part of the recent ruling in the Fairstein case of Netflix's motion for summary judgment. In order to prove that the defendant acted with actual malice, the plaintiff has to prove that the defendant acted in reckless disregard for the truth. Here, we're dealing with dramatization, and courts have applied the actual malice standard to dramatized accounts of real events, often recognizing that the use of invented dialog or a condensed timeline may be necessary for storytelling and that those facts are not themselves evidence of actual malice. Here, Fairstein needed to prove with clear and convincing evidence that Netflix and the producers acted in reckless disregard for the truth when portraying her in the series.Tara:So Netflix filed for summary judgment, arguing that they did not act with actual malice. Because the filmmakers are very confident that their portrayal of Ferrise reflected the essence of truth based on their multiple trusted sources and research, including previously published books, news reports, the Ken Burns documentary, and extensive interviews with the five, their families, and their lawyers. The Court denied Netflix's motion for summary judgment, ruling that a jury could reasonably find that the producers recklessly disregarded the truth and that it is the job of a jury to evaluate all of the evidence in this case...
The Parmigiano Reggiano Consortium claims that Italy's renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. Scott Hervey and Jamie Lincenberg discuss how they plan to fight off these counterfeits on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Scott:The Parmigiano Reggiano Consortium claims that Italy's renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. And the consortium is seeking to fight off the cheap imitations through lawsuits and through technology. I'm Scott Hervey from Weintraub Tobin. I'm joined today by my colleague, Jamie Lincenberg. We are going to talk about when Parmesan cheese isn't Parmesan cheese on this next installment of the Briefing by Weintraub Tobin. For those who may not know, Parmigiano Reggiano traces its history back to the Middle Ages. In 1996, the European Union recognized a protective designation of origin, or a PDO, for Parmigiano Reggiano. According to the PDO, this cheese can only be produced in a small geographic area of northern Italy, which includes Parma and Reggiano. A PDO designation is used for agricultural products that traditionally have been produced in a particular geographic region. When used on a product, the PDO designation guarantees that the food product originates in that specific region or follows a particular traditional production process.Jamie:If I'm recalling correctly, there was a legal issue involving a challenge to Germany permitting the sale of cheese branded as Parmesan, but it didn't meet the PDO designation requirements. Germany argued that Parmesan was a generic term for a type of cheese often grated over food and could not be called uniquely Italian. A European Court of Justice, hearing the dispute, finally held that Parmesano Reggiano is the only type of cheese that can be called Parmesan within Europe and that Parmesan is not a generic term.Scott:That's right. And that's why when you go to Italy or other members of the European Union when you buy Parmesan, you're buying Parmesan or Reggiano. But that ruling and the PDO is only binding within the European Union. Now, the consortium is taking steps to try to prevent the sale of what it calls counterfeit Parmesan cheese outside of the European Union. This includes filing various certification marks with trademark offices throughout the world, which includes the United States. Under the Trademark Act, a certification mark is used to certify regional or other origin, material, motive, manufacture, quality, accuracy or other characteristics of goods or services or that the works of labor on the goods or services was performed by members of a union or other organization. With regard to the certification mark, Parmesan or Reggiano, it certifies that the cheese that is branded Parmigiano Reggiano originates in the Parma Reggiano region of Italy.Jamie:So what about Kraft? We all know that green can of Kraft Grated cheese. I assume Kraft has the right to use that mark.Scott:Kraft does have various registered trademarks in the US. Covering its product, but the consortium seems to be fighting Kraft's use of Parmesan. Last year, the consortium filed the equivalent of an opposition with the Australian Trademark Office challenging Kraft's application for its Parmesan cheesemarks in Australia. The consortium argued that Kraft's use will confuse consumers. Kraft argued that the term Parmesan is generic for a certain style of hard cheese Kraft's position that Parmesan is generic for a certain style of hard cheese is supported by the fact that Kraft has disclaimed the term parmesan in its trademark applications in and outside of the United States.Jamie:A mark owner trying to register its mark is required to disclaim the right to use a word that is part of the mark when that word is either descriptive or generic. The reason behind this is that merely descriptive or gen...
Amazon is suing two social media influencers for promoting the sale of counterfeit luxury goods on the platform. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Jamie:Last week, Amazon.com, Seattle-based tech and e-commerce giant, and its counterfeit crimes unit launched lawsuits in Seattle federal court against two social media influencers and their coconspirators, accusing the defendants of using their profiles to promote, advertise, and facilitate the sale of knockoff luxury brand products as part of a scheme with third-party counterfeit sellers. I'm Jamie Lincenberg of Weintraub Tobin, and we'll be joining my colleague Scott Hervey to talk about this case on today's episode of The Briefing.Scott:Thank you for joining me today, Jamie. Can you provide us with a quick recap of the lawsuits?Jamie:Sure. In the filed complaints, Amazon Alleges that Influencers Ashley Howett and Cameron Russell posted links on Instagram and other social platforms to direct their followers to dupes of Prada, Hermes, Chanel, Louis Vuitton, Christian Dior, and other designer accessories through hidden links leading to seemingly generic product listings in the Amazon store. The lawsuits say that both influencers collaborated with a series of retailers on, per the complaints, sophisticated campaigns of false advertising in an attempt to evade Amazon's counterfeit and infringement detection tools. Amazon alleges that both influencers use the same CD method to avoid getting caught through social media posts. The influencers make it very clear that they are promoting fake versions of the luxury brand items but then direct their followers to product listing pages in the seller's Amazon stores, where the items appear generic with blurred logos or pixelated images. Amazon's complaint against how it says that she openly acknowledged that the products were fake, informed her followers that they would receive products bearing luxury brand trademarks, and urged them to order the products before Amazon could take down the listings. According to the lawsuit against how Amazon, investigators ordered some of the products that she advertised and confirmed they spore the stolen brand names and logos.Scott:Both Howet and Russell, of course, received commissions for sales via the links they shared on their social media channels.Jamie:Yeah. The crux of the case against the influencers there are a number of charges against the manufacturers of the counterfeit goods, which are allegedly Chinese manufacturers located in various provinces of China. But the crux against the influencers is 15 USC. 1125 A, which is part of the Lanham Act. And that statute prohibits the use in commerce of any mark or false designation of origin, which can be a designation of the manufacturer in connection with goods that are false. Or misleading and which A are likely to cause confusion or to cause mistake or to deceive as to the affiliation, connection, or association of such person with another person or as to the origin, sponsorship, or approval of his. Or her goods, services, or commercial activities by that other person or b in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities. The lawsuits accuse the influencers of contributory violations of this statute. The complaint alleges that the influencers' liability stems from their knowing, facilitation, and assistance in the sale of counterfeit and infringing products offered by the manufacturers. But, Jamie, like you said, all of the Influencer social posts admitted and acknowledged that the products were counterfeit.Scott:The Influencers did not try to hold the products out as legitimate. And I'm curious about this from a legal standpoint.Jamie:Yeah, Scott, I am, too.
A recent article in The Hollywood Reporter explores TV and movie studios' potential use of AI for generating scripts. Scott Hervey and Jamie Lincenberg discuss this and other statements in the article on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Scott:An August 23rd article in The Hollywood Reporter had the title, “Studio’s Offer to Writer May Lead to AI-created Scripts that are Copyrightable.” The article acknowledged that copyright law doesn't recognize works solely created by artificial intelligence, but the article theorized that by incentivizing writers to participate in the creation process, studios may have a better shot at getting that work protected. We are going to dissect some of the statements made in this article in light of the recent ruling by the D.C. District Court that AI works are not entitled to copyright protection on this installment of The Briefing by Weintraub Tobin.Let's set the stage with a recent ruling by Judge Howell in the lawsuit brought by Stephen Thaler against the Copyright Office based on the Office's rejection of his application to register their work. A recent entrance to paradise. The work was created by an AI technology called Creativity Machine and was submitted for copyright registration in 2018 by Stephen Thaler as a work made for hire, in which Thaler listed the Creativity Machine as the author and Thaler as the copyright owner. In his application, Thaler left a note from the Office stating that the work was autonomously created by a computer algorithm running on a machine, and he was seeking to register his computer-generated work as a work for hire as the owner of the Creativity Machine.Jamie:We previously covered the Copyright Office's rejection of Thaler's application in March of last year. Basically, the Copyright Office rejected Thaler's application because it lacked the human authorship necessary to support a copyright claim. Thaler appealed the rejection to the District Court for the District of Columbia, and the Court upheld the rejection of Thaler's application, holding that human authorship is an essential part of a valid copyright claim.Scott:Right. The single legal question before the Court was whether a work generated autonomously by a computer falls under the protection of copyright law upon its creation. The Court acknowledged that copyright is designed to adapt with the times and that copyright law has proven malleable enough to cover works created with or involving technologies developed long after the traditional media of writings memorialized on paper. But underlying that adaptability and that malleability has been a constant understanding that human creativity is at the core of copyrightability, even as that human creativity is channeled through new tools or into new media.Jamie:The Court cited the 1884 Supreme Court case of Borough Giles Lithographic Company versus Serenay, which upheld the constitutionality of an amendment to the Copyright Act to cover photographs. In that case, the Supreme Court reasoned that photographs amounted to copyrightable creations of authors despite being issued from a mechanical device that merely reproduced an image of what is in front of the device because the photographic result nonetheless represented the original intellectual conceptions of the author.Scott:The Court said that at its founding, copyright was conceived of as a form of property that the government established to protect. It was understood that recognizing exclusive rights in that property would further the public good by incentivizing individuals to create and invent the act of human creation and how to best encourage human individuals to engage in that creation and thereby promote sciences and the useful arts was and continues to be central to American copyright from its very inception.Jamie:The Court then cited to the numerous cases that stood for the pro...
An Illinois judge rejected an infringement claim brought by rapper Gutta, alleging that a song released by hip-hop artist Future infringed his rights. Scott Hervey and Jamie Lincenberg talk about this dispute on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here. Show Notes:Jamie:On August 25, 2023, the U.S. District Court for the Northern District of Illinois rejected an infringement claim brought by rapper Dequan Robinson, otherwise known as Gutta, alleging that a song released by hip-hop artist Future infringed his rights. We are going to talk about this case and why the court dismissed Robinson's claim on today's episode of The BriefingI'm Jamie Lincenberg of Weintraub Tobin and I'm joined today by my colleague Scott Hervey.Scott:Hi Jamie, thanks for having me today. Looking forward to diving into this case. So first, why don't you provide us with a quick recap on the lawsuit.Jamie:So, on Friday, a Chicago federal court dismissed the copyright infringement lawsuit that was brought in 2021 against popular Atlanta hip hop artist Future by Virginia rapper Dequan Robinson, who, as I said, performs as Gutta. He alleged that Future's song, ‘When I Think About It’, released in 2018, ripped off his own 2017 song ‘When You Think About It’ to make a hit of his own and claiming that he had emailed a draft of his song to future's producer a year before the song was released. His complaint alleged that they created the song in the image of his song, likening his case to the famous Blurred Lines lawsuit in which Pharrell Williams and Robin Thicke's very popular track Blurred Lines was found to have infringed Marvin Gaye's iconic ‘Got to Give It Up.’ The lawsuit raised arguments that the works were substantially similar due to the following factors one, similar thematic content of guns, money and jewelry two, that they were both in the key of e and three, that they had the same chorus and verse structure. The lawsuit also named some of future's companies, his producer and Sony Music Entertainment as defendants. The suit sought injunctive relief damages, a running royalty and litigation costs, among other relief.Scott:Future’s team filed a motion to dismiss, arguing that Robinson did not adequately allege the protectable elements of ‘When You Think About It’ were copied. They argued that both the songs repeat exceedingly commonplace phrases when you think about It and when I think about it, and both include commonplace themes of guns, money and jewelry.Jamie:That's right. Then Robinson's team filed an opposition to the motion, citing that there are a lot of questionable similarities between the two works and that the lyrical theme, content, structure and rhythm are identical. But Judge Martha Picold of the District Court of the Northern District of Illinois disagreed, ruling that it didn't matter whether Future had copied Robinson's song because the material he allegedly borrowed, even if he did so, was not covered by copyright in the first place.Scott:That's right. Citing other examples, including tracks from Biggie, Kanye West and Neil Young. That's an interesting trio, if you think about it. She notes that thematic elements that are frequently present in certain genres of music place them outside of the protections of copyright law. This was the same argument that won the dismissal of the lawsuit against Kanye West over the lyrics what doesn't kill you makes you stronger. In his 2017 hit track Stronger, Judge Picold writes that quote first and most critically, the phrase quote when you think about it or quote when I think about it is not entitled to copyright protection. It's a fragmentary expression that is commonplace in everyday speech and ubiquitous in popular music. And we have previously discussed the lack of copyright protection for short phrases. According to the Copyright Office, short phrases such as slogans are uncopyrightable because t...
A photographer is suing a real estate media site for copyright infringement after publishing several of his photos without permission. Scott Hervey and Jamie Lincenberg discuss this case and explain how media companies can handle similar situations in a post-Warhol world on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Show Notes:Scott:One of the recent copyright infringement cases post the Supreme Court's decision in Warhol is Brandon Vogts, I hope I'm pronouncing that correctly. Brandon Vogts vs. Penske Media Corporation. This case involved the display of Vogts photographs in connection with various articles appearing on Penske's Dirt online media site. I'm Scott Hervey from Weintraub Tobin. I'm joined today by my colleague Jamie Lincenberg. We are going to take a look at this case and talk about how online media companies can deal with similar situations in a post-Warhol world, on this next installment of The Briefing by Weintraub Tobin.These are the facts of this case boots is a professional photographer who specializes in real estate photography. His clients include real estate companies, real estate agents and interior designers. The majority of these clients are real estate agents who retain Vogts to photograph a property to facilitate its sale. Dirt.com is an online news publication owned by Penske Media Corporation. Dirt publishes material on real estate transactions involving persons in the entertainment industry or prominent business persons. Dirt's articles are intended to provide a unique peek into those individuals' lifestyle. Dirt published various articles about transactions involving certain properties and used Vogts photographs in connection with those articles. Vogts eventually sued for copyright infringement.Jamie:And, Dirt advanced a fair use defense. Dirt claimed that it featured the photographs to provide readers with what he believed was a unique insight into the lifestyles of individuals who were involved in the transaction, including commentary and critique of the property featured in the photographs, and used only those photographs that Dirt Publishers believes were necessary to do so. After both parties moved for summary judgment, the Supreme Court ruled on Andy Warhol Foundation for the Visual Arts versus Goldsmith.Scott:Finding that Boots had established a prima facial case of copyright infringement, the court turned to Dirt's fair use argument. Now, to determine whether a work constitutes fair use, courts engage in a case by case analysis and a flexible balancing of four factors. Those factors are one, the purpose and character of the use, including whether such use is of a commercial nature or for a nonprofit educational purpose. Two, the nature of the copyrighted work that is allegedly infringed. Three, the amount and substantiality of the portion used in relation to the infringed work as a whole. And four the effect the use will have on the potential market for or value of the original copyrighted work.Jamie:The first factor assesses whether the use is transformative, as established in the Supreme Court case of Campbell versus Acuff Rose Music. Transformativeness occurs where the new work adds something new, with a further purpose or different character, altering the first with new expression, meaning or message right.Scott:And that has been the traditional test for transformativeness. But now the Warhol decision requires courts to ask, as part of examining transformativeness, whether and to what extent the use at issue has a purpose or character that is different from the original, and whether that different purpose supports a justification for copying. So now the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. Under the Warhol decision, a transformative use cannot be found for any use that just adds some ...
Failure to disclose certain relationships with a third party may result in significant consequences from the court. Scott Hervey and Eric Caligiuri talk about this on this episode of The Briefing.Watch this episode on the Weintraub YouTube channel here.Show Notes:Scott:In our last discussion with my colleague Eric Caligiuri, we looked into a case where a federal court denied discovery request aimed at uncovering details surrounding the financing of a plaintiff's patent litigation case. Today, we are going to discuss a case where a failure of one party to disclose certain relationships with a third party resulted in significant consequences. On this installment of The Briefing by Weintraub Tobin. Welcome to another installment of The Briefing. I'm Scott Hervey. I'm joined today by my colleague, Eric Caligiuri. Eric, thank you for joining us.Eric:Thanks, Scott. Great to be here.Scott:So, Eric, you wrote an interesting article on the case of Ventex versus Columbia Sportswear of North America. Similar to the last case we discussed, go to Streaming versus Netflix. This case, the Ventex case, deals with litigation financing and how the failure to disclose or possibly the attempt to hide critical information showing a financial relationship between two parties interested in the outcome of a certain proceeding can impact that legal proceeding. Eric, can you break down the key details of the case?Eric:Yes, absolutely. In this case, we have ventex comp versus Columbia Sportswear of North America. It centers around an inner parties dispute filed by Ventex. An inner parties dispute, or an IPR, is a proceeding before the Patent Trial and Appeal Board of the USPTO. Basically, it's an administrative proceeding similar to a district court litigation similar to litigation, except a little more streamlined and presided over by an administrative law judge at the PTAB. And basically, the only remedy is to consider the validity of a patent. So, essentially, what happens is someone who may think that either a patent is invalid or patent has been asserted against them, they can file a challenge to that patent at the PTAB, and that dispute is called an IPR. In this case, the PTAB found that Ventex failed to disclose a variety of information asserting Ventex's relationship with a company called Sirius Innovative Accessories, Inc. In response to discovery request by Columbia, the PTAB found that this failure to disclose led to unnecessary delays in the proceeding. As a result, the PTAB dismissed the proceeding and awarded over $32,000 in sanctions to Columbia, who was the patent owner. Columbia's motions for sanctions was based on a contention that Ventex petitions were time-barred, meaning they didn't file the IPRs in time, and therefore the PTAB should not have initiated the IPRs to begin with.Scott:So, Columbia's argument revolved around Ventex's nondisclosure of its relationship with Serious Innovative Accessories, which Columbia argued was both a proxy of Ventex and a real party in interest. The board agreed with Columbia, leading to dismissal of Ventex's petitions and the termination of the IPRs and sanctions against Ventex. So what was the crux of Columbia's argument in terms of the relationship between Ventex and Sirius?Eric:Yeah. So Columbia relied heavily on two prior agreements, a supplier agreement from 2013 and a 2016 exclusive manufacturing agreement. These documents illustrated a preexisting business relationship between Ventex and Sirius, suggesting that they shared a mutual interest in invalidating the patents. Columbia argued that payments tied to the Exclusive Manufacturing Agreement suggested a link between Sirius and the funding of the IPRs, which Ventex may have had difficulty funding on its own. This demonstrated a strong connection between Ventex and Sirius, essentially implying that Ventex was acting as a proxy for Sirius in these proceedings.Scott:
In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:The trademark dispute in Blue Mountain Holdings versus Blitz Nutraceuticals ended with the 11th Circuit upholding the finding by the US. District Court for the Northern District of Georgia that Lighthouse Enterprises had issued a naked license to Blue Mountain, which covered the trademark that was the basis for the dispute. We’re going to talk all about the naked license on this installment of The Briefing by Weintraub Tobin. Thanks for joining us today. My name is Scott Hervey. I’m joined by my colleague, Eric Caligari. Eric, thanks for joining us today.
Eric:Thanks for having me, Scott.
Scott:Eric, can you give us some background on the case of Blue Mountain Holdings versus Bliss Nutraceuticals?
Eric:Yes, of course. Lighthouse Enterprises and Blue Mountain Holdings initially sued Bliss in April of 2020 for federal trademark infringement, federal cybersquatting, and federal trademark dilution, along with some other claims. The lawsuit was based on their ownership of the trademark, Vivazen Botanicals claimed that had been selling Vivazen products since 2012 and registered the name as a trademark with the United States Patent and Trademark Office in 2017. Blue Mountain claimed that it acquired the Vivazen trademark and a 2019 purchase agreement with Lighthouse. Bliss claimed that this purchase agreement was really a license. The district court agreed with Bliss and found that the purchase agreement was really a license and that this license became a naked license when Lighthouse failed to police Blue Mountain’s use of the trademark. This resulted in the abandonment of Lighthouse’s rights in the trademark, and the 11th Circuit upheld the district court’s findings.
Scott:While this case itself is very interesting, and it’s probably far from being over, what I want to focus on today is the ramifications of the court’s finding that the transaction between Lighthouse and Blue Mountain was a naked license. A naked license refers to a situation where a trademark owner grants permission to another party to use a trademark, and that trademark owner does not maintain proper control over the quality and nature of the goods or services associated with that trademark. In other words, it’s a license that lacks the necessary safeguards to ensure that the trademark’s reputation and distinctiveness are maintained. The nakedness of a license isn’t judged by whether the licensor allows product quality to suffer. It’s whether the license or is keeping an eye on product quality, and whether, in other words, it has abandoned quality control or not. If it has, the license is naked and the trademark is abandoned.
Eric:Yeah, and if a trademark is abandoned, whatever rights the mark owner may have had in the mark are also abandoned. It’s quite a serious situation and result to avoid.
Scott:I agree. And given this, let’s talk about how to avoid the granting of a naked license.
Eric:Yeah, sure. Well, first of all, when entering into a license agreement, that agreement should be in writing, and the right agreement should fully outline the terms and conditions that the licensee must adhere to. These terms should include provisions such as quality control and the consequences of failing to meet those quality control standards.
Scott:And it’s not enough that the agreement includes proper quality control language; but it’s imperative that the trademark owner actually exercise proper control over the products or services that are associated with the trademark. This can include setting quality standards, providing guidelines, and periodically inspecting the products or services to ensure that they meet those standards. This was emphasized by the 11th Circuit’s ruling, in which it noted that the record in the case showed that Lighthouse engaged in no meaningful supervision or inspection of the products bearing the Vivazen mark.
Eric:And in exercising its quality control rights. It’s also important that there be consequences if the mark owner abjures any deviations from the agreed-upon quality standards and tries to enforce those consequences to make sure that they’re being adhered to.
Scott:Agreed. The licensing agreement should include a clause that allows the license or to terminate the license if the licensee fails to meet the agreed-upon quality standards or breaches other terms of the agreement.
Eric:Agreed. And thanks for bringing this case to our attention for highlighting the pitfalls of the naked license and ways to try to avoid that outcome.
Scott:Absolutely, Eric.
