The Briefing by Weintraub Tobin

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 Warne

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 infring

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&#821

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

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 relevanc

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 bec

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 Jo

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 base

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. Watch this episode on the Weintraub YouTube channel.

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. Watch this episode on the Weintraub YouTube channel. For more content like this, subscribe here.

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: Scott Most 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 Th

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. Scott Well, 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. Andy Yeah, it’s definitely coming up, and AI is the hot topic in the legal world for the foreseeable future, I think. Scott Yeah, 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? Andy Yeah, 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. Andy Ross challenged Reuters’ copyright in the headnotes and raised a fair use defense. Scott That’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. Andy That’s pretty remarkable. From what we’ve seen, it’s rare for a judge to admit that they might have gotten something wrong. Scott That’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 jur

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 leg

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 tarnishm

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 i

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 e

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. T

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, wron

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 t

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 celebrit

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 cut

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

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

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&#8

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 thei

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&#821

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 th

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 w

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.

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 new

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. Cases Discussed: Isaac Hayes Enters. v. Trump 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

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

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 no

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

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 g

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 p

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

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 re

‘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

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 t

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 sig

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: Scott Exercise 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.”   Jamie Thanks, 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.   Scott That’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.   Jamie Two 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.   Scott So 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.   Jamie So, 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.   Scott In 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

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: Scott As 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.”   Jamie Thanks, Scott. Glad to be here again.   Scott So, 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?   Jamie I don’t think I did.   Scott I 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.   Scott Yeah, 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.   Jamie Wow, that’s quite a big number.   Scott It is.   Jamie So what legislation is being proposed on this now?   Scott So, 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

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: Scott Cher 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.” Jamie Thanks for having me, Scott. Scott Let’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. Jamie There 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. Scott That’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. Jamie The 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. Scott Right. 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. Jamie Right. This does align with the holdings of other courts finding that a right to receive royalties is distinct from a grant of copyright. Scott Yeah, 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 agr

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

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. Jamie Thanks, Scott. I’m happy to be here. Scott Jamie, can you give us some background on this case? Jamie Of 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. Scott And 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. Jamie Right. 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. Scott That’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. Jamie Right. 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. Scott That’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 q

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.” Shauna Thanks for having me, Scott. Scott Okay, so Shauna, why don’t you tell us what this ruling actually says? Shauna This 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. Scott What about existing non-competes? Shauna It’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. Scott Companies that have non-competed agreements in place, they’re also required to send out a notice of non-enforcement, correct? Shauna Right. 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. Scott A company can’t satisfy this by, say, putting a notice on its website, can’t it? Shauna No. 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. Scott Okay. 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. Shauna Sure. 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. Scott The 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. Shauna Correct. 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

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: Scott Scarlett 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.   Jamie Thanks, Scott. It’s good to be back. I’m excited to dive in.   Scott This 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.   Jamie Thanks, 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.   Scott Yeah, I agree with you, Jamie.   Jamie California’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.   Scott Yeah, 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.   Jamie There 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.   Scott Yeah, 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&#82

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. Jamie Thanks, Scott. It’s good to be here again. Scott So, 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. Jamie Yes, that case also involved LeBron James’ tattoos and the NBA 2K video game. Scott That’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. Jamie While 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. Scott Yeah, 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