Eric:Well, that about wraps it up here. Thanks for joining us on the briefing. By Weintraub Tobin. Hope you enjoyed today’s episode. Please remember to subscribe to our podcast and to our YouTube channel.
The Federal Circuit Court of Appeals invalidated seven patents owned by an AI technology company after applying the two-step Alice test. Scott Hervey and Audrey Millemann talk about this decision on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:Scott:Under the Alice test for patent subject matter eligibility, the Federal Circuit Court of Appeals continues to strike down patents directed to abstract ideas. The case of People AI, Inc. V. Clary, Inc. was just such a case in which the Court invalidated seven patents owned by People AI. We are going to talk about this case and the Alice test on this next installment of The Briefing by Weintraub Tobin. Welcome to another episode of The Briefing by Weintraub Tobin. I am joined today by my partner, Audrey Millemann, a patent attorney who wrote an intriguing article titled a Prototypical Corporate Salesperson Is Not Patentable. We’ll be discussing the recent People AI v. Clary, Inc. Case and its implications on patent subject matter eligibility under the Alice test. Welcome, Audrey.
Audrey:Hi, Scott. How are you?
Scott:Great to have you here today, Audrey. So, let’s start by discussing the Alice test for patent subject matter eligibility. Can you explain the two-part test established by the Supreme Court in the 2014 case of Alice Corp. Versus CLS Bank International?
Audrey:Yes, I can. Patent subject matter eligibility refers to whether an invention falls within categories of subject matter that can be patentable. So that’s referred to as patent eligible subject matter and by statute. And that’s federal statute. Section 101 of Title 35 of the United States Code provides that there are four categories of patent eligible subject matter, and they are articles of manufacture, machines, processes, and compositions of matter. And there are exceptions to those categories of patent eligible subject matter which the courts have decided over the years. And they include things like natural phenomenon, laws of nature, and abstract ideas. And those things are deemed to fall within patent ineligible subject matter, meaning they are not something that can be the subject of patent protection. So, the Supreme Court in Alice in 2014 developed a test for determining whether a claimed invention falls within patent ineligible subject matter, meaning whether it is something that is not eligible for patent protection. It’s a two-part test. And under the first step, the Court examines whether the invention falls within one of those types of ineligible subject matter, meaning natural phenomena, laws of nature, or abstract ideas. And if the invention falls within one of those categories, then the Court would proceed to step two.
Under step two, the Court looks to see if there is some kind of inventive concept or something that improves the technology such that it takes it out of the patent ineligible subject matter and makes it into patent eligible subject matter. Now, this is a very complicated test, and courts have been struggling with how to apply it for years. Since it was decided.
Scott:In the People AI versus Clary case, the Court invalidated seven patents owned by People AI based on the Alice test. Can you explain the basis of that Court’s decision?
Audrey:Yes. People AI is a company that provides business analytics or software for customer relations management. So, they developed software that would take the notes and contacts that a salesperson would have. So, their notes of meetings, telephone calls, emails, and the software would automatically match it up to the particular customer that was involved. So, this was previously done by salespersons with using a pen and a notebook. And People AI developed software that would automate that process, which made it much more reliable, more accurate, so it would be less errors and much faster. And they patented that software, which basically was a data management kind of a system.
Scott:And People AI sued Clary Inc. And Set Sail Technologies, Inc. For patent infringement. Correct.
Audrey:Yes, they did. The defendants were competitors of People AI, and they sued them for People AI sued them for patent infringement of seven of their patents. The defendants then moved for judgment on the pleadings in the district court arguing that those patents were invalid because they were directed to patent ineligible subject matter, meaning abstract ideas. The district court applied the Alice test, as we’ve discussed it, and found that, yes, the patents are invalid because they are directed to abstract ideas. They’re directed to what a salesperson would do. And automating what people used to do manually does not make something patentable. The Federal Circuit, which is the Court of Appeal that addresses all appeals from patent infringement cases, affirmed the district court’s decision and held that automating that previously manual process doesn’t necessarily lead to patentable subject matter.
Scott:Now, the court’s ruling seems to emphasize the importance of an inventive concept. Can you shed some light on why the court deemed these patents as lacking such a concept?
Audrey:Well, yes, although it’s difficult because, as I said, that test is very complicated. But the decision hinged on the fact that the court believed there was no inventive concept, there was nothing in the invention that would transform and that’s a key word that the Supreme Court used that would transform patent ineligible subject matter, an abstract idea, into something that was patentable. And the Supreme Court has been very clear that simply using a computer to automate something that has previously been done manually doesn’t add an inventive concept. You need something that changes the technology or transforms it beyond merely automating.
Scott:It very interesting. So, with that in mind, what are some key takeaways for inventors and companies looking to patent their inventions after this ruling?
Audrey:Well, the key takeaway is really that companies need to be very cautious about trying to patent things that are simply transforming manual processes into automated or computer managed processes. They have to be very cautious in doing that and consider, is there something about their invention? Can they describe something about their invention that transforms what is an abstract idea into something that is more patent eligible?
Scott:And with the Alice test being used to reject patent claims during the examination process and invalidate patents in courts, how can applicants better navigate this framework to improve their chances of obtaining a patent?
Audrey:Well, the first thing they can do is to carefully analyze what their invention is, to determine if it really does fall within patent ineligible subject matter. And if it does, it may be worth considering whether one should apply for a patent at all. If the decision is made to go forward and apply for a patent in such a situation, then the goal is to try to describe the invention in such a way that there is an inventive concept, or that the invention transforms what is something ineligible into something that is eligible subject matter. And also important in that is the patent attorney who is drafting the patent application. That person has to be very careful and thoroughly drafting to make sure that they describe whatever possible inventive concepts the invention has. And also, they need to be thorough in their arguments with the Patent Office, because that prosecution of the patent is going to go on for several years. They need to be very careful in arguing to try and demonstrate that the invention does, in fact, have an inventive concept beyond simply automating a previously manual process.
Scott:Well, Audrey, thank you very much for shedding light on People AI versus Clary Inc. And the complexities of patent subject matter eligibility under the Alice test. You always do a really great job of making complex matters a little bit more understandable, and this discussion certainly helped me better appreciate the importance of inventive concepts when seeking patents. The road to patent protection will always have its challenges, but with the right approach, inventors and companies can safeguard their innovations effectively. Again, Audrey, thank you so much. It was a pleasure having you on the briefing.
Audrey:And thanks, Scott, for having me.
Scott:Well, that wraps it up for today’s episode of The Briefing by Weintraub Tobin. We hope you found this discussion interesting and valuable. Please remember to subscribe to our podcast and to our YouTube channel so you never miss an episode.
The rise of deepfakes is a growing concern within the entertainment industry. Scott Hervey and Jamie Lincenberg discuss this and the intersection between free speech and protected rights on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes: Scott: Deepfakes and AI-generated likeness are not just the concerns of striking actors. Just ask Drake, The Weeknd, and UMG, a Drake and Weeknd collaboration that busted the Internet in May of this year wasn't real. It was generated by AI and made to sound like the performers. Where is it that current write of publicity laws work? And in what situations do they fail to address the scenarios presented by Deepfakes and AI-generated images? We are going to talk about this next on The Briefing by Weintraub Tobin. Let's first identify the type of AI output that triggers the right of publicity concerns. It's visual likeness and appearances, and then it's also voices or vocal likeness. California's right of publicity statute is Civil Code section 3344, and it prohibits the use of another's name, voice, photograph, or likeness on or in products, merchandise, or goods, or for the purpose of advertising or selling such products, merchandise or goods without such person's prior consent. California also has a common law right of publicity that's a bit broader than the statute. But whereas a celebrity's likeness isn't being used on or in products, merchandise, or goods, or for the purpose of advertising or selling such goods, California’s right of publicity statute isn't applicable, really.
As for a common law claim, even though common law provides for a broader right of publicity protection than the statute, the First Amendment may prevent any recovery. Generally, a claim for common law appropriation will not stand in the case of an expressive work due to First Amendment concerns.
Jamie: So, Scott, it seems well settled that where a celebrity's likeness, whether that be visual or vocal, is used in connection with the advertising or sale of goods or services, consent of that celebrity is required. The void seems to be where that celebrity's likeness is used in an expressive work.
Scott: That's true, Jamie, and void is a good way of putting it since it's not clear that this void is a shortcoming or some type of legal failure, or rather the greater importance of the First Amendment. Take, for example, the AI Drake song. Section 114 B of the copyright act permits sound-alikes. A publication of the US. Copyright Office specifically says that under U.S. Copyright law, the exclusive rights in a sound recording do not extend to making independently recorded sound-alike recordings. Copyright protection for sound recordings extends only to the particular sounds of which the recording consists and will not prevent a separate recording of another performance in which those sounds are imitated. The imitation of a recorded performance, no matter how similar to the original, would not constitute copyright infringement, even where one performer deliberately sets out to simulate another performance as exactly as possible. To extend a state right of publicity to cover the use of a celebrity's vocal likeness in an expressive work like the A. I. Drake Song would put a law in effect that directly conflicts with the Copyright Act.
Jamie: Let's talk about New York's right of publicity statute. In particular, section 50 F of New York's Civil Rights Law, which took effect in 2021. This law addresses and prohibits certain uses of AI-generated lookalikes or digital replicas of deceased performers. The law prohibits the use of a deceased performer's digital replica in a scripted audiovisual work, as a fictional character, or for the live performance of a musical work if the use occurs without prior consent from the owner of the publicity rights in the deceased celebrity. And if the use is likely to deceive the public into thinking it was authorized...
In the case of Brandy Melville v Redbubble, a three judge appellate panel explored whether an owner of an online market place is liable for contributory trademark infringement. Scott Hervey and Jamie Lincenberg discuss this on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes: Scott: On today's episode of The Briefing, we will be taking a dive into the Willful Blindness Doctrine which is highlighted by a recent filed opinion in the case between Redbubble and YYGM doing business as Brandy Melville, in which a three-judge appellate panel discussed what legal standard the district court should apply when examining whether an owner of an online marketplace is liable for contributory trademark infringement, which is committed by artists who sell products on its marketplace. I'm Scott Hervey of Weintraub Tobin, and I'm joined today by my colleague, Jamie Lincenberg. Jamie, thank you for joining us today.
Jamie: Thank you, Scott. I'm happy to be here.
Scott: Jamie, can you provide a quick recap of the lawsuit?
Jamie: Absolutely. In 2021, Brandy Melville, a popular manufacturer of clothing, home goods, and other items, sued Redbubble for trademark violations alleging infringement of its registered Brandy Melville heart mark and La lightning mark. The defendant, Redbubble, owns and operates an online marketplace where artists can upload their own work to be printed on various products and then sold. Unlike other print on demand vendors, Redbubble outsources everything other than marketing and payment processing, so third party users upload their images, and third party manufacturers and other vendors produce and ship the ordered items. The district court had found Redbubble liable for one willful contributory counterfeiting of the heart mark and the lightning mark, two contributory infringement of those two marks, and three contributory infringement of unregistered trademarks that were Brandy Melville variations. After the jury's verdict, the district court granted Redbubble's motion for judgment as a matter of law on the contributory counterfeiting claim for the heart mark. The district court let the verdict stand for the remaining claims, and it denied Brandy Melville a permanent injunction, attorneys fees, and prejudgment interest. On Monday, the 9th Circuit appellate panel overturned much of the lower court's findings and remanded for reconsideration of Redbubble's motion for judgment as a matter of law, telling the district court to use the correct legal standard for what constitutes willful blindness, the doctrine we will explore in more detail today.
Scott: This panel's opinion vacates the district court's order granting in part and denying in part Redbubble’s motion for judgment as a matter of law, and also vacated the district court's denial of Brandy Melville's motion to permanently enjoin Redbubble from referencing, mentioning, and or using Brandy Melville, brandy Melville's registered trademarks and Brandy Melville's unregistered trademarks. In reversing the lower court with respect to Redbubble’s contributory infringement liability, the panel held that a party is liable for contributory infringement when that party continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to that infringement. So how do we determine whether a party is willfully blind to infringement?
Jamie: In agreement with other circuit courts, the panel held that willful blindness requires the defendant to have knowledge of specific infringers or instances of infringement, general knowledge of infringement on the defendant's platform, even of the plaintiff's trademarks, is not enough to show willful blindness. Without the specific knowledge or awareness of specific instances of infringement, the defendant need not search for infringement on its own accord.
Alexis Hunley v. Instagram has been referred to as one of the top copyright cases to watch this year. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes: Scott: It's been referred to as one of the top copyright cases to watch this year. The case Alexis Hunley v. Instagram. It questioned the scope and validity of the server test, a copyright doctrine that was established by the 9th Circuit and has since been rejected by a number of other courts. The 9th Circuit has spoken, and we're going to talk about this case on the next installment of the briefing by Weintraub Tobin. Alexis Hunley versus Instagram involved a potential class action claim against Instagram related to its embedding practice. The plaintiffs were two photojournalists whose photographs were featured on websites of various media outlets without a license. Hunley alleged that Instagram provided an embedding tool which allowed the photos or videos posted on an Instagram account to be simultaneously displayed on third party websites. Hunley alleged that these third parties who displayed her photos via the use of Instagram's embedding tool, committed direct copyright infringement and that Instagram was secondarily liable for infringement.
Jamie: Embedding is the process of copying unique HTML code assigned to the location of a digital copy of a photo or video published to the Internet, and the insertion of that code into a target web page or social media post enables that photo or video to be linked for display within the target post.
Scott: The lower court tossed the case, holding that the third-party media companies that displayed the photographs Time and BuzzFeed, to name a few, were not liable for direct copyright infringement, and as a result, Instagram was not liable for secondary copyright infringement. The district court concluded that the 9th Circuit's 2007 opinion in Perfect Ten versus Amazon, which established the server test, precluded relief. To Huntley to violate the public display right infringers must display copies of the copyrighted work. The district court held that the embedding websites do not store an image or video and do not communicate a copy of the image or video and thus do not violate the copyright owner's exclusive display. Right under perfect Ten, an alleged infringer displays an image in violation of a copyright holder's rights only if a copy of the image is embodied stored on a computer's server or other storage device.
Jamie: The court concluded that because Time and BuzzFeed did not store the image files on their actual servers, they were not liable for direct copyright infringement, and because there was no underlying direct infringement, Instagram could not be secondarily liable. The court invited the plaintiffs to raise their issue with the 9th Circuit if they believed the server test violated copyright law, and the photographers took the court up on its offer.
Scott: In June 2022, the photographers filed an appeal with the 9th Circuit arguing for a review of the applicability of the server test. They claimed that the server test was outdated and impractical and argued that it had been widely rejected by virtually every court throughout the country that had considered the same issue.
Jamie: In their appeal, the photographers argued that the server test is a technological loophole that did not exist when the Copyright Act was enacted by Congress, which has no support or explanation in the plain language of the Copyright Act and for which no public policy justification exists.
Scott: The photographers also argued that the District Court went well beyond the scope of applicability of Perfect Ten. Perfect Ten applied to the use of embedded images in a search engine, not third-party website publishers. The plaintiffs contended that no court has expanded the server test to apply to embedding tec...
The Ninth Circuit recently issued an opinion affirming that Zillow infringed thousands of copyrights owned by a real estate photography studio. Scott Hervey and James Kachmar discuss this case on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel, here.
Show Notes: Scott: In 2019, the 9th Circuit affirmed the trial court's judgment against Zillow Group based on Zillow's use of VHT's photographs on Zillow's Digs platform. In June of this year 2023, this case found itself back up to the 9th Circuit. I'm joined by my partner, James Kachmar, to talk about this recent decision on this episode of The Briefing You. Thanks for joining us. I'm joined today by Weintraub litigation partner, James Kachmar. James, thanks for joining us today.
James: Thanks, Scott, for having me.
Scott: Certainly, James. Let's start by providing some context for our viewers and listeners. Could you briefly explain the background of the case between VHT and Zillow Group?
James: Sure, Scott. Everyone should know what Zillow is the website with homes for sale. VHT is the largest professional real estate photography studio in the US. It is generally engaged by real estate agents and brokers to photograph homes for sale. These photos are edited, loaded into VHT's database, and then sent back to the agents and brokers pursuant to a license agreement to help promote their listings. VHT's photographs appear on Zillow's website one of two ways. First, Zillow will use these photographs as part of showing property listings on its website. Second, Zillow would feature some of these photographs on their website, Digs, to offer users or give people some home improvement ideas. VHT filed a copyright infringement lawsuit against Zillow, claiming that the photos were being used without their permission.
Scott: In the previous trial, the 9th Circuit found in favor of Zillow on most counts, but reversed the findings of fair use. Regarding the use of the photos on the Diggs website. Could you elaborate on how the court reached that conclusion?
James: Sure. The 9th Circuit in the first case, which is referred to as Zillow One, determined that Zillow had added searchable functionality on its Zigs website, which made it not a fair use of VHT's photographs. They concluded that Zillow had committed copyright infringement in doing so. However, the court in Zillow One held that Zillow was not liable for direct, secondary or contributory infringement and remanded the case back to the district court for further proceedings. This resulted in further motion practice and a second trial.
Scott: The 9th Circuit addressed the issue of copyright registration and whether VHT's claims should be dismissed due to incomplete registration. Could you explain the court's reasoning and how it applied the U.S. Supreme Court's fourth estate decision?
James: Sure. Just days before the 9th Circuit rendered its opinion in Zillow One, the US. Supreme Court issued its decision in Fourth Estate Public Benefit versus Wallstreet.com, in which it found that the registration requirement to bring a copyright infringement claim can only be satisfied when the Copyright Office has registered the copyright, not merely when the application for registration is filed by the plaintiff. When the case went back to the lower court, Zillow argued that because VHT had filed its lawsuit before the Copyright Office had registered its copyrights, the action should be dismissed. The lower court, however, found that dismissal would cause irreparable harm to VHT, especially given the extensive litigation to date, and held that excusing this requirement did not undermine the purpose of the Act's pre-filing registration requirement. The 9th Circuit, on a second appeal, agreed with the court's finding in this regard.
Scott: The Supreme Court's decision in Fourth Estate was due to what had been a split among the Circuits with regard to the requirement the p...
There is some concern that the Supreme Court's decision in Andy Warhol Foundation v. Goldsmith will harm the documentary filmmaking community. Scott Hervey and Tara Sattler discuss the implications of this case on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes: Scott: When Andy Warhol Foundation versus Goldsmith was pending before the Supreme Court, a group of prominent documentary filmmakers, including the makers of The Last Days of Vietnam, The Invisible War. Won't you be my neighbor? And RBG filed an amicus brief and claimed that the Second Circuit's proposed change to the way fair use is analyzed could, quote, devastate now that Warhol has been decided, it's clear that the way in which fair use is now to be determined will have an impact on documentarians who rely on the use of unlicensed third-party materials as part of conveying their story. We are going to talk about this on this installment of The Briefing.
We covered the Supreme Court's decision in Andy Warhol Foundation versus Goldsmith in a previous episode, but let's hit on some highlights relevant to the impact of this decision on documentarians. The decision changes the way fair use is analyzed. In determining fair use, four factors are examined. The first fair use factor examines the purpose and character of the use. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell versus Acuffro's Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether the new work merely supersedes the objects of the original creation or instead adds something new with further purpose or different character, altering the first with new expression, meaning, or message. In other words, whether and to what extent the new work is transformative.
Tara: This transformative use analysis took on great importance and often eclipsed the other fair use factors. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. If the work was transformative, it was almost always found to be fair use. The importance of transformativeness all changed with this opinion. The fact that the second work conveys a different meaning or message from the first work without more is not dispositive. Now, the focus of the first fair use factor, the purpose and character of the use, has shifted from a context-based analysis to a purpose-based analysis.
Scott: That's right, Tara. Now, the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. So now let's talk about how this decision will and will not change how documentarians can use third party footage under fair use. So documentarians frequently use third party footage in order to comment on or critique the footage itself. Section 107 of the Copyright Act provides that the fair use of a copyrighted work, including such use for purposes such as criticism and comment, is not an infringement of copyright.
Tara: At oral argument in Warhol, both Goldsmith and the US. Government agreed that commenting on the original work, criticizing it, or otherwise shedding light on the original work is the most straightforward way to establish fair use.
Scott: Right. In its opinion, the Supreme Court reasoned that where the use is for commentary or criticism, a copying of the first work may be justified because copying is reasonably necessary to achieve the user's new purpose. Also, the Court observed that criticism of a work ordinarily does not supersede the objects of or supplant the work. Rather, it uses the work to serve a distinct end.
Tara: But what about uses that are not for the purpose of criticism or commentary, but for a biographical purpose? Documentarians often use third party footage as a biographic...
The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce” occurs in the United States. Scott Hervey and Tara Sattler talk about this case on this installment of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Tara:Extraterritorial? Not quite for the Lanham Act. The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce” occurs in the United States. This is what we will be discussing on this installment of the Briefing.
Scott:We talked about the facts of this case, Abitron Austria GmbH, v. Hetronic International, Inc., and the holdings of the lower courts on an earlier episode of “The Briefing,” so Tara, why don’t you give us a quick reminder of the facts and how this case came before the U.S. Supreme Court.
Tara:Sure, Hetronic International, Inc., is a U.S. company that manufactures radio remote controls used to operate heavy-duty construction equipment. Abitron, the defendant, distributed Hetronic’s products in Europe. When the distributor relationship ended, Abitron started manufacturing their own products that were identical to Hetronic’s and that included the Hetronic trademark. The defendant sold their products with the Hetronic branding in Europe, so Hetronic sued Abitron. A jury in the Western District of Oklahoma awarded Hetronic over $100 million in damages, most of which tied to the defendants’ trademark infringement based on sales outside of the U.S. as 97% of the defendant’s sales were made “in foreign countries, by foreign companies, to foreign customers, for use in foreign countries”. On appeal to the 10th Circuit, the defendants insisted that the Lanham Act’s reach for trademark infringement doesn’t extend to their conduct because their conduct generally involved foreign defendants making sales to foreign consumers. And now, the Supreme Court has remanded the case and held that liability for trademark infringement under the Lanham Act extends only to infringing “use in commerce” in the United States.
Scott:The Lanham Act governs federal trademark and unfair competition disputes. It imposes liability on any person who uses in commerce any . . . “colorable imitation of a registered mark,” or “[a]ny person who . . . uses in commerce any” word, false description, or false designation of origin that “is likely to cause confusion . . . or to deceive as to the affiliation,” origin, or sponsorship of any goods. The Act defines commerce broadly as “all commerce which may lawfully be regulated by Congress. In the U.S. Supreme Court’s holding, they focused specifically on the “use in commerce” language in the Lanham Act, in holding that “use in commerce” must occur in the United States in order to constitute trademark infringement under the Lanham Act.
Tara:That’s right. The focus on “use in commerce” is different than the holdings that some of the other federal circuits have taken on the extraterritorial application of the Lanham Act. Some federal circuits looked instead to whether the foreign activities of foreign defendants have a “substantial effect” on U.S. commerce. In fact, the only other Supreme Court case that addresses the extraterritorial application of the Lanham Act also discussed the effects of the alleged infringement on U.S. commerce.
Scott:That case is Steele v. Bulova Watch Co. and was decided in 1952. In that case, Steele, a Texas man, procured component parts from the United States and Switzerland, assembled watches in Mexico City, and branded them ‘Bulova’. The Bulova Watch Company’s Texas sales representative received numerous complaints from retail jewelers in the Mexican border area of Texas whose customers brought in for repair defective ‘Bulova’ watches, but upon inspection, it often turned out that the watches weren’t Bulova watches at all. The Supreme Court held that Steele’s activities were covered by the Lanham Act and looked to the impact of Steele’s activities on U.S. commerce.
Tara:So, the Supreme Court made sure to distinguish the Abitron case from the Steele case in its recent decision. The court clarified that the Steele case “implicated both domestic conduct and the likelihood of domestic confusion” as compared to the Abitron case, where 97% of sales were made in foreign countries, to foreign buyers, for use in foreign countries.
Scott:This case will have broad implications for U.S. companies that sell products overseas, and best practices will probably lead to the registration of trademarks in strategic international jurisdictions. And it seems like this case would also raise concerns for foreign companies who sell products online in the U.S.
Tara:That’s right. And Justice Jackson wrote a concurring opinion on that point, suggesting that “use in commerce” in the U.S. would not necessarily require a company to be physically present in the U.S.
The subjects of a documentary have dropped their long-standing defamation lawsuit against Netflix and producers. Scott Hervey and Jamie Lincenberg talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show notes:
Scott: As of last week, a longstanding lawsuit against Netflix and producers, Doc Shop Productions, has been dropped. In a previous episode of The Briefing, we discussed the then-current status of the case where seven subjects of the Netflix docuseries “Afflicted” sued Netflix for claims of defamation, fraud and invasion of privacy. We are going to take a look at this dismissal on this installment of the Briefing by Weintraub Tobin.
I am Scott Hervey of Weintraub Tobin and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to The Briefing.
Jamie: Thank you, Scott. I’m happy to be here.
Scott: Jamie, can you provide a quick recap on the lawsuit.
Jamie: Sure. the seven-part series “Afflicted” explores the world of chronic diseases, following a number of patients and their loved ones suffering from the same. The show casts a skeptical eye on some of the subject’s illnesses and those subjects then brought claims accusing Netflix and the producers for editing the show to make the subjects’ rare illnesses look psychosomatic and alleging that the plaintiffs were “duped by the defendants into participating in a salacious reality television program that questioned the existence of chronic illness and portrayed the plaintiffs as lazy, crazy, hypochondriacs who were deserving of scorn and who in fact have since received scorn and abuse because of the shows false representation.
Scott: Netflix and the producers fired back - filing an anti-SLAPP motion to quickly block the lawsuits, based on the right to free speech. However, an LA county judge rejected the motion, and the appeals court agreed in a unanimous decision where the judges found that “undisputed facts concerning the plaintiff’s diagnosed medical conditions, when contrasted with the show script excerpts and aired version of “Afflicted” were sufficient to constitute a threshold showing that the defendants could reasonably be understood as falsely implying that the sick plaintiffs were imagining their illnesses due to some psychological condition and that their caregivers were gullible pawns or enablers who had been duped into providing care for persons who did not need it.”
The plaintiff’s attorney called the ruling a “Significant Win” and we discussed in our episode that such a ruling could in fact be a shift in the norm and represent major issues for documentary/non-scripted film and television producers.
Jamie: Now, almost four years since the initiation of the lawsuit, the case has been dropped. From limited sources, it seems that both sides have agreed to drop the suit, according to a request for dismissal filed on June 6. Details of the deal have not been disclosed, but of course, this is a win for Netflix, and the producers.
Scott: Of course, Netflix is no stranger to defending itself from accusations of defamation. This is one of many defamation lawsuits that have been brought against not just Netflix, but many studios and producers working in the documentary space. This case addresses a number of issues that are generally always present in documentary industry and highlights important lessons for both producers and subjects of those documentaries.
Jamie: These issues are present now, more than ever. Given guild strikes halting much of traditional production and the significantly decreased cost of non-scripted content, documentaries, docuseries, and other non-scripted productions are booming and regularly ranked among the most viewed shows on Netflix and other streamers.
Scott: Despite the dismissal, this case is a cautionary tale for produces in the documentary space.
Jamie: I agree.
The U.S. Supreme Court provided clarification on the application of the Rogers test in relation to Jack Daniels v. VIP Products. Scott Hervey and Jamie Lincenberg talk about this ruling on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott: In the case of Jack Daniel’s Properties, Inc. v. VIP Products, the Supreme Court has spoken and provided clarification on the application of the Rogers test and whether the parodic use of another’s trademark is always non-commercial use for the purposes of a dilution claim. We are going to talk about this ruling and its potential future applications on this installment of the Briefing by WT.
I am Scott Hervey of Weintraub Tobin, and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to the briefing.
Scott: On June 8, 2023, the United States Supreme Court handed down its opinion in JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS. The dispute dates back to 2014 when Jack Daniel's sent a series of cease and desist letters to VIP products concerning its squeaky dog chew toy, Bad Spaniels. This toy parodies the Jack Daniel's product; “Jack Daniel's" becomes "Bad Spaniels." And the phrase "Old No. 7 Brand Tennessee Sour Mash Whiskey" turns into "The Old No. 2 On Your Tennessee Carpet." Jack Dailes claimed that VIP Products had infringed and diluted its trademarks. In 2018 a district court judge ruled in Jack Daniels's favor.
Jamie: In its ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s marks.
Scott: On appeal to the Ninth Circuit, VIP argued that the district court erred in finding that the toy wasn't expressive. The Ninth Circuit, therefore, remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work.
Jamie: In reviewing the Ninth Circuit’s holding, the Supreme Court framed its analysis by starting its opinion with a discussion of the purpose and function of a trademark, which is to serve as an identifier of the source of certain goods and services. From there, the Court then looks at the Ninth Circuit's application of the Rogers test and its analysis of Jack Daniels’ dilution claim.
Scott: Right. With regard to the application of the Rogers test, the Supreme Court said the issue is not whether the dog toy is an expressive work. The issue is the nature of the use of Jack Daniel's marks. The Supreme Court found that VIP's use of the marks, while humorous, was for the purpose of serving as a source identifier…trademark use, in other words. That didn't seem to be a controversial analysis since, in its complaint, VIP claimed trademark rights in Bad Spaniels, and VIP had, in fact, secured trademark registration of Bad Spaniels. This use, use as a trademark, is outside of the application of the Rogers test and instead should be analyzed under the multi-factor test like Sleekcraft.
Jamie: The Supreme Court said that this approach….confining Rogers to instances where a trademark is not used to designate a work’s source but solely to perform some other expressive function….. is not new and has been followed by lower courts in other cases.
Scott: That's an important point you raise. The use of the trademark must only be to perform some other expressive function. Where a mark is used both to perform an expressive function and also as a source identifier, the Rogers test is not applicable.
Jamie: Scott,
A court denied Netflix's request for GoTV Streaming to supply documents relating to the source of its patent litigation funding. Scott Hervey and Eric Caligiuri discuss this dispute on the this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Read more about this case here.
The U.S. Supreme Court will hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to register trademarks using the name of living person without their consent. Scott Hervey and Tara Sattler discuss this on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Tara: The U.S. Supreme Court has agreed to hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to secure registration of a trademark using the name of living persons without that person’s consent. That's what we'll be discussing in this installment of the Briefing by Weintraub Tobin.
Tara: Last year, the Federal Circuit overturned a decision from the USPTO Trademark Trial and Appeal Board in which the USPTO refused to grant a trademark registration for the mark TRUMP TO SMALL for use on t-shirts. The USPTO refusal was based on Section 2(c) of the Lanham Act, which requires the USPTO to refuse registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”.
Scott: After the TTAB affirmed the trademark examiner’s refusal to register, the applicant, Steve Elster, appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that "the government has no legitimate interest in protecting the privacy of President Trump."
Tara: Elster argued that the phrase was "political criticism" and accordingly protected by the First Amendment. The Federal Circuit agreed and overturned the USPTO's refusal to register. The USPTO appealed to matter to the Supreme Court and suspended applications on all pending applications for trademarks that are critical of public or government officials until the Supreme Court weighs in on the issue. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided.
Scott: In its petition to the Supreme Court, the Trademark Offices argued that enforcing the decision conflicts with the plain language of section 2(c) of the Lanham Act.
Tara: The Trademark Office also argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent's — not the refusal to register them — that would 'chill' such speech.”
Scott: This is an interesting issue for the Supreme Court. Is a section 2(c) refusal to register the same thing as a government restriction on free speech? If the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, trademark examiners will have to make a decision about whether a particular trademark expresses protectable speech under the First Amendment. That isn't the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue and a case we will be watching. Thanks, Tara.
The U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. Scott Hervey and Tara Sattler talk about this decision on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Cases Discussed:
Andy Warhol Foundation v. Goldsmith Campbell v. Acuff-Rose Music
Show Notes:
Scott: In a closely watched copyright case, the U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol's portrait of music legend Prince did not qualify as fair use under copyright law. The decision affirms a previous ruling by the Second Circuit, which found that Warhol's artwork shared the same commercial purpose as the original photograph taken by photographer Lynn Goldsmith. The Supreme Court seemed to make a great effort to state that its analysis was limited to the specific use alleged to be infringing - the foundation’s licensing of Warhol Prince portrait to Conde Nast - and stated that the court is not expressing an opinion as to the creation, display or sale of the original series of Warhol Prince portraits, and the case itself presents the unique situation of the two works actually competing in the same marketplace. However, this opinion is now the go-to for determining fair use, and it will have a very wide impact. We are going to talk about the impact of this case in this installment of the briefing by Weintraub Tobin.
Scott: These are the underlying facts. In 1981 Lynn Goldsmith was commissioned by Newsweek to photograph a then "up and coming" musician named Prince Rogers Nelson. Newsweek later published one of Goldsmith's photos along with an article about Prince. Years later, Goldsmith granted a limited license to Conde Nast publication - Vanity Fair, for use of one of her Prince photos as an "artist reference for an illustration." The terms of the license included that the use would be for “one time” only. Vanity Fair then hired Andy Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400.
Tara: After Prince died in 2016, Condé Nast contacted the foundation about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince. Condé Nast learned about a series of orange silkscreen portraits of Prince created by Warhol. This Orange Prince image is one of 16 works that Warhol derived from Goldsmith's photograph. When Condé Nast learned about the Orange Prince Series images, it opted instead to purchase a license from the foundation to publish it instead. Apparently, Goldsmith was unaware of the orange prince Series until 2016, when she saw it on the cover of Condé Nast’s magazine. And from there, this lawsuit commenced.
Scott: The sole issue on appeal to the Supreme Court was whether the first fair use factor, the purpose, and the character of the use weighed in favor of the foundation. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell v. Acuff-Rose Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether "the new work merely "supersedes the objects" of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[,]. . . in other words, whether and to what extent the new work is transformative. . .”
Tara: This transformative use analysis took on great importance and often eclipsed the other fair use factors. If the work was transformative, it was almost always found to be fair use.
Scott: Agreed. Prior to this case,
While iconic catchphrases from TV and film can hold significant equity, protection of them can be spotty. Scott Hervey and Tara Sattler talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott: Show me the money. Who you going to call? Go ahead, make my day. These are a few iconic phrases with significant equity. But protection of catchphrases like this are spotty. We are going to talk about the protectability of short phrases on this next installment of the Briefing by Weintraub Tobin.
Scott: Iconic short phrases are worth their weight in gold, and the creators of those short phrases would probably like to prevent others from using those phrases under any circumstances. That's not always possible.
Tara: Let's first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under Copyright law, and that isn't the case.
Scott: That's right. Short phrases are not protectable under US Copyright law. According to a Copyright Office Circular, short phrases, such as slogans, are uncopyrightable because they contain an insufficient amount of authorship. Even if the Copyright Office will not register short phrase even if they are novel, distinctive, or lends itself to a play on words.
Tara: And if a work is not protectable under copyright, then it can’t be the subject of a copyright infringement claim. But that doesn't mean that all uses of a third party's short phrase is always ok.
Scott: Right. While the quotation of a short phrase in books and movies may not be actionable, the use of “let’s get ready to rumble” in connection with the sale of goods or services could certainly bring a lawsuit.
Tara: It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for "Let's get ready to Rumble" and has been quite active in policing its use.
Scott: Trademark protection is the best form of IP protection for short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and are used in connection with goods or services.
Tara: Just Do It is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie?
Scott: Well, a quote like "ET Phone Home" could be protectable for the merchandise but not likely for the movie itself.
The Trademark Trial and Appeals Board denied an application to register a trademark for essential oil dispensers meant to fill smoking devices with cannabis-based oils. Scott Hervey and Tara Sattler talk about this case on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show notes:
Scott:
On May 3, the TTAB issued a precedential opinion denying an application to register a line of essential oil dispensers used to dispense premeasured amounts of cannabis-based oil to a vaping or smoking device for ‘dabbing on the grounds that such products are illegal under the Federal Controlled Substances Act. It’s been known since the legalization of medical cannabis that it’s impossible to get a federal trademark. However, here the Applicant argues that an exemption under the Controlled Substances Act makes these goods lawful under federal law and thus eligible for federal trademark registration. We are going to talk about this case next on the briefing by Weintraub Tobin.
Scott:
National Concessions Group, Inc sought to register the mark BAKKED and a stylized drop design mark for an essential oil dispenser. The trademark examiner assigned to the application contended that this oil dispenser is drug paraphernalia, used in dabbing, and is illegal under the CSA, and refused registration on that basis. Even though the Applicant argued that the goods were intended for and could be used for legal purposes, the examiner looked at extrinsic evidence, including NCG’s website and advertisements for the products, which supported the examiner’s position that the goods were primarily intended for use with cannabis.
Tara:
Under Section 1 of the Lanham Act (15 USC 1051), the owner of a trademark used in commerce may request registration of its trademark on the principal register. Section 45 of the Lanham Act (15 USC 1127), “commerce” means all commerce that may lawfully be regulated by Congress. If the record indicates that the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible, and a refusal under Trademark Act Sections 1 and 45 is appropriate. Where the identified goods are illegal under federal law, including the federal Controlled Substances Act (CSA), the Applicant cannot use its mark in lawful commerce.
Scott:
Section 863(a) of the CSA makes it unlawful to (1) sell or offer for sale drug paraphernalia. Drug paraphernalia is defined as “any equipment, which is primarily intended or designed for use in introducing into the human body a controlled substance. Marijuana and marijuana-based preparations are controlled substances under the CSA. The denial of a cannabis-related application under the CSA is not new to trademark practitioners. What makes this case interesting is NCG’s argument that two exceptions in the CSA supported registration.
Tara:
However, the CSA includes two exceptions to section 863. They state that section 863 shall not apply to any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items. And the Applicant argued that its goods qualified for an exemption because the Applicant is “authorized by” Colorado state law to “manufacture, possess, or distribute” such goods,
Scott:
This argument was a matter of first impression for the board. That doesn’t happen very often, and while it usually means that the TTAB will address and resolve the matter, in this case, the TTAB said that they do not need to decide the merits of the Applicant’s argument. The TTAB said that even if the Applicant’s interpretation of the exemption is correct, it is not entitled to the registration it seeks.
Tara:
First, the Applicant’s application was not geographically limited to Colorado. A federal registration would give Applicant presumptive exclusive nationwide rights to its mark in association with the identified goods.
Scott:
Second, the Applicant’s goods are not legal in other states outside of Colorado. Any authorization by Colorado of Applicant’s manufacture, possession, or distribution of the goods cannot override the laws of the other states or federal law outside Colorado. So, despite some, it’s still the status quo.
Major League Baseball player Aaron Judge went before the Trademark Trial and Appeals Board to block a person’s attempt to secure trademark rights for slogans that play on his name. Scott Hervey and Josh Escovedo discuss this dispute on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Josh:Welcome to the Briefing. Today we have some interesting news coming out of the sports world. Aaron Judge, the New York Yankees captain, has successfully blocked a Long Island man’s attempt to secure trademark rights on the judicially themed slogans “All Rise” and “Here Comes The Judge” for apparel. The Trademark Trial and Appeal Board issued a 61-page precedential opinion, stating that Judge and the Major League Baseball Players Association had priority of use over Michael P. Chisena’s use of “All Rise,” “Here Comes The Judge,” and a logo design with an image of the scales of justice superimposed on a baseball field, which all cover various articles of clothing.
Scott:
According to the TTAB, Judge and the MLBPA presented evidence of third-party licensees that paid royalties to use words and designs referring to Judge, often including judicial terminology, on apparel since August 2016. Chisena did not use the marks until he filed the applications in July and October 2017, which worked against him.
Josh:
That’s right, but Chisena argued that Judge and the MLBPA’s prior use of “All Rise” and “Here Comes The Judge” did not function as source- indicating trademarks and were only meant to “engender acknowledgment of, enthusiasm and overall support” for Judge. But the TTAB stated that the consuming public recognizes the subject slogans and symbols carrying judicial connotations as pointing to only one baseball player on one major league team.
Scott:
Chisena claimed that he was not a baseball fan and had no knowledge of Judge until “some point in 2017.” He said that his creation of the marks in question between 2012 and 2015 stemmed from his interest in developing a new sports product.
Josh:
Still, Judge and the MLBPA argued that Chisena adopted his marks in bad faith. The TTAB noted in its opinion that Chisena’s “timing, and choice of marks and colors are indeed eyebrow-raising, and his protestations of good faith strain credulity.”
Scott:
The TTAB also stated that it was the perception of the relevant public, i.e., baseball fans, rather than the parties’ intent that determined whether a designation functioned as a trademark.
Josh:
Overall, the TTAB deemed the evidence sufficient to negate Chisena’s protestations of good faith, and Judge and the MLBPA were able to successfully block his attempt to secure trademark rights on the slogans.
What do you think, Scott? Is this the right outcome?
Scott:
So I’d say this was the right outcome. It’s definitely an interesting dispute, Josh. Thanks for sharing.
Josh:
Thanks, Scott.
The Universal Music Group is accusing a TikTok creator of copyright infringement after they published an AI-Generated song that was made to sound like a Drake and Weeknd collaboration. Scott Hervey and Josh Escovedo discuss this dispute in this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Cases Discussed:
- Middler v. Ford
- Astley v. Matthew Hauri, pka Yung Gravy
Show Notes:
Scott:Last week, a new Drake and Weeknd collaboration disrupted the Internet. The only problem is that it wasn’t a Drake and Weeknd collaboration, after all. The song “Heart on My Sleeve” was written and produced by TikTok user ghostwriter977. The vocals for “Heart on My Sleeve” were generated by artificial intelligence, made to sound like Drake and The Weeknd. UMG, the record label behind the artists, is furious and is pushing music streamers to block AI tools from training on its artists’ melodies and lyrics. While “Heart on My Sleeve” was ultimately removed from Spotify due to a copyright issue…the song had an unauthorized sample in it…we could see more original AI fake Drake songs from ghostwriter 977, and there may not be anything UMG or the artist can do about it. We are going to talk about this next on the Briefing by the IP Law Blog.
Scott:The music industry sees generative AI tools that can create music that sounds like a specific artist, as a real threat to business. In response to the fake Drake AI song, UMG issued a statement publicly encouraging digital service providers not to let generative AI tools train on music issued by their artists. UMG considers this a violation of copyright law.
Josh:As we have previously covered, this issue-whether the training of an AI tool on existing copyright-protected works constitutes infringement or is fair use – is currently being litigated in a number of cases. Whether the initial content-copying AI tool does as part of its learning process constitutes infringement or protectable fair use will have a profound effect on the future of AI. The court’s focus will be on whether this copying is part of an overall transformative process to be weighed against the commercial impact the tool has on the applicable industry.
Scott:Focusing on the output, most, if not all, of those cases deal with generative AI platforms that create visual works. Here we are talking about the creation of a musical work where the song itself was original, written by ghostwriter977. And since UMG based its takedown on a small sample audio tag included in Heart on My Sleeve, it seems fair to assume that the original components of the song itself probably are not infringing.
Josh:“Heart on My Sleeve” wasn’t the last of the Fake Drake. Another Fake Drake AI track recently dropped. The track “Winter’s Cold” was posted to Soundcloud on April 18, featuring the artificial vocals of Drake. The track has already garnered over 120,000 listeners on the platform. This, I am sure, has the record industry strategizing on how to put this all back in the bottle. And I assume further legal maneuvering is in the works.
Scott:I agree. I suspect the next step could include the artist filing a right of publicity claim.
Josh:California’s right of publicity statute is Civil Code section 3344 prohibits the use of another’s name, voice, photograph, or likeness on or in products, merchandise, or goods or for purposes of advertising or selling…..such products, merchandise, goods without such person’s prior consent. California also has a common law right of publicity that’s a bit broader than the statute. The Ninth Circuit has adjudicated two right of publicity cases involving sound-alike recordings.
Scott:That’s right. The first was Middler v. Ford, in which Ford hired a singer who sounded like Bette Midler to sing a recording from one of Midler’s albums in a TV commercial. Middler sued for violation of her right of publicity…both under the civil code and under common law. The trial court initially granted Ford its motion for summary judgment. On appeal, the 9th Circuit addressing Middler’s common law claim held that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California.
Josh:However, this holding from the Midler case doesn’t seem to be of much use to either UMG or Drake. The fake Drake AI songs were not being used to sell products. Also, the Midler court’s analysis of the interplay between the First Amendment and Midler’s publicity claim seems relevant here. The Midler court noted that if the purpose behind the use of a person’s identity is “informative or cultural,” the use is immune; if the use serves no such function but merely exploits the individual portrayed, immunity will not be granted.”
Scott:There is another part of the Midler case that will not be favorable to the record companies and recording artists; that is the court’s review of the application of Civic Code section 3344. This section prohibits the use of another person’s “name, voice, signature, photograph or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling…..such products, merchandise, goods without such person’s prior consent” The 9th circuit pointed out that Ford did not use Midler’s name or anything else whose use is prohibited by the statute. The voice Ford used was that of the sound alike.
Josh:I think the biggest problem facing UMG or any recording artist who wants to sue is based on an original generative AI sound recording that has “sound-alike” vocals os Section 114(b) of the Copyright Act. As we previously discussed in our review of Rick Astley’s lawsuit against Yung Gravy’s use of a sound alike, Section 114(b) permits “soundalikes”. A publication by the US Copyright Office specifically says that “under U.S. copyright law, the exclusive rights in sound recordings do not extend to making independently recorded “sound-alike” recordings.
Scott:And if the intent of the scope of Section 114(b) isn’t clear enough from that, the notes to Section 114 by the House Judiciary Committee provide as follows…”Subsection (b) of section 114 makes clear that statutory protection for sound recordings extends only to the particular sounds of which the recording consists and would not prevent a separate recording of another performance in which those sounds are imitated…. Mere imitation of a recorded performance would not constitute a copyright infringement, even where one performer deliberately sets out to simulate another’s performance as exactly as possible. So, subject to the open question about whether the AI training process constitutes infringement, as long as the music and lyrics are completely original…no uncleared samples….then a generative AI sound recording that has “sound-alike” vocals is probably completely legal.
Popular food chains Chipotle and Sweetgreen settled a trademark dispute relating to Sweetgreen’s use of ‘CHIPOTLE’ on its menu. Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
I’m Scott Hervey with Weintraub Tobin.
Josh:
And I’m Josh Escovedo with Weintraub Tobin. Over the course of a few days, Chipotle and Sweetgreen engaged in a trademark skirmish concerning the CHIPOTLE mark and settled the matter just a few days later. That what we’ll be discussing on this installment of The Briefing by the IP Law Blog.
Josh:
Today we’re going to discuss a recent legal dispute between two fast-casual restaurant chains, Chipotle and Sweetgreen. In short, Chipotle filed a lawsuit in California federal court against Sweetgreen, accusing the rival chain of infringing its trademark by selling a “Chipotle Chicken Burrito Bowl” that Chipotle claims is directly competing with Chipotle’s own menu item.
Scott:
That’s a bold move by Chipotle. What exactly are their claims?
Josh:
Chipotle alleges that Sweetgreen has been infringing its well-known Chipotle trademark since March 30 by selling a menu item with very similar ingredients to Chipotle’s own popular burrito bowl and incorporating the CHIPOTLE mark into the name of the item. By now, you may be wondering, how exactly is Sweetgreen infringing on Chipotle’s trademark?
Scott:
Well, according to the complaint, Sweetgreen’s menu item is listed with a capitalized “Chipotle” or sometimes in all caps on its website and in its social media posts on Instagram or Twitter. In addition, some ads for the allegedly infringing item utilize a font or background color which Chipotle claims is eerily similar to Chipotle’s font and background color.
Josh:
So basically, Chipotle is claiming that Sweetgreen is trying to create confusion among customers by falsely creating an impression that its product is somehow sponsored or authorized by Chipotle. At the very least, Chipotle is claiming that Sweetgreen has inadvertently created a situation that is likely to create consumer confusion.
Scott:
That’s right. Chipotle says that Sweetgreen’s actions are likely to cause confusion among customers, and that Sweetgreen is wrongfully profiting from and trading off of Chipotle’s valuable goodwill and reputation.
Josh:
I see. So, what was Chipotle seeking through this lawsuit?
Scott:
Well, Chipotle alleged three Lanham Act violations along with a claim under California’s Unfair Competition Law and sought injunctive relief and treble damages, according to the complaint.
Josh:
Those are some serious allegations. But there’s been a recent development in this case, hasn’t there?
Scott:
Yes, just days after Chipotle filed the lawsuit, Sweetgreen agreed to change the name of its new “Chipotle Chicken Burrito Bowl” to “Chicken + Chipotle Pepper Bowl” as part of a tentative agreement between the two companies to resolve the suit.
Josh:
That’s interesting. This really underscores the perils of adopting a mark in the restaurant industry that is also a popular ingredient. Here, it seems to have worked out for Chipotle through a quick resolution. I do question however how this would have played out if it had been litigated. I’m not confident Chipotle would have walked away victorious. What do both parties have to say about the resolution, Scott?
Scott:
According to statements provided to multiple news outlets, Sweetgreen says it made the change “to focus on business and continue serving our guests without distraction,” and Chipotle says it is “pleased that Sweetgreen has chosen to amend their materials in a manner that protects our trademarks and intellectual property.”
Josh:
So, it seems like both companies are satisfied with this resolution.
Scott:
At least to some extent. Now both parties can move forward with their business without the distraction and expense of litigation. I’m also willing to bet that Sweetgreen isn’t going to sell fewer bowls as a result of the name change.
Josh:
Absolutely. Litigating this issue would have been a pure matter of principle with little to gain at the end.
Scott:
I agree, Josh. Thanks for sharing.
Journalist Bob Woodward asked the court to dismiss former President Trump’s copyright infringement claim regarding Woodward’s audio book “The Trump Tapes,” which consists of 20 raw audio interviews with Trump. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Cases Discussed:
- Trump v. Woodward
- Taggart v. WMAQ Channel 5 Chicago
Show Notes:
Scott:Veteran investigative reporter Bob Woodward conducted an audio interview of former president Donald Trump for Woodward’s book, Rage. Woodward later released these recordings as a separate audiobook, and Trump claimed that Woodward did not have his permission to release these audiotapes as a separate audiobook and sued Woodard and his publisher for, among other claims, copyright infringement. Woodward filed a motion to dismiss, arguing that Trump’s complaint is without legal merit. We are going to talk about this.
Scott:These are the facts according to Trump’s complaint against Woodward and his publisher, Simon and Schuster. Woodward sought and obtained President Trump’s consent to be recorded for a series of interviews with President Trump. Woodward interviewed Trump, both in person and over the phone, on numerous occasions during 2019, mostly during his term as president. Trump contends that he did not give permission for the recordings to be released as audio recordings and claims that he owns the copyright in the entire sound recording or at least Trump’s response to the interview questions.
Josh:We previously covered this when Trump initially filed his complaint, and we questioned the merits of his copyright claim. Did Woodward’s motion to dismiss track our analysis?
Scott:Woodward did raise one of the same as us – that Trump lacks any copyright ownership in the answers to interview questions. His motion even cites Taggart v. WMAQ Channel 5 Chicago, which we noted in our story. In that case, a Chicago television station videotaped a prison interview with a convicted sex offender in connection with a report on the lax regulation of summer camps. Taggart alleged that he had requested that the tape not be used in any manner, and when WMAQ broadcast an excerpt, he sued for copyright infringement and other claims. In ruling on the station’s motion to dismiss, the court held that Taggart did not have a copyright interest in unprepared and spontaneous utterances during an interview and dismissed his copyright claim. The basis of this finding is the Copyright Act’s lack of protection for ideas. While courts have recognized common law protection for the spoken word, according to the Taggart holding, courts have not and cannot recognize a proprietary interest where there is no tangible embodiment of the expression of an idea
Josh:To qualify as an author under the Copyright Act, one must supply more than mere direction or ideas. According to the Supreme Court in Community for Creative Non-Violence v Reid, “an author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.”
Scott:And based on that, the court found the responses given by Taggart “are not an expression of an idea for the purpose of copyright law.” On a more practical level, the judge noted that the granting of protection for the answers to questions “gathered in the daily task of the news reporter would essentially bring the industry to a halt.”
Josh:Woodward raises a few additional grounds in his motion to dismiss. One other ground is that Trump has failed to register a copyright in the work alleged to be infringed prior to filing suit. Section 411(a) of the Copyright Act says, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Woodward contends that couching claims as “Declaratory Relief Regarding Ownership of Copyrights” and “Accounting” under “the Copyright Laws of the United States does not get Trump out from under the registration requirement.
Scott:That’s right. I don’t know how challenging this issue will be to overcome. One additional challenge to Trump’s copyright ownership is that his responses are government works. Section 105 of the Copyright Act provides .that “copyright protection…is not available for any work of the United States Government,” which is defined as any “work prepared by an officer or employee of the United States Government as part of that person’s official duties” Trump, as president, was an employee of the federal government and Woodward contends that speaking with reporters is clearly conduct ‘of the kind [a President] is employed to perform.'”
Josh:Here, the Interviews all occurred when Trump was in office, and Woodward alleges were clearly “part of his official duties.” Woodward contends that allowing federal employees to own a copyright interest in their portion of an interview would give President Trump and other public officials interviewed by the press the right to sue over any critical or unwelcome use of their statements. Since copyright equates to legal control over expression and requires journalists to negotiate authorship rights away from interviewees, particularly public officials, would invite contractual censorship of criticism and chill open discourse.
Scott:Woodward also contends that the use of Trump’s responses, to the extent Trump does have a copyright interest in the recordings, the use constitutes fair use in that it is news reporting. Woodward cites to a Second Circuit case that held that Bloomberg’s unauthorized publication of an entire recorded earnings telephone call led by Swatch executives was fair use based on the rationale that “in news reporting,” the “need to convey information to the public accurately may, in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work without alteration.”
Josh:It does seem that Woodward raised some very compelling points in support of his motion to dismiss.
Scott:I have to agree Josh; Woodward’s motion does seem extremely strong. We will see what former President Trump has to say.
The Supreme Court has finally heard arguments in the VIP Products v. Jack Daniels case, in which the whiskey company accused the dog toy maker of infringing its trademark with its whiskey bottle chew toy. Scott Hervey and Josh Escovedo discuss this dispute in the episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
I’m Scott Hervey with Weintraub Tobin.
Josh:
and I’m Josh Escovedo with Weintraub Tobin. The Supreme Court has finally heard arguments in the much talked about VIP Products v. Jack Daniels matter concerning the balancing of free speech under the First Amendment and trademark rights under the Lanham Act. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog.
Josh:
As many of you know, Jack Daniel’s is claiming that the “Bad Spaniels” dog toy made by VIP Products infringes JD’s trademark, as it replaces key elements of their whiskey bottle with dog and poop references. Perhaps what is most interesting about this case is that it requires The Supreme Court to try to figure out what test is needed to balance trademark rights under the Lanham Act and Free Speech under the First Amendment. Scott, let’s tell the readers about the arguments.
Scott:
Sure. Jack Daniel’s argues that VIP’s dog toy is trademark infringement that needs to be reined in so customers don’t presume the liquor company is associated with the product. So, the main question is whether the so-called Rogers test should apply. The Rogers test provides First Amendment protections to works with others’ trademarks on them, so long as the work is considered “artistically expressive” and does not “explicitly mislead” consumers. As you know, the Ninth Circuit had said VIP’s toy met the test. Josh, can you tell our listeners about the government’s stance on the Rogers test?
Josh:
The federal government wants to get rid of the Rogers test, calling it “inconsistent” with the Lanham Act. Plain and simple. But what wasn’t so plain was the fact that the justices ran through various colorful scenarios with attorneys for Jack Daniel’s, VIP Products, and the government trying to figure out what test is needed to decide whether a work is protected by free speech or infringes trademarks, leading to a lot of laughter and some odd exchanges. They even discussed bad advertising, drunken animals, urine sales, and dog ownership.
Scott:
It was definitely a lively exchange.
Josh:
Definitely. Justice Samuel Alito called it unlikely that “any reasonable person” would look at the dog toy and assume Jack Daniel’s had approved it, leading to a long back-and-forth encapsulating much of Wednesday’s oddness. They even discussed the controversial Nationwide Insurance commercial that featured a child who was revealed to be dead.
Scott:
It’s fascinating to see the Supreme Court justices discussing such odd scenarios. I can’t wait to see the outcome of the case and how the Court will deal with the conflicting interests. Thanks for sharing, Josh.
Josh:
Of course. Thanks, Scott.
The Anne of Green Gables Licensing Authority is accusing a New York theater production company of trademark infringement for producing a show titled ‘Anne of Green Gables – The Musical.’ Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Cases Discussed:
- Anne With An E, Limited Liability Company v. Anne of Green Gables Licensing Authority Inc.
- Hermes v. Rothschild
Show Notes:
Scott:Copyrights have a finite lifespan and after the copyright term expires the works fall into the public domain. That’s not the case with trademarks which can last indefinitely. Anne of Green Gables was a children’s book originally published in 1908. This means that the work is now in the public domain. However, Anne of Green Gables Licensing Authority owns various trademarks for Anne of Green Gables. What happens when the right to create a musical interpretation of the public domain work and use Anne of Green Gables in the title runs headlong into the trademarks owned by the Licensing Authority. Are the producers who created a new musical interpretation of Anne of Green Gables, actually prohibited from using the name of the work in the title of the musical. We are going to talk about this on the next installment of the briefing by the IP law blog
Scott:Anne With An E, LLC is a New York theatrical production company that is developing the musical, ‘Anne of Green Gables: A New Musical,’ based on the Public Domain Novel, ‘Anne of Green Gables’ by L.M. Montgomery. The musical features new original dialogue or book and music.
Anne of Green Gables Licensing Authority is a Canadian corporation, jointly owned by the Province of Prince Edward Island (the location where the original novel took place) and the Heirs of the books author. Apparently, this entity claims to be the sole licensing agent for the trademark ANNE OF GREEN GABLES in the United States and abroad and claim to have licensed the use of the ANNE OF GREEN GABLES trademark in connection with a musical production, titled, ‘Anne of Green Gables: The Musical’ which has been continuously produced since 1965.
Apparently, Anne of Green Gables Licensing Authority has been threatening Anne with an E with a potential trademark infringement claim ever since Anne with an E mounted its first production in 2018 and apparently in December 2022, escalated the situation by also sending a draft copy of a complaint. Anne with an E filed a complaint for declaratory relief with the Southern District of NY in February of this year,
Josh:
I can understand Anne of Green Gables Licensing Authority obtaining a trademark registration for ancillary merch but how did they get a trademark registration for the musical. That would be the title of a single artistic work which is not protectable as a trademark.
Scott:
That’s correct. The trademark examiner assigned to the trademark application refused to register the mark on that basis many, many times. The applicant tried to argue that the mark is used in association with a number of different productions, all of which are based upon the
same general of the public domain work, but, all of which are different. The examiner cited to the TTAB decision in In re Posthuma, provides that where the mark identifies the title of a live theater production, such a theatrical production is a single creative work even if individual performances may have some variations. Eventually the applicant pointed to various different productions, produced by different production companies, each with a book and different lyrics and arguing that this makes them more like a series then a single work.
Josh:And apparently the trademark examiner accepted this argument because the mark because registered.
Scott:
That’s right. I see a problem with this. The Licensing Authority didn’t claim that the other productions using the title ‘Anne of Green Gables: The Musical’ made use of the title was under their authority, thus failing to meet the use in commerce requirement that it be the applicant who uses the mark
Josh:And if the registration is revoked, then the basis of its trademark suit goes away.
Scott:
That’s right. But still. I think this goes back to one of the reasons why trademark rights are not recognized in a single work of authorship. When a work falls into the public domain, others would have the right to reproduce the literary work. However, if the title to the work enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published only under a different title.
Josh:And I can see that applying the Rogers test might not provide immediate relief. While the first prong, artistic relevance, is satisfied, but the second prong… whether the use explicitly misleads as to the source or the content of the work might not be so easy to overcome, especially in the 2nd Circuit where they apply the Polaroid factors to determine this factor.
Scott:
Right, the question for that factor would be whether the likelihood of confusion here was. “particularly compelling to outweigh the First Amendment interest recognized in Rogers. And, as we saw in the Metaberkin case, this probably isn’t a question that can be resolved on a motion to dismiss.
Josh:Courts will protect the title of works that have acquired secondary meaning through the common law unfair competition claims of passion off and misappropriation. And while the original book may have acquired secondary meaning, despite the long running nature of the original musical, it’s hard to say whether it, the original musical, acquired secondary meaning in its title.
The NFL and Las Vegas Raiders threatened to sue a local law firm for trademark infringement, after the firm hired one of its athletes to appear in an advertisement with black and silver branding. Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
I’m Scott Hervey with Weintraub Tobin.
Josh:
I’m Josh Escovedo with Weintraub Tobin. A dispute has arisen between the owner of the Dimopoulos Law Firm and the NFL over the NFL threatening to sue the firm for trademark infringement. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog.
Josh:
In a recently filed complaint in federal court, the Dimopoulos Law Firm, a personal injury firm based in Las Vegas, Nevada, alleges that it has been using a black and silver color scheme to promote its services since its inception in 2012. However, they recently hired three professional athletes, including Jon Bones Jones of the UFC, William Karlsson of the Vegas Golden Knights, and most importantly for this case, Maxx Crosby of the Las Vegas Raiders, to appear in a new advertisement. According to the firm, the advertisement did not feature any logos or trademarks of the NFL, the Raiders, or any other sports teams. Despite this, the complaint states, the NFL sent Dimopoulos a cease-and-desist letter accusing the firm of unauthorized use of the Raiders’ marks.
Scott:
That’s quite interesting. So, what are the grounds for this dispute?
Josh:
Well, according to the cease-and-desist letter, the NFL claims that Dimopoulos used hashtags including the Raiders’ marks and engaged in unauthorized use of their marks. However, it’s worth noting that the Complaint alleges that the advertisement did not feature any NFL logos or names, and the disclaimer on the Dimopoulos Law Firm website and YouTube page make it clear that the firm is not affiliated with the NFL. Scott, based on what know so far, do you think the NFL has a strong case?
Scott:
Personally, I don’t think so, but all we’ve heard so far are the allegations of the Complaint and the cease-and-desist letter. I may feel differently once more facts are discovered. However, with the limited information we have so far, it seems that the advertisement didn’t feature any NFL logos or word marks. In fact, according to the law firm, the only logo that shown was the Dimopoulos Law Firm logo. Furthermore, we’re informed that the disclaimer on the website and YouTube page clearly state that the firm is not affiliated with the NFL. So, it’s hard to see how a reasonable consumer could be confused into thinking that the firm is affiliated with the NFL.
Josh:
I certainly understand that position, and I’m not saying I disagree, but what do you think about the point that the firm raises in the Complaint concerning the fact that multiple professional sports teams, including the Los Angeles Kings, the San Antonio Spurs, and the Chicago White Sox use a silver and black color scheme.
Scott:
Well, it’s a reasonable point to make, but it’s also fair to say that none of those teams play football like Crosby does in the advertisement, and none of those teams are in Las Vegas, where the law firm happens to sit.
Josh:
True, but according to the Complaint, the Raiders hadn’t even relocated to Las Vegas from Oakland until four years after the law firm started using the silver and black color scheme. With that said, I suppose it doesn’t matter if the team is in Las Vegas or Oakland, if it has protectible IP in its color scheme and the advertisement infringed that IP, it probably wouldn’t matter that the team wasn’t always in the same city as the firm, although it would likely be considered in the intent factor of the Sleekcraft analysis if a claim were asserted for trademark infringement under 15 U.S.C. section 1114.
Scott:
That’s right. And even if the Raiders had protectible IP in their color scheme, the Raiders’ claim would really be more of a false designation of association/affiliation claim under 15 U.S.C. section 1125. It’s unlikely that there would be consumer confusion in that the consumer reasonably believes that the Raiders are providing legal services, but it is at least feasible that a consumer could believe that the Raiders are associated, affiliated, or otherwise endorse the law firm as a result of the advertise. It really comes down to whether the Raiders and the NFL have protectible IP in the color schedule.
Josh:
How about the hashtag claim? The law firm alleges that it did not use the hashtags as a source identifier, but it seems to me that given the ability of consumers to search hashtags on social media and discover posts or advertisements tagged with those hashtags, there is a reasonable argument that they should be entitled to protection similar to AdWords, whereby a competitor cannot use another party’s trademarks as AdWords to drive traffic to the competitor’s site. I recognize that here, however, the firm isn’t competing with the Raiders or the NFL, so really the argument would have to be that the use of the marks as a hashtag creates a false designation of association or affiliation with the Raiders or the NFL. So it’s one step removed from most of the AdWords cases. What do you think?
Scott:
There isn’t a simple answer here. In any event, when you consider the totality of the circumstances, I suppose it is at least conceivable that if a consumer were to see the silver and black uniforms in the advertisement that was returned in response to a search for #raiders or #raidernation, they could potentially assume there must be a relationship between the firm and the NFL or the team. Then again, there’s the disclaimer. As I said, it’s complicated.
Josh:
That’s an interesting point, Scott. We’ll have to wait and see how this dispute unfolds.
Scott:
Thanks for sharing, Josh.
The US Copyright Office issued a policy statement regarding the registration of works that contain material generated by AI technology. Scott Hervey and Josh Escovedo talk about this clarification on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
With the buzz still fresh from the copyright office’s partial revocation of the registration issued to Kristina Kashtanova for the graphic novel, Zarya of the Dawn. On March 16 the Copyright office issued a rule concerning the registration of works containing material generated by Artificial Intelligence. We are going to talk about this on the next installment of the Briefing by the IP Law Blog
Scott:On March 16, the Copyright office issued a rule concerning the registration of works containing material generated by Artificial Intelligence. The purpose of the rule, which really is a policy statement, is to clarify the Copyright Office’s practices for examining and registering works that contain material generated through the use of artificial intelligence technology. First, a little background on why the Copyright Office had to issue this rule in the first place.
Scott:Generative artificial intelligence technologies are capable of producing a variety of expressive material, including text and images, in response to text provided by a user. Most generative AI technologies operate through “prompts,” which are text commands and contain text describing what the AI should generate. The output can be text, graphics or audio and are based on the input material the AI has been trained on.
Josh:
Generative AI technologies have raised questions about whether the material produced is protected by copyright, and if not, to what extent a work consisting of both human-authored and AI-generated material may be registered. These questions are not hypothetical; the Copyright office has received and is receiving applications to register AI generated work, with the first dating back to 2018. That application was for a visual work called “A recent entrance to paradise” We previously covered the decision by the Copyright Office Review Boards’ refusal to register the work based on fact that the work was made without any creative contribution from a human actor. And recently, the office reviewed and partially revoked an application for the graphic novel Zarya of the Dawn where the graphics were created using the AI tool, Midjourney. We recently covered that story as well.
Scott:And while the Copyright office’s decision in Kashtanova did provide some understanding as to the Office’s position, this rule provides guidance for persons attempting to register works that incorporate AI generated material.
Scott:First, it’s imperative to understand that the Copyright office will not recognize a copyright in AI generated work and due to pre-emption, there is no way that state law could provide any similar type of protection. This means that any work generated by an AI technology is in the public domain, free for all to use.
Josh:So, does this mean that all work generated by an AI technology is not copyrightable.
Scott:Not necessarily. It’s about who is ultimately responsible for the creation of a work’s traditional elements of authorship. If they are produced by a machine solely in response to a text prompt, then the “traditional elements of authorship” are determined and executed by the technology—not the human user. However, if a human exercised the ultimate creative control over how a generative AI technology interprets prompts and generates material, or if a human selects or arranges AI generated material in a sufficiently creative way or if a human modifies the AI generated material to such a degree that the modifications meet the standard for copyright protection, that the portion of the work representing the human authored aspect of the work would be protectable.
Josh:But copyright protection would not extend to the work in its entirety, only that portion of the work over which a human exercised ultimate creative control.
Scott:That’s right. Putting aside manual human manipulation of the AI generated material, the copyright office stated users do not exercise ultimate creative control over how current generative AI technologies interpret prompts and generate material. But, if they did…. if the user exercised ultimate creative control over the output, would the technology still be AI.
Scott:The rule ends with guidance for applicants seeking to register works incorporating AI generated material, however on the application an applicant must describe the authorship that was contributed by a human. Applicants should not list an AI technology or the company that owns such AI technology as a co-author because the applicant used it when creating the work. Also, an applicant must explicitly exclude AI generated content from the copyright claim.
Josh:I am sure this is not the last of this issue
Scott:It certainly isn’t. Last week lawyers for Kashtanova filed a new application for a new piece of artwork produced by Stable Diffusion which uses Kashtanova’s own hand drawn art as one of the inputs. Her lawyers claim that Kashtanova’s exercise of control over Stable Diffusion made her the author of the work. This may be the first test case of the offices new registration policy
The United States Patent and Trademark office has suspended action on trademark applications targeting the names of public figures. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
I’m Scott Hervey with Weintraub Tobin.
Josh:
I’m Josh Escovedo with Weintraub Tobin. The USPTO has suspended action on trademark application trying to take advantage of a new appellate decision that would let people license trademarks that poke fun at the names of living people. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog.
Josh:
Scott, have you heard about the recent guidance issued by the US Patent and Trademark Office on trademarks that make fun of living public figures?
Scott:
I have, but why don’t you tell our listeners what’s going on.
Josh:
Well, the USPTO has announced that its suspending action on any trademark applications that try to take advantage of a new appeals court ruling that potentially allows people to license trademarks that make fun of the names of living figures like former President Donald Trump. The Trademark Office has indicated that it will continue to do so while it waits for the US Supreme Court to weigh in.
Scott:
Right, and according to the one-page document issued by the Trademark Office, its examiners will not look at trademarks that cover phrases “that are critical of government officials or public figures,” in line with the agency’s longstanding rules. This is because of Section 2(c) of the Lanham Act, which bans the issuance of trademarks that include names “identifying a particular individual” without their consent.
Josh:
You might be wondering what led to the issuance of this guidance. Well, last year, lawyer Steve Elster was trying to land a trademark protecting his use of the phrase “Trump Too Small” for use on T-shirts. Both the office and its own appeals body, the Trademark Trial and Appeal Board, had refused to register the mark, citing the Office’s long-standing rules. But Elster then appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that “the government has no legitimate interest in protecting the privacy of President Trump.”
Scott:
Right, I remember hearing about that last February.
Josh:
Yes, Elster argued that the phrase was “political criticism,” and accordingly to Judge Dyk, it is therefore protected by the First Amendment. The USPTO appealed to matter to the Supreme Court. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided.
Scott:
The Trademark Offices argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent’s — not the refusal to register them — that would ‘chill’ such speech.”
Josh:
So, for now, the Trademark Office has said that it won’t take any action on trademark applications that are trying to take advantage of Judge Dyk’s decision until the Supreme Court weighs in. It’s unclear how many applications this will impact, as the Office has declined to comment on its decision. One has to wonder, what the Trademark Office will do if the Supreme Court refuses to grant cert like it often does.
Scott:
That is an interesting question, Josh, and even if the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, wouldn’t such a decision mean that the trademark examiners will have to make decision about a particular trademark expresses protectible speech under the First Amendment? That isn’t the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue. Thanks for breaking it down for us, Josh.
Josh:
No problem, Scott. Thank you to everyone who joined us.
The U.S. Copyright Office instituted an inquiry into a registration relating to a graphic novel that uses AI-generated artwork. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
Kristina Kashtanova is the author of the graphic novel, Zarya of the Dawn. Ms. Kashtanova had previously applied for and obtained a copyright registration for the graphic novel. Sometime after the novel was registered, the Copyright office, on its own accord, instituted an inquiry into registration with a specific focus on the artwork in the novel which was generated through the use of Midjourney AI technology. After the inquiry, the Copyright office revised the registration and excluded from protection the images created by the use of the AI technology. We are going to talk about this on the next installment of the Briefing by the IP law blog
Scott:Here is the brief history of the matter. In September, 2022 Kashtanova submitted a copyright application for her graphic novel. Her application did not disclose that she used an AI application to create any part of the novel nor did she disclaim any portion of the work. After the application was registered, apparently the Copyright office became aware of statements made by Kashtanova in social media that she had created the graphic novel using Midjourney’s AI tool.
Josh:
Don’t you find it a bit odd that the Copyright office was watching or reviewing Kashtanova’s social media. The examiner must have had some belief that AI was somehow involved in the creation of the graphic novel.
Scott:I never thought that the registration process at the copyright office was that in depth. I always thought it was more pro-forma, but it seems I was mistaken. In any event, based on this new information, the Copyright office determined that the original application was incorrect or substantively incorrect. The office then notified Kashtanova that it intended to cancel the registration unless she provided additional information in writing showing why the registration should not be canceled.
Josh:As we have previously covered, the basis for the Copyright office’s refusal to register AI generate work comes from how the Copyright Act defines the scope of copyright protection. Under the Act, a work may be registered if it qualifies as an “original work[] of authorship fixed in any tangible medium of expression. Courts interpreting the phrase “works of authorship” have uniformly limited it to the creations of human authors.
Scott:According to the internal Copyright Offices practices, as codified in Rule 503.03, In order to be entitled to copyright registration, a work must be the product of human authorship. Works produced by mechanical processes or random selection without any contribution by a human author are not registrable.
Josh:In responding to the Copyright office, Kashtanova’s lawyers argued that both the novel’s text and the selection and arrangement of the text and images are copyrightable since the text was written solely by Kashtanova and the text and images were arranged solely by Kashtanova. The copyright office accepted these arguments and held the text to be copyrightable as well as the arrangement of the text and images. With regard to the images, Kashtanova’s counsel argued that she used the AI platform as a creative tool, similar to how a photographer may use Adobe Photoshop.
Scott:The decision rendered by the Copyright office goes into great detail about how Midjourney works and how Kashtanova used Midjourney. This is important to understand why the copyright office found the way it did. I am going to simplify the description a bit. Midjourney offers an artificial intelligence technology capable of generating images in response to text provided by a user. Users operate Midjourney through “prompts,” which are text commands. Prompts must start with the text “/imagine” and contain text describing what Midjourney should generate. Users also have the option to include a URL of one or more images to influence the generated output, or parameters directing Midjourney to generate an image in a particular aspect ratio or providing other functional directions.
Josh:After a user provides Midjourney with a prompt, the technology will generate four images in response. The images are provided in a grid, and buttons underneath the grid allow users to request that Midjourney provide a higher-resolution version of an image, create new variations of an image Midjourney generate, or to generate four new images from scratch.
Scott:Kashtanova’s counsel argued that the artist and not the machine guided the structure and content of each image. Her counsel argued “all the images in the Work were designed by Kashtanova. The visual structure of each image, the selection of the poses and points of view, and the juxtaposition of the various visual elements within each picture were consciously chosen. These creative selections are similar to a photographer’s selection of a subject, a time of day, and the angle and framing of an image. In this aspect, Kashtanova’s process in using the Midjourney tool to create the images in the work was essentially similar to the artistic process of photographers – and, as detailed below, was more intensive and creative than the effort that goes into many photographs.” And it was that “creative process” that Kashtanova applied to the creation of each image that the Copyright Office found fault with.
Josh:First Kashtanova entered a text prompt for Midjourney. Then she would pick one or more of the outputs to further develop and would tweaked or changed the prompt as well as the other inputs provided to Midjourney” to generate new intermediate images, and ultimately the final image. Kashtanova did not claim to create any visual material herself. To obtain the final image, Kashtanova describes a process of trial-and-error, in which she provided “hundreds or thousands of descriptive prompts” to Midjourney until the “hundreds of iterations [created] as perfect a rendition of her vision as possible.
Scott:The copyright office held that Midjourney users are not the “authors” for copyright purposes of the images the technology generates. The Supreme Court has explained, that an “author” of a copyrighted work is the one “who has actually formed the picture,” the one who acts as “the inventive or master mind.” A person who provides text prompts to Midjourney does not “actually form” the generated images and is not the “master mind” behind them. While the information in the prompt may “influence” generated image, it does not dictate a specific result. Because of the significant distance between what a user may direct Midjourney to create and the visual material Midjourney actually produces, Midjourney users lack sufficient control over generated images to be treated as the “master mind” behind them. And this lack of control over Midjourney’s specific outputs makes the Midjourney AI platform different from other tools used by artists.
Josh:The copyright office makes an interesting comparison of the prompts to instructions given to a commissioned artist. If. Kashtanova had commissioned a visual artist to produce an image and gave that artist the same detailed instructions as she included in her prompts to the Midjourney platform, Kashtanova would not be the author of that image. Absent the legal requirements for the work to qualify as a work made for hire, the author would be the visual artist who received those instructions and determined how best to express them.
Scott:And while Kashtanova spent a significant amount of time working with Midjourney, that effort alone does not make her the author for copyright purposes. The argument that “sweat of the brow” can be a basis for copyright protection has been rejected by courts and the Copyright Office “will not consider the amount of time, effort, or expense required to create the work” because they “have no bearing on whether a work possesses the minimum creative spark required by the Copyright Act and the Constitution,
Josh:So, where does this leave the issue of AI and copyright.
Scott:That’s a more nuanced question then it may seem. While the output method Kashtanova used for Midjourney does not result in copyrightable works, the office did say It is possible that other AI offerings that can generate expressive material operate differently than Midjourney does. Based on what the Copyright Office said here, it seems that there would need to be a more of a nexis between prompts and output, once an image was generated, further prompts would need to reflect a direct control on the next image generated. Also, the copyright office did say that had Kashtanova made substantive edits to an image generated by Midjourney, those edits could provide human authorship worth of a grant of copyright protection
Singer Rick Astley is suing rapper Yung Gravy for vocal imitation in his smash hit, Betty (Get Money). Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Cases discussed:
- Richard “Rick” Paul Astley vs. Matthew Hauri PKA Yung Gravy; Nick Seeley PKA Popnick; Dillon Francis; David Wilson PKA dwilly; Republic Records
- Midler v. Ford Motor Co.
- Waits vs Frito Lay
Show notes:Scott Hervey:
I’m Scott Hervey with Weintraub Tobin.
Josh Escovedo:
And I’m Josh Escovedo with Weintraub Tobin. Rick Astley has sued Yung Gravy for use of an imitation voice in his smash hit, Betty (Get Money). That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog.
Josh Escovedo:
Rick Astley, artist of the hit song Never Going to Give You Up from 1987, has filed suit against rapper Yung Gravy for impersonating his voice on Yung Gravy’s breakout hit, Betty (Get Money). Astley claims that Gravy imitated his voice without legal authorization and has therefore filed suit in Los Angeles County Superior Court, alleging violation of his right of publicity under California law.
Josh Escovedo:
According to Astley’s complaint, Gravy seeks to capitalize off of the immense popularity and goodwill of Mr. Astley by creating a nearly indistinguishable imitation of Mr. Astley’s voice throughout the song. For reasons that we’ll be discussing, Astley did not file a claim for copyright infringement. But while copyright law may not be at issue in the complaint, it is likely to be at issue in the dispute itself. Scott, can you explain to our listeners why Astley did not file a claim for copyright infringement?
Scott Hervey:
Sure. In order to understand why Astley didn’t file a claim for copyright infringement, it’s important to understand that music has two different copyright elements. First, there’s a copyright element in the composition or publishing elements which protects the lyrics and musical arrangement. And then there is a copyright interest in the actual sound recording, which protects the song as performed by an artist as captured on a master recording.
Scott Hervey:
Astley’s complaint concedes that he does not have the rights in the composition. Oh, all that publishing money that he’s missing. But it also indicates that he has a partial interest in the copyright in the recording. So apparently, Gravy obtained what’s called a synchronization license to use the copyright in the composition. But he didn’t obtain a copyright to use the master recording. But he didn’t need to do that because he recorded his own performance of the composition.
Scott Hervey:
A copyright in the recording would only have been necessary if Gravy had actually used part of the existing master recording in his track as a sample, but he didn’t do that, and thus he did not need to get a master use license. For the same reason, Astley’s partial ownership in the copyright of the master recording of Never Going to Give You Up was not infringed because Gravy did not sample the master recording in his song. Apparently, Gravy had, I believe it was, his producer sings that part of the track. But as Josh said, that doesn’t mean that copyright won’t be an issue in this dispute.
Josh Escovedo:
That’s right, Scott. In fact, the Copyright Act is one of the two key reasons why Yung Gravy is likely to walk away from this lawsuit relatively unscathed. The Copyright Act expressly provides that a state cause of action is preempted if it creates rights that are equivalent to any of the exclusive rights within the general scope of copyright in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright.
Josh Escovedo:
Of course, express preemption is not necessary for a law to be preempted, as the law also provides for implied conflict preemption, which occurs when a state law poses an obstacle to the accomplishment and execution of the full purpose and objectives of Congress. Here, there’s a strong argument that the Copyright Act was intended to address this exact situation.
Josh Escovedo:
Section 114(b) of the Copyright Act provides that the rights of an owner of a copyright and a sound recording are limited to the right to duplicate the actual sounds in the recording and the right to prepare derivative works in which those actual sounds are rearranged, remixed, or otherwise altered in sequence or quality. In other words, as the copyright office has published, permission from the copyright owner of a preexisting sound recording is not necessary when interpreting a musical work, regardless of how similar the new record may be to an old recording.
Josh Escovedo:
This is because under United States copyright law, the exclusive rights in sound recordings do not extend to making independently recorded soundalike recordings. So the question here is whether Astley’s right of publicity claim should be preempted by these provisions of the Copyright Act since Astley wouldn’t be able to state a claim for copyright infringement.
Scott Hervey:
Interestingly, the Ninth Circuit has had two opportunities to address this issue. Midler versus Ford Motor Company and Waits versus Frito Lay. In both of these cases, the Ninth Circuit addressed claims involving the right of publicity for the use of a soundalike in the commercial context of a commercial. One was for Ford and the other was for a Frito Lay product.
Scott Hervey:
In Midler, the Ninth Circuit found that the claim wasn’t preempted by the Copyright Act because Midler was not seeking damages for Ford’s use of the song at issue, but was instead seeking damages for Ford’s use of her voice, for the use of her name, voice, and likeness, which was not copyrightable. In Waits, the Ninth Circuit indicated that as a three-judge panel, they were not at liberty to reconsider Midler and would not have disturbed the ruling, even if they could. The preemption analysis in both claims is sparse.
Josh Escovedo:
That’s right, Scott. And Astley’s counsel actually mentions the Midler case repeatedly in the complaint, interestingly enough. But I think that both of those cases were wrongly decided, at least with respect to the preemption analysis, which, as you mentioned, is pretty sparse. So neither Midler nor Waits bothered to consider whether the plaintiff was suing over the use of the plaintiff’s voice in the abstract or as applied to a specific recorded performance.
Josh Escovedo:
If the courts had taken the time to consider that fact, it seems to me that they would have had to find that the right of publicity claim, at least in this context, should be precluded by the Copyright Act, which permits soundalike recordings under federal law. It would seem to me that to allow a right of publicity claim to move forward, despite this clear permissive use under copyright law, it would be a direct conflict between the right of publicity and the Copyright Act.
Scott Hervey:
That’s interesting, Josh. I don’t know if I agree with you. At the same time, I don’t know that I disagree. I just haven’t given this enough thought yet. But I will say this, if you are correct, then that means that it’s open season for celebrity singers for the ability to use their voice or the sound of their voice to sell products or services in commercials, which is different.
Scott Hervey:
It’s a different scenario than what’s at play here in the Yung Gravy-Astley case, where Yung Gravy is using a singer who sounds a lot like Rick Astley in a creative work, a creative speech, non-commercial speech, as opposed to Waits and Midler, where the soundalike singer was used in commercial speech, which arguably or understandably is entitled to lesser degree of protection under the First Amendment than non-commercial speech. It’s interesting, though. You raise an interesting point. But let’s talk about this other potential defense as well.
Josh Escovedo:
Sure. And just to briefly respond to what you just said, Scott, I think that if the courts were to find that there should be preemption, I think that preemption would need to be narrowly tailored. It would have to be in this context where the soundalike… It can’t actually be the celebrity, it would have to be a soundalike. And then I think it would have to be in the context of a work that had already been reduced to a prior recording. And in that context, I think that preemption would make sense.
Scott Hervey:
But I think both in Midler and Waits, they were prior recordings. They were recordings that Midler and Waits had already made, I believe. And the advertising agencies just got a soundalike to sing those exact songs. So, what the preemption argument does is it blows a big hole in 3344 where you’re using a renowned singer’s sound, voice to sell goods and services where that singer did not authorize their use to sell those goods and services, maybe doesn’t believe or support that organization or company that’s selling those goods and services. I don’t know. I just see this as being extremely problematic.
Josh Escovedo:
Sure. I mean, it’s a fair point. That is certainly true. But I suppose if we think about it, that same situation would be permissible under the Copyright Act, so long as the party who utilizes the soundalike actually procured the license to utilize the copyright in the composition. And the celebrity or artist wouldn’t be able to do anything about that.
Scott Hervey:
Well, true, they wouldn’t be able to do anything about it if the advertising agency secured a sync license, but the singer who sings the song for the commercial, arguably, going along with this hypothetical, wouldn’t sound like Tom Waits or Bette Midler. And that’s the difference.
Scott Hervey:
Maybe the preemption argument needs to focus on whether it’s commercial speech or non-commercial speech and the degree of protection that that type of speech is entitled to under the First Amendment because as you know, commercial speech is entitled to a lesser degree of protection than non-commercial speech under the First Amendment. Interestingly, maybe that’s where the case would have to draw a line.
Scott Hervey:
While we’re talking about 3344, I think Rick Astley has a problem there anyway. Let’s assume that the preemption doesn’t apply. I think he’s got a problem anyways. I don’t think he’s got a case under California Civil Code Section 3344, which specifically addresses, as we’ve just been discussing in the case of Waits and Midler, the use of a celebrity’s name, voice, or likeness on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise, goods, or services. What do you think about that? Do you agree?
Josh Escovedo:
Yeah, I agree with you on that, Scott. I think, in fact, that the 3344 claim is likely to be dismissed at the onset of this case, assuming there’s motion practice, which I fully anticipate. It’s possible that Yung Gravy will first remove this case to federal court because the federal judiciary more commonly deals with these issues of copyright law and federal preemption. So, it’s possible he’ll remove first, in which case the plaintiff would be facing a motion to dismiss as opposed to a demur.
Josh Escovedo:
But for purposes of the discussion, really the same thing here. But the question would be, does 3344 permit a claim in this specific context? And it does not. So, I think that the plaintiff will have to pursue a common law claim for the violation of his right of publicity. But I don’t think he has grounds to move forward under 3344.
Scott Hervey:
I agree with you. And let’s remember the de Havilland versus FX case where there was a 3344 claim that was raised. The court assumed for argument’s sake that a television program is a product, merchandise, or good, but it found that de Havilland’s claim failed. The court noted that the speech in FX is fully protected by the First Amendment, which safeguards the storytellers and artists who take the raw materials of life, including the stories of real individuals, ordinary, extraordinary, and transform them into art, be it books, movies, plays, or in this case, sound recording.
Scott Hervey:
The fact that FX did not get de Havilland’s rights to use her name, voice, or likeness did not change the court’s analysis. I think the court’s ruling in the Havilland that the First Amendment, for the purposes of a creative work, outweighs somebody’s right of publicity under 3344 will rule the day here as well.
Josh Escovedo:
Right. And that brings us back to the other defense that I was mentioning, Scott. And I think at this point, it’s the elephant in the room, and that’s the First Amendment. Midler and Waits both involved commercial use, so not a truly expressive work. Here, Betty (Get Money) is clearly an expressive work, and as such, it’s entitled to significantly greater protection than commercial speech, which was what was at issue in Midler and Waits.
Josh Escovedo:
So as a result, the court will give Gravy more leeway in terms of how he could have imitated Astley’s voice without violating the right of publicity. Of course, the distinction between the expressive work in this case and the commercial work in the Midler case and the Waits case could also serve as a basis for distinguishing this situation from the Midler precedent without having to overturn it for purposes of the preemption analysis that we had been discussing.
Scott Hervey:
Yeah, it’s a significant distinction. It’ll be interesting to watch this case if this is litigated through motion practice and if a court does find… Let’s assume they don’t find preemption, but in fact, they do find that this is not a violation of 3344. This actually might open up a whole new industry or an alternative to sampling. If you want to sample an audio clip, you don’t necessarily need to get a master-use license. You can just get the sync and rerecord that hook and drop it into your track and not have to deal with artist permission.
Scott Hervey:
This has a bigger ramification than this Rick Astley, like this narrow issue of the use of this hook in Rick Astley’s hook in this song. It can have a much bigger impact on the music industry as a whole.
Josh Escovedo:
Right. I’m sure the entire music industry is watching this one.
Scott Hervey:
Yeah. Well, we’re going to watch it too, and we’ll report back if there’s some motion practice.
Josh Escovedo:
Thanks, Scott.
Scott Hervey:
Thanks, Josh.
Josh Escovedo:
Thanks for tuning into this installment of the Briefing by the IP Law Blog. Don’t forget to subscribe to our podcast and YouTube channel. Leave a positive review. And for additional content, visit our website at the iplawblog.com. Thank you.
Getty Images filed a lawsuit against startup tech company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Cases discussed:
- Getty Images (US), Inc. v. Stability AI, Inc.
- Visual Arts v. Goldsmith
Show Notes:
Josh:Getty Images, a preeminent global visual content creator and leading source for visual content, has filed suit against startup technology company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent or compensation. Getty Images also alleges that Stability removed or altered Getty Images’ copyright management information, such as watermarks, and provided false copyright management information. Accordingly, Getty Images’ complaint includes claims for copyright infringement, providing false copyright management information in violation of 17 U.S.C. section 1202(a), removal or alteration of Copyright Management Information in violation of Section 1202(b), trademark infringement, unfair competition, trademark dilution, and deceptive trade practices under Delaware law. In order to understand the nature of the claim a bit better, it’s important to understand what these parties do. Scott, do you mind providing a brief overview of what the parties do for our listeners?
Scott:
Sure. Getty Images is a visual media company and a supplier of stock images, editorial photographs, video, and music for businesses and consumers. It has over 477 million assets, and it generates revenue by licensing the right to use these assets to creatives, the media, corporate entities, and general consumers. Many of you have probably seen their images online, complete with the Getty Images watermarks. They’re all over the place. On the other side of the case, we have Stability AI. Stability AI is a startup technology company that has created an image-generating platform called Stable Diffusion that uses AI to generate computer-synthesized images in response to text prompts. There is an open-source version of Stable Diffusion, as well as a revenue-generating version known as DreamStudio. To simplify the description of what Stability AI does, we can refer to the example used by Getty Images in its Complaint. If a user wanted to generate a photo of a cat wearing a scarf, the user would type “cat wearing a scarf” into Stability AI’s platform, and the platform would generate an image of a cat wearing a scarf. Of course, the returned image would not be a real photo of a cat wearing a scarf, it would be a computer-generated version of a cat wearing a scarf. And it is the process of how the AI platform generated that image that is at the heart of this Complaint.
Josh:That’s exactly right. In order to generate images in response to prompts submitted to Stability’s platform, the platform relies on various images that Stability utilized to teach its platform what a cat is and what a scarf is. The platform then utilizes those images to generate a synthesized version of what the user has requested, so in the example above, a cat in a scarf. With that understanding, we can discuss the specifics of Getty Images claim. According to Getty Images, Stability copied over 12 million photographs from its portfolio and used those images to train its Stable Diffusion model. Getty also claims that Stability used associated text and metadata, which it contends are also protected as copyrighted expressions to train its model. This, according to Getty Images, constitutes copyright infringement.
Scott:Getty explains in its complaint that its assets are highly desirable for use in connection with AI and machine learning because of its high quality and because the assets are accompanied by content-specific, detail captions, and rich metadata. Apparently, Getty Images has licensed millions of digital assets to technology innovators for various purposes related to AI and machine learning. Of course, here, Getty Images alleges that Stability didn’t even attempt to negotiate a license with Getty Images for the content, but instead copied the images without Getty’s consent, in violation of the Getty Images terms of use and allegedly United States Copyright Law.
Josh:But according to a variety of AI technology companies, the practice of using copyrighted materials for the purpose of training an artificial intelligence platform constitutes fair use under United States Copyright Law. Whether that’s true or not remains undecided. The rise of technology has created this issue of first impression, so it remains to be seen how the Courts will apply the fair use doctrine in this context, which, as many of you know, permits the use of copyright-protected work, in certain contexts, to promote freedom of expression and for other purposes. In my opinion, this isn’t an issue that will be decided through just one case. Fair use is a multi-factor analysis that takes a number of items into consideration when determining whether a use was fair under the doctrine. Two of the most significant factors are the purpose or nature of the use and whether the allegedly fair use has an effect on the market for the protected work. With that said, it may be the case that using copyright protected works to train a platform would constitute fair use, but using it to generate new content may not be. In other words, it may be fair to use someone else’s IP to train your platform, but if you use it to generate a new product that may not be fair.
Scott:
And its even a bit more nuanced than that. For example, if millions of photos were provided to an image generating platform and it generated a novel image, it seems unlikely that that would constitute copyright infringement. On the other hand, if the platform only had a small sample of photos to work with, and if perhaps those photos were from the same creator, the resultant product may constitute infringement.
Josh:Exactly. And as to the latter, exactly how different the resultant product would need to be to be considered transformative in nature and therefore protected by fair use is a question that is currently before the Supreme Court in the matter of Andy Warhol Foundation for the Visual Arts v. Goldsmith, which has already been argued and should be decided this term. As many of you know, that case deals with how different a work must be from the original protected work to be considered transformative and not infringing. That decision will have consequences in the AI-IP disputes as well.
Scott:
There are so many interesting IP issues involved in this dispute, and it’s just getting started. I do not foresee this case resolving right away, so we’ll be watching very closely. Thanks for sharing, Josh.
The jury hearing Hermes v. Rothschild found the artist’s ‘MetaBirkin’ NFTs constitutes trademark infringement and trademark dilution. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:The jury hearing Hermes v Rothschild found Rothschild liable for trademark infringement and trademark dilution. The matter went to trial after the judge dismissed both Hermes and Rothschild’s motions for summary judgment. Should the court have sent the matter to the jury and what may be the basis for an appeal. We are going to discuss this case on the next installment of the briefing
Scott:Mason Rothschild is an artist who has created a series of digital artworks called MetaBirkins. The artist claims that each work comment on Hermès’ “Birkin” handbags. is a unique, fanciful interpretation of a Birkin bag. Rothschild claims that the depiction of each bag as fur covered, Comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags. He has over 100 pieces as part of the collection and has sold over 1.1 million.
Josh:Hermes filed suit in January 2022 alleging trademark infringement and trademark dilution. Rothschild moved to dismiss, relying heavily on Rogers v Grimaldi. The court dismissed Rothschild’s motion because the amended complaint included sufficient allegations that Rothschild entirely intended to associate the MetaBirkins mark with the popularity and goodwill of the Hermes Birkin mark rather than intending an artistic association
Scott:Shortly thereafter both parties moved for summary judgment. Although the court found that the Hermes’ claims should be analyzed under the Rogers test, the court found that a genuine issue of material fact remained as to whether under the Rogers test Rothchild’s NTFs infringe and/or dilute Hermes’ trademarks.
Josh:The Rogers court held that where the defendant’s product is artistic or expressive, the Lanham Act must be interpreted “narrowly in order to avoid suppressing protected speech under the First Amendment.” The two parts of the Rogers test are artistic relevancy and whether the use of the mark is explicitly misleading.
Scott:Citing to a 2012 Southern District of NY case, Louis Vuitton Mallatier S.A. v. Warner Bros. Entm’t Inc., The artistic relevance prong of the Rogers test “ensures that the defendant intended an artistic – i.e., non-commercial association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark’s popularity and good will. .
Josh:
Under Rogers, however, a showing of artistic relevance is easily satisfied: it is met “unless the [use of the mark] has no artistic relevance to the underlying work whatsoever,” and was instead chosen merely “to exploit the publicity value of [the plaintiff’s mark or brand].”
Scott:This court, in denying the cross motions for summary judgment said that “there is a genuine factual dispute as to whether Rothschild’s decision to center his work around the Birkin bag stemmed from genuine artistic expression or, rather, from an unlawful intent to cash in on a highly exclusive and uniquely valuable brand name”
Josh:In the courts order it cited to Rothschild’s comments to investors that “he doesn’t think people realize how much you can get away with in art by saying ‘in the style of'” and that he was “in the rare position to bully a multi-billion-dollar corporation” as being probative of an intent to exploit.
Scott:
Right, and this was despite the fact that the court recognized the existence of evidence which suggested that Rothschild viewed the project as a vehicle to comment on the Birkin bag’s influence on modern society. To me it seems that the court may have evaluated the weight or veracity of the artistic relevance proffered by Rothschild. Yes, Hermes offered evidence tending to show that Rothschild true intent was to make money and “capitalize on the hype”. I don’t think the court can do that. In Dillinger, LLC v. Electronic Arts, Inc the 9th circuit said ““not the role of the Court to determine how meaningful the relationship between a trademark and the content of a literary work must be; consistent with Rogers, any connection whatsoever is enough for the Court to determine that the mark’s use meets ‘the appropriately low threshold of minimal artistic relevance.’”
Scott:Even where the use of a trademark bears “some artistic relevance” to an underlying artistic work, the First Amendment does not protect such use if it “explicitly misleads as to the source or the content of the work. A work is “explicitly misleading” if it “induces members of the public to believe” that it was created or otherwise authorized by the plaintiff. In the 2nd circuit, “This determination is made by application of the Polaroid factors,” As the 2nd Cir said in Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., the opinion written by the same judge who wrote the Rogers opinion, If, after applying the Polaroid factors, a likelihood of confusion is found, it must be “particularly compelling to outweigh the First Amendment interest recognized in Rogers. The Rothschild court said “Because there remain substantial factual disagreements between the parties with respect to many — if not most — of the eight Polaroid factors, any of which could be dispositive to the outcome, the Court declines to grant summary judgment for either party on this issue. Does this sound like the court kept in mind what the 2nd cir had said in Twin Peaks?
Josh:In Rogers v Grimaldi, the court gave some examples of what would constitute “explicitly misleading” such as a book title “Nimmer on Copyright” for a treatise that was not authored by Nimmer, or “Jane Fonda’s Workout Book” for a book Jane Fonda had nothing to do with.
Scott:According to the motions for summary judgment filed by both parties, there doesn’t see, to be that type of evidence. Hermès pointed to a study it commissioned that found a 18.7% net confusion rate among potential consumers of NFTs, and noted third party social media posts which mistakenly assumed an association and the fact that an IP lawyer in Paris wrongly stated that Hermès and Rothschild collaborated on the METABIRKINS NFTs. According to Hermes, this lawyer thought this because “the names of the NFTs include the famous trademark ‘BIRKIN’ and reproduced the shape of the bag.” Rothschild pointed out the fact that he never made any affirmative statement linking his project and. When several publications mistakenly reported an affiliation between Hermès and the MetaBirkins project. To the contrary, Rothschild’s publicist asked that these publications issue corrections regarding the mistaken affiliation. Rothschild included a disclaimer. Josh, do you think this rises to the level of explicitly misleads as to the source or the content of the work
Scott:And as to Hermes dilution claim, Jack Daniels v VIP products held that the noncommercial use of a mark is expressly excluded from being actionable as blurring or tarnishment. In VIP the court’s stated that “speech is noncommercial if it does more than propose a commercial transaction” and that the “use of a mark may be “noncommercial” even if it is used to “sell” a product”. The court allowed Hermes dilution claim to go forward.
Journalist Bob Woodward conducted an audio interview with former President Donald Trump for his book ‘Rage’ and later released the tapes as its own audiobook. Now, Trump is suing for copyright infringement. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.
Cases discussed:
- TRUMP v. SIMON & SCHUSTER INC et al
- Falwell v. Penthouse
- Community for Creative Non-Violence v. Reid
Read Scott’s article about this dispute on the IP Law Blog here.
Watch this episode on the Weintraub YouTube channel here.
A Florida bankruptcy court has terminated FTX’s naming rights agreement for an NBA arena. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel, here.
The recent Reilly v. Wozniak 9th Circuit decision upheld a 1950s ruling that requires a promise to pay to be present for an implied contract to exist. Scott Hervey and Josh Escovedo discuss this case and how the Desny decision applies to idea theft cases in California in this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
S: In a previous episode we discussed recent applications of the 1950 case, Desny v Wilder, which set the ground rules for an idea theft case in California. A recent non-citable 9th Circuit opinion on an idea theft looks at the promise to pay element. We are going to talk about this on the next installment of The Briefing by the IP Law Blog.
In California, an idea theft claim is based in large part on the California supreme court case of Desny v Wilder. In Desny, the plaintiff Victor Desny wrote a script depicting the real-life story of Floyd Collins, a boy who made headlines after he was trapped in a cave eighty feet underground. In an effort to market his script, Desny called Billy Wilder, a writer, producer and director at Paramount Pictures. Desny could not get through to Wilder and subsequently stripped his scrip to the bare facts so that Wilder’s secretary could copy it in short-hand over the phone. After reading his synopsis, Desny told Wilder’s secretary that Wilder and Paramount could use the script only if they paid him a reasonable amount for doing so. Shortly thereafter, Wilder created his own movie script mirroring Densy’s. Because Densy’s script was based on historical facts, and because Desny only conveyed the bare minimum of those facts to Wilder’s secretary, both parties conceded for the purpose of the appeal that the synopsis was not sufficiently original to form the basis of a federal copyright claim. The Court, however, held that Densy stated sufficient facts to establish the existence of an implied-in-fact contract between the parties. The California Supreme Court explained that where an idea is furnished by one party to another, a contract sometimes may be implied even in the absence of an express promise to pay; a contract exists where “the circumstances preceding and attending disclosure, together with the conduct of the offeree acting with knowledge of the circumstances, show a promise to pay.”
J: In the recent case of Ralph Reilly v. Steve Wozniak, et al, Reilly, an IT professor, claimed that he had a verbal agreement with Wozniak to create a new high-tech online university based on a course design and outline developed by Reilly. Apparently, at least accordingly to Reilly, the two shook hands on a deal, and Reilly developed the course outline. Later Reilly learned that Wozniak had partnered with Southern Career Institute Inc. to create “Woz U.” Reilly claims that he went to two pitch meetings with Wozniak. Wozniak claimed that he never agreed to compensate Reilly and further that he never made any money off of Reilly’s idea because Southern Career Institute reached out to Wozniak to license his name and likeness.
S: In an appeal from the district court’s dismissal of Reilly’s contract claim, Reilly argued that a party claiming breach of a contract for conveyance and use of an idea does not need to show that the claimant offered the idea to the defendant for sale, because California law provides a broad equitable basis to find implied-in-fact contracts for the use of ideas. Reilly alleged that it was understood that he and Wozniak would “jointly market,” and be his “partner in exploiting,” Reilly’s idea. The court said that these facts, as alleged by Reilly, do not show an offer for sale but rather the intent to enter into future business relationships. According to the 1987 9th Circuit case of Aliotti v R. Dakin and Co., “no contract may be implied where an idea has been disclosed not to gain compensation for that idea but for the sole purpose of inducing the defendant to enter a future business relationship.” It was in this precise context, the contemplation of a partnership, that Aliotti and Faris held that an idea must be disclosed for sale for an implied-in-fact contract to exist. As such, the 9th Circuit said that the district court did not err in granting summary judgment because there was no genuine dispute of fact as to whether Reilly offered his idea to Wozniak for sale.
J: What about the 9th Circuit’s 2011 holding in Montz v Pilgrim, in which the court said that it sees “no meaningful difference between the conditioning of use on payment … and conditioning use on the granting of a partnership interest in the proceeds of the production.” This ruling seems contrary to that.
S: The 9th Circuit did say that in Montz, and I can see how readers of the short ruling could be confused. To understand what the 9th Circuit is saying here, you have to go back to the district court’s ruling on the motion for summary judgment. There the district court drilled down on what Reilly was pitching to Wozniak. Reilly wasn’t pitching an idea for Wozniak to acquire. Rather, what Reilly pitched was the concept that Reilly could use Wozniak’s name as part of a pitch to potential financiers for an online computer school. An implied-in-fact contract requires a “reasonable expectation of payment which can be inferred from the facts and circumstances.” The district court found that the evidence establishes that Reilly initially solicited Wozniak’s “endorsement” to start the Woz Institute of Technology, but not an agreement for payment. The alleged “deal” between Wozniak and Reilly – strongly contested by Wozniak – happened much later. As you know, that won’t support a Desny claim
J: The court in Desny commented on that specific factual scenario: “[t]he idea man who blurts out his idea without having first made his bargain has no one but himself to blame for the loss of his bargaining power. The law will not in any event, from demands stated subsequent to the unconditioned disclosure of an abstract idea, imply a promise to pay for the idea, for its use, or for its previous disclosure.”
S: The district court found that a reasonable juror could not conclude that Plaintiff and Wozniak formed an implied-in-fact contract under Desny because that Plaintiff did not seek to sell anything to him. I think the 9th Circuit potentially confused the issue with its discussion of Aliotti when it could have just said that the district court did not err in granting summary judgment because there was no genuine dispute of fact as to whether Reilly offered his idea to Wozniak for sale.
The Supreme Court will bring finality to several IP disputes this year. Scott Hervey and Josh Escovedo provide an overview of the trademark and copyright cases to watch on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Josh:
It’s always good to start off the year with an overview of the trademark and copyright cases to watch for the year. This year, we have a couple of cases that we’ve previously discussed on The Briefing when they were on appeal with the circuit courts, but we will now see the Supreme Court bring finality to the issues.
Scott:
This sounds like great information to me, Josh. Let’s get into it.
Josh:
We’ll start with Andy Warhol Foundation v. Goldsmith, which we’ve discussed at length on this show. In that case, the Supreme court will decide whether the Andy Warhol Foundation made fair use of a photo of the late artist Prince. In short, the matter at issue will address when a work is sufficiently transformative to qualify for fair use protection under the Copyright Act. In the matter below, the Second Circuit reversed the decision of the District Court and held that the Warhol work was not transformative because it maintained the “essential elements of its source material” and was not “fundamentally different and new.” This is the first time since 1994 that the Supreme Court has addressed fair use in the context of an artistic work. This is one I’ll be looking forward to.
Scott:
Next, we have Abitron Austria GmbH v. Hetronic International. In that case, US-based remote-control maker Hetronic International sued its former European partners Abitron Austria for trademark infringement. The Defendants in that action argued that since 97% of the sales related to the verdict were “purely foreign” and no one affiliated with the companies was based in the United States, Hetronic International needed to pursue the action abroad. Of course, Hetronic disagrees and contends that trademark law under the Lanham Act extends beyond U.S. Boards. This case should bring clarity to an issue that is constantly disputed in sizable Lanham Act cases—the materiality of foreign sales. For that reason, TM practitioners will certainly be keeping an eye on this one.
Josh:
Next up is my favorite case of the year. Jack Daniel’s v. VIP Products. As many of you know, this is the Ninth Circuit dispute arising out of VIP Products creation of a parodic dog toy styled like a Jack Daniel’s bottle but called Bad Spaniels. The toy is filled with comedic references related to dogs, but it’s no laughing matter to Jack Daniel’s. The case will determine the proper balance between trademark rights and free speech. The district court and the Ninth Circuit found that VIP’s use was protected by the First Amendment. Now, the Supreme Court will determine whether the Ninth Circuit made the right decision, and will provide some guidance and hopefully clarity on how these competing interests must be balanced. As we’ve discussed in the past, there is a difference in opinion on how these matters should be addressed and given the low bar for artistic relevance, it is imperative that the Court provide guidance, as these disputes will continue to arise.
Scott:
We’re definitely looking forward to that one. Next up, we have Genius v. Google. This action is present before the Supreme Court, but the Court has not yet granted cert. In this case, Genius sued Google for breach of contract over music transcriptions. In the petition for cert, Genius argued that the Second Circuit and the District Court wrongfully found that a preemption clause in the Copyright Act precluded its breach claim against Google and LyricFind for allegedly stealing song lyrics from its site for Google’s search result. The Second Circuit’s decision, affirming the decision below, held that Genius hadn’t shown that its claims are “qualitatively different” from a copyright claim on lyrics, which notably it didn’t hold the copyright to. The petition states that the Court must clarify whether the Copyright Act’s preemption clause permits a plaintiff to use “state-law contract remedies to enforce a promise not to copy and use its content.” The Supreme Court has requested the Solicitor General’s opinion on whether copyright law preempts the breach of contract claim. All in all, this sounds like pretty interesting case as well.
Josh:
It sure does. And finally, we have Green v. DOJ. In that case, two computer scientists have challenged the Digital Millennium Copyright Act’s ban on circumventing digital locks on copyrighted works. The engineers filed suit against the federal government seeking to enjoin enforcement of the DMCA’s anti-trafficking and anti-circumvention provisions. The district court refused and the DC Circuit affirmed the decision below. Apparently, the DC Circuit also commented that it lacks jurisdiction over claims of facial unconstitutionality on First Amendment grounds because the District Court did not rule on that issue. The case has been remanded to the District Court for further consideration. I suspect this case will be pending for a while, but we’ll keep an eye on it just the same.
Scott:
In fact, we’ll keep an eye on all of these cases. Thanks for sharing, Josh.
The start of a new year is a good opportunity for companies to review and take stock of their intellectual property assets. Scott Hervey and Josh Escovedo talk about the importance of this review on this episode of The Briefing by the IP Law Blog.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
As 2023 commences, it’s time for companies to take review and take stock of their intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property, and those companies that understand the value of intellectual property and take active steps to secure and protect those assets. We are going to talk about this on this next installment of the Briefing by the IP Law Blog
Scott:
Intellectual property is a company asset, just like inventory. No CEO or CFO would think of running a company where they didn’t know the extent of company inventory. Likewise, it makes no sense for a company not to have a firm understanding of all of its potential intellectual property assets. Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks, or registering copyrights, a yearly review can prove beneficial.
Josh:
Understanding the extent of a company’s IP holdings usually start with what’s known to the company, such as all registered copyrights, trademarks or patents, domestic and foreign. After compiling a list of those IP assets, the next step would be to review what the company is using and compare that to the list of registered or pending IP. For trademarks, a good place to start is the company’s marketing and promotional materials, website, mobile app and social media. If these materials show use of trademarks, logos, or slogans that are not already the subject of a trademark registration or application, then these marks should be cleared for use to prevent unintended liabilities, and they should be considered for possible registration.
Scott:
Don’t overlook company social media accounts, domain names and toll-free numbers, which may also serve as potential trademarks. And be sure to confirm that all domain names and social media accounts are registered to the company; you would be surprised at how many times a domain name or social media account is registered to an individual company employee and not the company itself. Also, if the company has changed the graphic user interface to any of its technology products or has changed product packaging, point of sale displays, or product design, these may also be protectable trade dress.
Josh:
When looking into company assets protectable under the federal copyright laws, one should check the company’s website, marketing materials, manuals, YouTube videos, podcasts, posted content on Instagram, TikTok and the like, photos, software, blog posts, articles, white papers, etc. Although the cost benefit analysis of securing protection may result in a conclusion that registration does not economically make sense for every single piece of content, the company should at least maintain inventory of its copyrightable works.
Scott:
A company should always be aware of any new inventions under development, and its good practice to investigate the status of any inventions developed by company employees during the past year. Such inventions may be protectable under federal patent laws. An inventor must secure a patent application within a very short period of time in order to prevent the work from falling into the public domain. Companies that routinely produce new inventions should put into place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public.
Josh:
In addition, a company should take stock of those items that it considers proprietary trade secrets. Trade secrets are items not generally known by the public but have economical value and are the subject of reasonable precautions to maintain their secrecy. In general, trade secrets have no duration of protectability and there is not a method for registering a trade secret in the United States.
Scott:
Items that may be protected by state trade secret laws include software source code and related documentation; customer lists, employee knowledge, training and experience; proprietary terminologies, definitions and formulas; specially developed customer information; sales practices; negative information such as negative results from research and development projects; and customer and consumer surveys. Each of the above could constitute proprietary trade secrets depending upon whether its owner took reasonable steps to maintain its trade secret status.
Scott:
A special note about customer data. In addition to regularly reviewing IP assets, a company should regularly make sure that its privacy and data use policies comport with the manner in which it collects and uses customer and employee data. In the US, privacy laws are generally driven by state law, but there may be applicable federal law depending on the nature of the information collected. If a company conducts business internationally, it may have to adhere to the privacy laws of foreign countries.
Josh:
After looking at all known IP assets, look into what may be unknown. Sometimes marketing departments and independent divisions spin out valuable intellectual property assets that, for one reason or another, never made it past the desk of general counsel or a responsible executive.
Scott:
Intellectual property rights acquired by way of contractual agreements may sometimes be overlooked. Items that were developed or created through the use of independent contractors, such as consultants, photographers, website and application developers, software developers, advertising agencies, graphic artists, production companies, and the like may be company assets depending on contract terms. If the company intends to own all of the rights, including any intellectual property rights, in the works created by these independent contractors then the agreements with these independent contractors should have proper intellectual property vesting language – such as work made for hire language and/or an assignment provision. If the agreements with these independent contractors were only verbal or did not contain such language, then the company needs to make another resolution: make sure it actually owns the intellectual property it paid for. Sticking to this resolution would include a review of standard independent contractor and employment agreements to confirm they have proper assignment language and confidentiality provisions.
Josh:
Unintended liabilities can also result from the company’s interaction with independent contractors that have been hired to create something for the company. Whether it is a website designer hired to redesign a company website, a software developer hired to work on a company’s app, a graphic artist hired to create a new logo or artwork, or a copyrighter hired to write content, we have seen countless instances of these types of vendors taking shortcuts and “borrowing” assets from existing sources. Unless a company executive is closely managing these vendors when they do their work, it would difficult to determine whether or not they engaged in acts that may be considered infringement until such time as the company receives a cease and desist letter.
Scott:
However, there are precautionary steps a company can take to prevent unintended liabilities. A company should always have written agreements with vendors which unconditionally requires them to indemnify the company for any claims of infringement resulting from the works they were hired to create. Additionally, a company should require these vendors to carry insurance that would provide coverage for such a claim (either E&O or professional liability insurance) and that the company be named an additional insured on such policies.
Josh:
Lastly and most important, the company should have a general understanding of who they are doing business with. A little time spent researching whether the vendor has negative claims with the Better Business Bureau, has licensing issues, generally has satisfied customers, whether there are any lawsuits pending, etc., can tell a company quite a bit about the work habits and ethics of any potential vendor.
Scott:
After a working intellectual property inventory list has been created, the next step is to identify those items that are already the subject of active protection efforts (i.e. pending or issued registrations) and those that are not. Then, the company executives, along with corporate counsel and if appropriate outside intellectual property counsel, should review the list of unprotected intellectual property assets and determine whether taking steps to secure protection makes economic sense. Sometimes, a company might find that the cost to secure protection of an intellectual property asset outweighs the potential economic value of that asset or that protection would be duplicative.
Trademarks perform a number of important functions. Scott Hervey and Josh Escovedo discuss the spectrum of trademark strength in this episode of The Briefing by the IP Law Blog.
Watch this episode here.
Show Notes:
Scott:
Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog
Scott:
Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001.
Josh:
In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share.
Scott:
Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse.
Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo. A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell. As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark.
Scott:
And while it’s true that a trademark can be anything, not everything can and should be a trademark.
Josh:
That’s right Scott. There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable.
Scott:
Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individuals consent Also, marks which consist or comprise of a portrait of a deceased president of the United States are not registrable during the life of the president’s widow except by written consent of the widow In addition, certain organizations, by acts of Congress, have been granted exclusive rights to use certain marks. For example, the United States Olympic Committee has been granted exclusive right to use a number of “Olympic” symbols, marks and terms
Josh:
Marks which describe the intended purpose, function or use of the goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are really not the best choice for a trademark. This type of mark is considered merely descriptive and is not registerable on the principal register absent establishing secondary meaning.
Scott:
Its iron Josh how often companies gravitate toward a descriptive mark. The penchant for a descriptive mark was explained to me by a client – they work because the consumer knows exactly what they are getting. That’s useful in the short term but does nothing for brand building.
Josh:
Here is a few examples of descriptive marks – NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks. The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive.
Scott:
The major reasons for not protecting marks that are merely descriptive is to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use language which naturally describes the goods or services, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own product
Josh:
Marks that are merely self-laudatory and descriptive of the alleged merit of a product are regarded as being descriptive. Laudation does not per se prevent a slogan or mark from being registerable. Like other descriptive marks, a mark that is self-laudatory may be registerable upon establishing secondary meaning. However, courts have refused registration even on the Supplemental Register of marks that are so highly laudatory and descriptive of the alleged product that they are incapable of functioning as a trademark
Scott:
One step up from descriptive marks, but miles away as far as protectability goes, are suggestive marks. Suggestive marks are registerable on the Principal Register without proof of secondary meaning. Suggestive marks are those which, while not really descriptive of the product’s qualities, nevertheless, suggest some benefit or property of the product. An example involves ROACH MOTEL® for insect traps, in which this mark was enforced against an infringer using “Roach Inn.” The Court explained,
We do not find the mark ROACH MOTEL® to be a merely descriptive mark. While roaches may live in some motels against the will of the owners, motels are surely not built for roaches to live in. Hence, the mark is fanciful on conception. Indeed, its very incongruity is what catches one’s attention
Josh:
The determination of whether a mark is merely descriptive and therefore not registerable absent evidence of secondary meaning or merely suggestive has always been a challenging task. The Trademark Trial and Appeal Board (the quasi-judicial body responsible for adjudicating issues which arise concerning the registration of a trademark ) has opined that there is “a thin line of demarcation involved in making a determination as to whether a term or slogan is suggestive or merely descriptive and, apropos, thereto, when a term stops suggesting and begins to describe the goods in connection with which it is used, it is, at times, a difficult question to resolve.”
Scott:
The Board suggested that in determining whether a mark has crossed the threshold from suggestiveness to descriptiveness, the following factors should be analyzed: (1) is the mark used in a trademark sense and not in a descriptive manner to describe the goods; (2) is the mark an expression that would be or is commonly used to describe the goods; (3) does the mark possess some degree of ingenuity in its phraseology; (4) does the mark say something at least a little different from what might be expected from a product, or say expected things in an unexpected way; and (5) does the mark possess more than a single meaning, namely, a double-entendre, which imparts to it a degree of ingenuity and successfully masks or somewhat obscures the intended commercial message
Josh:
The strongest marks are those which are coined words, having no intrinsic meaning or arbitrary words which, although they might exist as words in the English language, have no conceivable rational connection to the product, e.g. KODAK® (coined) for film and CAMEL® (arbitrary) for cigarettes. Because such coined or arbitrary marks are inherently distinctive, no proof of secondary meaning is necessary before a court will protect the trademark rights of the senior user of such marks.
Trademarks perform a number of important functions. Scott Hervey and Josh Escovedo discuss the spectrum of trademark strength in this episode of The Briefing by the IP Law Blog.
Watch this episode here.
Show Notes:
Scott:
Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog
Scott:
Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001.
Josh:
In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share.
Scott:
Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse.
Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo. A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell. As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark.
Scott:
And while it’s true that a trademark can be anything, not everything can and should be a trademark.
Josh:
That’s right Scott. There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable.
Scott:
Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individuals consent Also, marks which consist or comprise of a portrait of a deceased president of the United States are not registrable during the life of the president’s widow except by written consent of the widow In addition, certain organizations, by acts of Congress, have been granted exclusive rights to use certain marks. For example, the United States Olympic Committee has been granted exclusive right to use a number of “Olympic” symbols, marks and terms
Josh:
Marks which describe the intended purpose, function or use of the goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are really not the best choice for a trademark. This type of mark is considered merely descriptive and is not registrable on the principal register absent establishing secondary meaning.
Scott:
Its iron Josh how often companies gravitate toward a descriptive mark. The penchant for a descriptive mark was explained to me by a client – they work because the consumer knows exactly what they are getting. That’s useful in the short term but does nothing for brand building.
Josh:
Here is a few examples of descriptive marks – NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks. The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive.
Scott:
The major reasons for not protecting marks that are merely descriptive is to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use language which naturally describes the goods or services, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own product
Josh:
Marks that are merely self-laudatory and descriptive of the alleged merit of a product are regarded as being descriptive. Laudation does not per se prevent a slogan or mark from being registrable. Like other descriptive marks, a mark that is self-laudatory may be registrable upon establishing secondary meaning. However, courts have refused registration even on the Supplemental Register of marks that are so highly laudatory and descriptive of the alleged product that they are incapable of functioning as a trademark
Scott:
One step up from descriptive marks, but miles away as far as protectability goes, are suggestive marks. Suggestive marks are registrable on the Principal Register without proof of secondary meaning. Suggestive marks are those which, while not really descriptive of the product’s qualities, nevertheless, suggest some benefit or property of the product. An example involves ROACH MOTEL® for insect traps, in which this mark was enforced against an infringer using “Roach Inn.” The Court explained,
We do not find the mark ROACH MOTEL® to be a merely descriptive mark. While roaches may live in some motels against the will of the owners, motels are surely not built for roaches to live in. Hence, the mark is fanciful on conception. Indeed, its very incongruity is what catches one’s attention
Josh:
The determination of whether a mark is merely descriptive and therefore not registrable absent evidence of secondary meaning or merely suggestive has always been a challenging task. The Trademark Trial and Appeal Board (the quasi-judicial body responsible for adjudicating issues which arise concerning the registration of a trademark ) has opined that there is “a thin line of demarcation involved in making a determination as to whether a term or slogan is suggestive or merely descriptive and, apropos, thereto, when a term stops suggesting and begins to describe the goods in connection with which it is used, it is, at times, a difficult question to resolve.”
Scott:
The Board suggested that in determining whether a mark has crossed the threshold from suggestiveness to descriptiveness, the following factors should be analyzed: (1) is the mark used in a trademark sense and not in a descriptive manner to describe the goods; (2) is the mark an expression that would be or is commonly used to describe the goods; (3) does the mark possess some degree of ingenuity in its phraseology; (4) does the mark say something at least a little different from what might be expected from a product, or say expected things in an unexpected way; and (5) does the mark possess more than a single meaning, namely, a double-entendre, which imparts to it a degree of ingenuity and successfully masks or somewhat obscures the intended commercial message
Josh:
The strongest marks are those which are coined words, having no intrinsic meaning or arbitrary words which, although they might exist as words in the English language, have no conceivable rational connection to the product, e.g. KODAK® (coined) for film and CAMEL® (arbitrary) for cigarettes. Because such coined or arbitrary marks are inherently distinctive, no proof of secondary meaning is necessary before a court will protect the trademark rights of the senior user of such marks.
An 11th Circuit Opinion in the ‘Floribama Shore’ trademark case provides guidance on establishing artistic relevance under the Rogers Test. Scott Hervey and Josh Escovedo talk about this case in this episode of The Briefing by the IP Law Blog.
Watch this episode here.
Show Notes:
Scott:Despite challenges to the application of the Rogers test outside of traditional artistic works, the Rogers test remains a valuable defense to TV and movie producers sued for trademark infringement. Establishing that the producer’s use of the allegedly infringing mark has artistic relevance is one of the two factors of Rogers and a recent 11th Circuit opinion cementing MTV’s win over the use of Floribama Shore as the title of a docu-series shows provides guidance on steps producers should take in order to establish the existence of artistic relevance.
Scott:
MTV FLORIBMA SHORE is the title of an MTV docu-series modeled after the JERSEY SHORE franchise. The series purports to celebrate youth culture, profiling a summer of fun for eight young adults in the Florida panhandle. The Flora-Bama Lounge is a restaurant and marina facility located on the Florida Alabama border that has been in operation since 1964. The owners of the lounge were not happy with MTV’s use of FLORIBAMA as the title of its series, especially after MTV held a few casting sessions at the Flora Bama Lounge, and sued for trademark infringement.
Josh:
In the district court case MTV moved for summary judgment which was granted. The owners of the Flora-Bama lounge appealed to the 11th circuit.
Scott:
In the 9th Circuit (as well as the 2nd, 5th, 6th and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e, use of a brand within a movie, TV series, video game, etc., including as part of the title of an expressive work is the 2nd circuit’s test from the 1989 case of Rogers v. Grimaldi. The Rogers test was adopted by the 9th Circuit in Mattel inc v MCA Records (better known as the “Barbie Girl” case). Under the Rogers test, the use of a third-party mark in an expressive work does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Under the Rogers test, the first inquiry is whether the use of the third-party mark has “some artistic relevance”. The threshold for this test is extremely low; basically, if the level of artistic relevance is more than zero, this is satisfactory. If there is greater than zero artistic relevance in the use of the third-party mark, the next analysis is whether the use of the third-party mark explicitly misleads as to the source or content of the work.
Josh:
In its opinion the court goes into great detail over how MTV eventually chose the title to its series. MTV wanted to build out the Jersey Shore franchise like the Real Housewives, by establishing multiple series in different locations. MTV began to develop a seventh Shore series, this one focused on Southern beach culture
Scott:
MTV commissioned a survey of 300 young people familiar with the region to measure awareness and perceptions of the culture and nightlife in various beach towns in the “gulf Shore” region spanning from Biloxi, Mississippi, to Panama City Beach, Florida. The report noted the term “Florabama” to describe the region. Of the 300 people surveyed, about 34% had heard of the term “Flora-bama,” with half of the 34% identifying it as the bar and the other half identifying it as the region. The filming location for the series was Panama City Beach, 100 miles from the lounge. An MTV executive testified that the selection of MTV ‘Floribama Shore’ was the title of the series was driven by finding a title, like Jersey Shore, that would “define the subculture” featured in the series, that “Floribama” offered “a very distinct sense of what part of the country and subculture that is.” This executive ALSO testified that because Florida has “multiple subcultures,” a name like “Florida Shore” would not have sufficiently identified the Gulf Coast setting. And “Florida Shore,” of course, would include Miami, which McCarthy noted “has its own sort of codes.”
Josh:
The court also noted that MTV wanted a Jerseyesque type of show and Floribama screamed louder than Gulf Shore.
Scott:
Even though the bar for artistic relevance is low, I still think it’s a good idea for producers to go through the additional step to actually lay the groundwork for establishing artistic relevance at the time the producer makes its choice to use a potentially infringing mark
The Supreme Court granted Jack Daniel’s petition for certiorari and will hear the trademark infringement case involving a parody dog chew toy that resembles the Jack Daniel’s Whiskey Bottle. Scott Hervey and Josh Escovedo discuss this latest development in this episode of The Briefing by the IP Law Blog.
Watch this episode here.
A law firm has filed a trademark infringement lawsuit against its namesake. Scott Hervey and Josh Escovedo discuss this case in this installment of The Briefing by the IP Law Blog.
Watch this episode here.
Show Notes:
Scott: Lewis Brisbois Bisgaard & Smith, LLP is suing Lewis Brisbois Bisgaard & Smith, LLP in a Texas federal court for trademark infringement. No, this is not law firm schizophrenia. But it is a weird case that may exemplify the strength of common law trademark rights.
Scott: Lewis Brisbois Bisgaard & Smith is a well-regarded national law firm with 1,600 lawyers across many states, including Texas. Since 2002 Lewis Brisbois has operated under the business name Lewis Brisbois Bisgaard & Smith, and since 2009 the law firm has operated an office in Texas. The firm also owned a registered trademark for Lewis Brisbois Bisgaard & Smith, but apparently, that trademark registration went abandoned in 2020. This fact is a plot point later on in our story.
Josh: So who is this other Lewis Brisbois Bisgaard & Smith.
Scott: Yes, it’s time for this weird twist. Michael Bitgood and Richard JonesMay 26, 2022, Bitgood filed a registration for a domestic limited liability partnership, “Lewis Brisbois Bisgaard & Smith, LLP” in the Office of the Secretary of State of Texas. Bitgood listed the services as mediation and related services. They then filed an assumed name certificate in the Office of the Secretary of State identifying the Bitgood Entity’s assumed name as “Lewis Brisbois Bisgaard & Smith.” I am sure you are asking why would Bigtood and Jones do this. Well, it seems that the law firm represented some third parties to defend an unrelated case where the plaintiffs were Bitgood and Jones. After Bitgood and Jones formed their entity, they amended the complaint and added their new entity, Lewis Brisbois Bisgaard & Smith, as a plaintiff and then added the law firm and the law firm’s lawyer handling this other case as defendants. Against the law firm and its lawyer, Bitgood, Jones and the Bitgood entity…the other Lewis Brisbois Bisgaard & Smith…allege that they are using the Bitgood Entities name in an illegal and unauthorized manner reasonably calculated to create mass confusion and damage.
Josh: I think my head is about to explode. Let me see if I get this right. Bitgood and Jones sued some third parties. Lewis Brisbois Bisgaard & Smith represent these third parties in the lawsuit. Bitgood and Jones, then…I assume thinking it provides them with some type of strategic leverage in their underlying lawsuit, form an entity in Texas, Lewis Brisbois Bisgaard & Smith, LLP, they then add that entity as a plaintiff in their first lawsuit and add the law firm and lawyer as defendants claiming, essentially, trademark infringement.
Scott: You have it correct. I am sure you are asking yourself, why would they do that? Well, there was a clue to that in Bitgood and Jones’ amended complaint. They claimed that the law firm failed to renew their filing with the Texas Secretary of State, which is why they were able to file their incorporation. This seems to be part of some plan to cause the law firm to be unable to represent the defendants in the underlying lawsuit.
Josh: So going back to your lead-in for this story, I assume the law firm filed a trademark infringement lawsuit.
Scott: That’s right, they did. And Bitgood and Jones filed a motion to dismiss. Apparently Bitgood and Jones thought they hit the pot of gold at the end of the rainbow when they discovered that the law firm’s federal trademark registration went abandoned on July 10, 2020. But, as you know, Josh, that’s not the end of the story.
Josh: No, it isn’t. Bitgood and Jones failed to consider the common law trademark rights the law firm has in its name.
Scott: Trademark rights stem not from the registration of a mark but from actual use in commerce. While some civil law nations follow the “first to file” rule,
Cardi B was cleared of liability in an action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. Scott Hervey and Josh Escovedo discuss this in this installment of The Briefing by the IP Law Blog.
Watch this episode here.
Show Notes:
Josh: Rap star Cardi B has been cleared of liability by a California jury in the Central District in the action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog.
Josh: On October 21, 2022, a federal court jury found Cardi B was not liable for misappropriation of a man’s likeness by using his back tattoo on the cover of her 2016 Gangsta Bitch Music Vol. 1 mixtape to make it look as if he were performing a sex act on Cardi. This all began in 2017, when Kevin Michael Brophy, a tattoo model and marketing manager for surf and skate company RVCA, filed suit against Cardi over the aforementioned mixtape cover after sending a cease-and-desist letter that went unanswered. According to Brophy, the tiger and serpent tattoo on the model on the cover resembles his own and constitutes a misappropriation of his likeness under Civil Code section 3344 and false light invasion of privacy. Brophy claims that he was angry because “It looks like I’m giving oral sex to somebody that’s not my wife, or somebody that’s not my partner, and an image that I never signed off on, ever. Being a father of two and a devoted husband and a man of faith as well, this goes against everything that I stand ford, and I would never ever sign off on something like this.”
Scott: Brophy claims that he suffered shame, embarrassment, and humiliation after learning that portions of his tiger back tattoo had been overlaid onto the back of the black model featured on the cover of Cardi’s 2016 mixtape. For those reasons, he sought compensatory, punitive, and disgorgement of profits from the mixtape.
Josh: But irrespective of the claimed damages, the jury ultimately concluded that Cardi B was not liable to Brophy. This came after hearing testimony from Brophy and his wife and his alleged humiliation and concerns, as well as testimony from Cardi and her former manager who stated that the model on the mixtape cover was not Brophy and that the image had been substantially altered, giving rise to First Amendment protection under the transformative use doctrine. The jury also hear from the graphic designer who edited the image. He said that he found the back tattoo somewhere on the internet after searching for a backpiece tattoo.” He also claimed that he made several changes to it, removing certain pieces, color correcting, and rearranging other parts of the tattoo before overlaying the image onto the model’s back.
Scott: During closing argument, Plaintiff’s counsel argued that the defense was continuously trying to explain how the tattoo was transformed, yet they denied using Brophy’s likeness. According to Plaintiff’ counsel, if they weren’t using Brophy’s likeness, then they wouldn’t have had to argue about how they had changed it. Plaintiff’s counsel argued that Brophy’s likeness was material to the vision for the mixtape and that Brophy’s back tattoo is what makes Cardi look strong and in control. Of course, the jury obviously rejected these arguments, ultimately finding in favor of Cardi.
Josh: That’s right. But here’s a question for you Scott, even though this is taking place in the Ninth Circuit, if the law from the recent Illinois District Court case involving Randy Orton applied, would the tattoo artist have a claim against Cardi for copyright infringement? I know we would have to evaluate the merits of Cardi’s fair-use defense in greater detail, but let’s assume for the sake of the discussion that it were not fair use. Would Brophy’s tattoo artist have a claim even though it seems Brophy ...
Hermès is suing an artist for trademark infringement over his series of digital artworks called MetaBirkins. Scott Hervey and Josh Escovedo discuss the case on this episode of The Briefing by the IP Law Blog.
Watch this episode here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss developments in the trademark dispute between NBA star Luka Doncic and his mother.
Watch this episode here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark dispute between NBA Star Luka Doncic and his mother.
Watch this episode here.
As Scott Hervey previously wrote on the IP Law Blog, a tattoo artist won a copyright lawsuit against a video game publisher for showcasing an athlete with their tattoo design in a game. Scott and Josh Escovedo discuss the case on this episode of The Briefing.
Watch this episode here.
Read Scott's article here.
Show Notes:
Scott: A jury in the district court for the southern district of Illinois in the case of Alexander v. Take-Two Interactive Software found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take Two Interactive infringed the tattoo artist’s copyright in the tattoos. I think the trial court, and the court of appeals that rejected Take Two’s defenses- defenses that won the day in the US District Court for the Southern District of NY in Solid Oak Sketches v 2k Games-got it all wrong and this decision could have wide-ranging implications. We are going to talk about this on the next installment of the briefing by the IP law blog.
Scott: So here is the history of this case. Tattoo artist Catherine Alexander sued Take-Two and 2K Games in the U.S. District Court for the Southern District of Illinois for depicting World Wrestling Entertainment wrestler Randy Orton in the video game WWE 2K. On a motion for summary judgment, Take 2 made the same arguments that garnered it a win previously Solid Oak Sketches v 2k Games - (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of WWE 2K
Josh: Alexander testified in 2009, Alexander contacted WWE's legal department to negotiate about a possible faux sleeve product depicting her tattoo works. A WWE representative laughed at her and stated she had no grounds and that they could do what they wanted with Orton's images because he was their wrestler. WWE then offered Alexander $450 for extensive rights to use and produce the tattoo designs on WWE products. Alexander declined the offer and advised WWE that she did not grant it any permission to copy, duplicate, or otherwise reproduce any of her designs. Defendants have released and promoted wrestling video games titled "WWE 2K16", "WWE 2K17", and "WWE 2K18" which feature Ortons
Scott: In the Solid Oaks case, as to the implied license defense, the court found that the NBA players featured in the video game had implied licenses to use the tattoos as elements of their likenesses and the video game publisher’s right to use the tattoos in depicting the players derives from these implied licenses. A crucial element of the court’s finding - the tattoo artist knew their subject was likely to appear “in public, on television, in commercials, or in other forms of media. Alexander testified that she has never given permission to any of her clients to use copies of her tattoo works in videogames and argued that the WWE and Take 2 are conflating Orton’s rights to his own likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as in video games
Josh: In the ruling on the motion for summary judgment, the Alexander court found that it wasn’t’ clear whether Alexander or Orton actually every discussed whether and to what extent Orton had permission to copy and distribute the tattoos, and whether any implied license would include sublicensing rights, and denied summary judgment on this affirmative defense.
Scott: The court also found that the use was not fair use. The key to a finding of fair use is whether the new use is transformative. Does the new work merely "supersedes the objects" of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative."
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a recent episode of Marvel's "She-Hulk: Attorney at Law" and the accuracy of a trademark infringement case featured on the show.
Watch this video here.
Show Notes:
Josh: The last few weeks, every Thursday night in my household, we sit down to watch the latest episode of She-Hulk on Disney+. Full disclosure, we consume every bit of content that the Marvel cinematic universe puts out. I have been waiting a few months for the release of She-Hulk though, since the main character Jennifer Walters is an attorney and a graduate of UCLA School of Law, not unlike myself. But what I didn’t expect was for the content of a particular episode to become my choice of topic for this program. A few weeks ago, at the end of that week’s episode of She-Hulk, Jennifer Walters was served with a complaint by a process server at her home, and when she removed the pleading from its folder, Walters learns that she had been sued by an influencer from an earlier episode for trademark infringement. As you can imagine, at that point, I could not wait for the next episode of the show.
Scott: Although we are obviously big fans of intellectual property, it isn’t often that a trademark dispute is at the center of a movie or television shows or plot. This instance in particular was unique because it constituted the focal point of the entire episode and walked the viewers through an abridged version of the process.
Josh: The next episode picked up exactly where the prior episode had left off, with Walters being in possession of the recently served complaint. She went to her full-service law firm and retained an attorney who specialized in trademark litigation. At first, I was little put off by a comment made by another one of the characters about how Walters should have already registered She-Hulk as a trademark because she should know that whoever files first gets the mark. Many of you probably already know why this irked me But if you don’t, it is because the United States is not a first to file country. Some countries are, but the United States focuses on first use, not first to file.
Scott: These are the kind of things that would only bother an intellectual property aficionado. That said, it isn’t uncommon for television shows or movies to take certain liberties with things in the interest of creating a more interesting final product.
Josh: That’s true, and while something like that wouldn’t necessarily bother me in most instances, when it’s something that you specialize in, I feel like it is a little harder to accept. That’s probably how many medical professionals feel when they watch shows like Grey’s Anatomy I’m sure. Anyway, my disappointment didn’t last long, because Walters subsequently filed a counter claim against Titania, the influencer who appropriated her name, seeking to enjoin her from utilizing She-Hulk in commerce, because Walters used the mark first. On that basis, Walters moved for summary judgment, which was heard the next day, which is at least 365 times faster than any motion for summary judgment I’ve ever filed or opposed.
Scott: Although the show reflects an unrealistically streamlined legal process, it did manage to stay reasonably true to the requirements of such a dispute. Specifically, the remainder of the episode focused on Walters proving that she was the first to adopt and use the She-Hulk Mark.
Josh: But it did once again stray from true trademark law in that Walters utilized her online dating profile, where she adopted the She-Hulk persona after failing to get any dates as Jennifer Walters, as evidence of her use of the SheHulk mark prior to Titania’s filing of a trademark application. Of course, such use would not suffice in a real trademark proceeding since such use does not constitute use in commerce, unless her dating profile somehow served as marketing collateral for her super...
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a recent episode of Marvel's "She-Hulk: Attorney at Law" and the accuracy of a trademark infringement case featured on the show.
Watch this video here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a defamation dispute between Rachel Williams - a victim of con artist Anna Sorokin - and Netflix, over her portrayal in the docudrama "Inventing Anna."
Watch this episode here.
Show Notes:
Scott: Netflix finds itself mired in yet another defamation and false light lawsuit, this one brought on by its portrayal of Rachel Williams, the Vanity Fair photo editor who’s friendship with Anna Delvey - who passed herself off as German heiress Anna Sorokin. Williams’ complaint raises some interesting questions about the portrayal of Williams in the program. We are going to discuss this lawsuit on the next installment of the Briefing by the IP Law Blog
Scott: Rachel Williiams does not come across well in the Netlix program, Inventing Anna. Rather, she comes across as a privileged, freeloader, who sponges off of Sorokin and then abandones Sorkin when Sorkin’s real situation comes to life. So, let’s talk about what Williams will have to establish in order to move her claim forward.
Josh: Williams. brings claims for defamation and false light. For her defamation claim Williams will have to establish: that the statements were defamatory; that the statements were published to third parties; that the statements were false; and that it was reasonably understood by the third parties that the statements were of and about herf. Since Williams is a public figure - she published a story in Vanity Fair and a book about her experiences with Sorkin - she must also prove by “clear and convincing evidence” the statement was made with “actual malice” meaning that the defendant knew the statement was false, or had serious doubts about the truth of the statement. In most states, libel is defined similarly.
Scott: A false light claim is a type of invasion of privacy, based on publicity that places a person in the public eye in a false light that would be highly offensive to a reasonable person, and where the defendant knew or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the aggrieved person would be placed. A false light claim is equivalent to a libel claim, and its requirements are the same as a libel claim, including proof of malice.
So, in order for Williams to prevail on both her false light and defamation claims, she would have to demonstrate that her portrayal in Inventing Anna was (1) assertions of fact, (2) actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice.
Josh: Actual malice would be established by showing that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact.
Scott: So, let’s take a look at the various portrays of Williams she claims to be actionable. Williams notes a scene in episode 2 where Sorokin’s friend Neff Davis states or implies that Williams used to be Sorokin’s best friend, but Williams dropped her as a friend because she was
jailed and could not pay for Williams’ social life and clothes. Williams claims that these scenes are false. Williams was friends with Sorokin because she liked her, not because Sorokin would pick up the tab, and she did not drop Sorokin as a friend because Sorokin was no longer able to pay for her social life and clothes, but rather because she discovered that Sorokin had made the fraudulent statements and promises which induced her to incur significant liabilities, and that Sorkn was a liar and a con artist. That Sorokin never bought clothes, shoes, earrings, or a bag as gifts for Williams, who never wore Sorokin’s clothing or accessories and never told
Neff that Sorokin had bought her clothes.
In this archive episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo explain the importance of short-form copyright assignment agreements.
Read more about this topic here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Paramount's motion to dismiss a copyright infringement lawsuit relating to 'Top Gun: Maverick.'
Watch this episode here.
Show Notes:
Scott:
Paramount came into the Top Gun Maverick copyright lawsuit guns hot by filing a motion to dismiss claiming that the sequel to the 1986 motion picture, Top Gun, does not infringe the copyright in Ehud Yonay’s magazine article. We are going to talk about this…
Scott:
In May 1983, California magazine published the article Top Guns, by EHUD YONAY. This article was an inside look at the real Navy Fighter Weapons School Top Gun based out of Miramar California. The article begins with a vivid description of two Top Gun F14 Tomcat avaitors, Yogi and Possum, on a hop, simulated dog fight training, against Top Gun instructors then continues with a deep dive into what makes Yogi and Possum (and other fighter pilots) tick, a look at the Top Gun training regimen, life on base and the history of Top Gun. When the article was published, it was optioned and in the credits for Top Gun Yonay is credited on the original movie as a writer of the magazine article
Josh:
On January 23, 2018, the Yonays properly availed themselves of their right to recover the copyright to the Story under the sent Paramount a statutory notice of termination under Copyright Act, and then filed it with the Copyright Office.As we have discussed previously on this program, Section 203 of the Copyright Act permits authors (or, if the authors are not alive, their surviving spouses, children or grandchildren, or executors, administrators, personal representatives or trustees) to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978 when certain conditions have been met. Upon the effective date of termination, all rights in the work that were covered by the terminated grant revert to the author, however any derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant. The Yonays sued Paramount for copyright infringement claiming that the Top Gun Maverick infringes the Yonay’s right in the original article.
Scott:
When we previously reported on the complaint, we stated our belief that is case is going to be about whether Maverick is actually a derivative of the article, and, more interestingly, would Maverick even infringe the article given that the article is not a work of fiction but rather a factual work. It seems that Paramount agrees.
Josh:
In its motion to dismiss Paramount correctly argues that in order to state a claim for infringement a plaintiff must show substantial similarity between the works’ protected elements. Determining whether works are substantially similar involves a two-part analysis consisting of the ‘extrinsic test’ and the ‘intrinsic test.’” The extrinsic test “assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, whereas the intrinsic test “examines an ordinary person’s subjective impressions. Although a plaintiff must prove both to establish substantial similarity,a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury. As such, on a motion to dismiss, the court will only consider the extrinsic test and the extrinsic test can end a plaintiff’s infringement case only when the similarities between the works are either wholly due to unprotected elements, or where the amount of similar protected expression is de minimis as a matter of law.
Scott:
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the IP dispute between the heirs of Evel Knievel and Disney, over claims of similarities between the late daredevil and the “Toy Story 4” character Duke Caboom.
Watch this episode here.
Show Notes:
Josh
The Ninth Circuit refused to revive a lawsuit filed by Evel Knievel’s son alleging that Disney infringed his company’s intellectual property and publicity rights associated with Evel Knievel by creating the Canadian stuntman character Duke Caboom in Toy Story 4. That’s what we’ll discussing on this installment of the briefing by the IP law blog.
Josh
In October 2021, Evel Knievel’s son, through his company K and K Promotions, Inc., filed suit against Disney claiming that Disney’s creation of the Toy Story 4 character Duke Caboom, a Canadian motorcycle stuntman, infringed the company’s IP and publicity rights related to Evel Knievel. The District Court dismissed the matter in response to a motion to dismiss, finding that the challenged product is an expressive work under Rogers v. Grimaldi, and that Duke Caboom clearly has artistic relevance and was not explicitly misleading.
Scott
But Knievel’s son was obviously displeased with this ruling, and so he appealed to the Ninth Circuit, hoping the appellate court would revive his case. Much to his chagrin, he learned that he does not have a friend in the Ninth Circuit.
Josh
I think that’s fair statement, Scott. The Ninth Circuit essentially echoed the District Court and found that the Rogers test applied to the case, that Caboom did have artistic relevance, and that K&K did not alleged sufficient facts to show that the character was explicitly misleading as to its source. The Ninth Circuit stated that the “explicitly misleading” test imposes a “high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” In evaluating whether the use of a mark is explicitly misleading, we consider “(1) the degree to which the junior user uses the mark in the same way as the senior user and (2) the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself.” The Ninth Circuit found that neither consideration was met in this instance.
Scott
For starters, the Ninth Circuit found that, unlike Evel Knievel, Duke Caboom is a fictional character in an animated film about toys that come to life. The Ninth Circuit also found that Disney added significant expressive content to the mark to make it different from Evel Knievel.
Josh
Right, for example, Disney created a character with a different name, appearance, and backstory than Evel Knievel. Disney never suggested that Evel Knievel was involved in Toy Story 4, and Evel Knievel was never even mentioned in the film. For these reasons, the Court found the dismissal under Rogers was appropriate.
Scott
The Court also addressed the district court’s dismissal of the right of publicity claim under the transformative use defense. The Ninth Circuit found that K&K did not challenge the applicability of the defense to such a claim under Nevada law. To determine if a use is transformative, courts consider various factors that balance the defendant’s First Amendment rights with the Plaintiff’s claimed right of publicity.
Josh
The Ninth Circuit found those factors favored Disney. The Ninth Circuit stated that: The Duke Caboom action figure is “more than a mere likeness or literal depiction” of Evel Knievel. Id. at 1275 (quotations omitted). Even if the character may be generically reminiscent of Knievel to some extent, the district court properly concluded that it is “not a literal depiction,” and instead shares general features basic to stuntmen. Moreover, the economic value of the toy action figure does not derive from Evel Knievel’s persona. Id. at 1274. Instead,
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a Trademark dispute between toy maker Mattel and Rap Snacks after the snack company launched 'Barbie-Que Chips' in collaboration with rapper Nicki Minaj.
Watch this episode here.
Show Notes:
Josh:
The toy maker Mattel has filed an action against Rap Snacks in the United States District Court for the Central District of California for trademark infringement. Specifically, Mattel claims that Rap Snacks' potato chip collaboration with rapper Nicki Minaj infringed its BARBIE trademark.
A couple months ago, Rap Snacks announced that it would collaborate with Minaj on a new chip flavor known as "Barbie-Que Honey Truffle Potato Chips," a play on Minaj's Barbie nickname. Mattel was not amused. In fact, the Complaint states that "Not only does the name of Rap Snacks' product packaging wholly incorporate Mattel's Barbie trademark, but the logo is confusingly similar to the current Barbie logo."
Scott:
And Mattel's frustration with the situation was surely inflamed by Rap Snacks' extensive marketing campaign, which included NYC billboards, giveaways at music festivals, an article in People magazine, and social media posts on FB, IG, and TikTok.
Josh:
Mattel is likely bothered because of its efforts to expand its franchise beyond toys. For example, Mattel has created Barbie-branded snack food items, including pasta, candy, cookies, drinks, and other snacks. According to Mattel, this makes Rap Snacks' alleged infringing use of BARBIE even more confusing.
Scott:
According to Mattel, its Barbie brand has been one of the world's most well-known and recognizable brands for decades. For that reason, Mattel claims that Rap Snacks has improperly benefitted from the goodwill associated with its BARBIE brand. Justice Sotomayor has previously stated that "by any measure -- the world-known Barbie is a 'famous' trademark." End quote.
Josh:
and Justice Sotomayor's conclusion assuming that it holds up, which I think it would, is significant because that then creates the possibility of a trademark dilution claim. Scott, do you want to tell our listeners why or how that is distinct from a trademark infringement claim?
Scott:
In a Trademark infringement case, you are really looking at the goods and services that are being used by the mark holder. The analysis is the similarity of the mark relatedness of the goods and services. That’s a trademark infringement claim. Here you got toys from Mattel. Here, you got toys and food, and those categories of goods are not really related, so how else would Mattel protect its brand?
The only way to protect it is through a dilution claim, where the claim is that the use of your brand by a third party either dilutes or tarnishes the goodwill associated with your brand. One of the elements to establish a dilution claim is your brand has to be famous.
Josh:
Thanks, Scott. That's actually really helpful.
So, Mattel claims to have made reasonable efforts to resolve the dispute with Rap Snacks. According to the Complaint, Mattel contacted Rap Snacks and asked it to stop using the BARBIE mark in connection with its chips, but Rap Snacks refused. But that isn't a surprise since Rap Snacks has filed an intent-to-use application for BARBIE-QUE in connection with food products, including chips. To me, this seems to indicate that Rap Snacks believes it has a right to use with mark. What do you think Scott? Do you think Rap Snacks use is legal?
Scott:
I'm going to have to say i don't know enough to make that call right now. Look, I do think its interesting that they're using the exact same spelling. I don't have a problem with them using 'Barbie' for Barbie-Que, but I think they could have changed the spelling.They're entitled to refer to them as Barbeque chips, but I really don't think they can call it 'Barbie'. I don't think it matters that Nicki Minaj is referred to as Ba...
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an author’s copyright lawsuit against Fox and the producers of ‘Empire,’ alleging one of the show’s characters was inspired by her biography.
Watch this episode here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright infringement dispute between a sports psychologist and Miami Dolphins defensive back coach Gerald Alexander.
Watch this episode here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an intellectual property dispute between Netflix and two digital content creators who wrote a musical inspired by the hit Netflix series, Bridgerton.
Watch this episode on Vimeo, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a Trademark Infringement Lawsuit filed by the clothing brand RHODE NYC against Hailey Beiber's new skincare line RHODE.
Watch this episode, here.
In this episode of The Briefing by the IP Law Blog, Weintraub attorneys Scott Hervey and Josh Escovedo discuss the impact of Alexis Hunley, et al v. Instagram, LLC on copyright law, specifically on the Server Test. Considered one of the top copyright cases to watch, Hunley deals with the practice of "embedding" and its copyright implications.
Watch the video of this episode on Vimeo.
Read Scott's blog post about this case on The IP Law Blog.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark infringement dispute between the Seattle Space Needle and a local coffee shop over the cafe's use of the Space needle's image in its logo.
Watch this episode on JD Supra here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright dispute between Carroll Shelby Licensing and the widow of the late filmmaker H. B. Halicki regarding copyright protection granted to Eleanor, a car featured in the 1974 film "Gone in 60 Seconds."
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Ohio State University's trademark registration for the word THE.
Watch this episode on the Weintraub YouTube channel here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a dispute between Vans and MSCHF, over MSCHF's new sneaker line that contains “striking visual similarities” to Vans shoes and packaging.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the copyright dispute between a photographer and the Andy Warhol Foundation over several Warhol paintings that utilize the photographer’s images as source material.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright dispute, in which the heirs of the author who inspired the movie "Top Gun" claim that the film's sequel infringes on their copyright to the story.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the copyright infringement dispute between a paparazzo and Emily Ratajkowski, and discuss the settlement's implications for Fair Use.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the dispute between the original USFL and Fox, over the network's attempt to revive the football league.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a photographer's copyright infringement action against the Andy Warhol Foundation, over several Warhol paintings that utilize the photographer's images as source material.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Senator Josh Hawley's proposed copyright bill and its implications for the Walt Disney Company.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss idea theft claims in California and whether the issue of novelty can be an element of the case.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a dispute between Jerry West and HBO, over his portrayal in the Lakers docudrama “Winning Time”.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a dispute between the original USFL and Fox, over the network's attempt to revive the football league.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an intellectual property dispute between a typeface designer and Banana Republic, over the retailer's use of a stylized ampersand design.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the Supreme Court's first intellectual property ruling of 2022.
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In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss how marketing practices changed for the March Madness tournament this year, and what that meant for athletes.
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In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the 8th Circuit's opinion on copyright protection for architectural plans that could uphend "standard marketing practices" in Real Estate.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark dispute between a restaurant and a craft cookie maker, over the use of similar marks for cookies.
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In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a dispute between the heirs of Evel Knievel and Disney, over claims of similarities between the late daredevil and the “Toy Story 4” character Duke Caboom.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a Trademark dispute between luxury retailer Hermès and a digital artist over his creation of Birkin Bag NFTs.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the U.S. Copyright Office's refusal to register a copyright for a piece of artwork created by Artificial Intelligence.
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In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Nike’s attempt to stop StockX from selling NFT’s of Nike sneakers.
Watch this episode on the Weintraub YouTube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a photographer’s copyright infringement lawsuit against a travel website that stored his image on a webpage where it’s unlikely to be viewed by the public.
Watch this episode on the Weintraub Youtube channel, here.
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an art collector’s attempt to turn a painting that was purchased into a series of NFTs, and the artist’s estate’s effort to stop it.
Watch this episode on the Weintraub Youtube channel, here.
In this episode of The Briefing from by IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark infringement lawsuit that was filed against a beauty influencer for a sponsored post she shared on social media.
Watch this episode on the Weintraub YouTube channel, here.