The Briefing by Weintraub Tobin

Paramount triumphs in the Top Gun Maverick copyright case. Join Scott Hervey and Jamie Lincenberg of Weintraub Tobin on ‘The Briefing’ as they dissect the court’s ruling. Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott Paramount was finally able to shoot down Ehud Yonay’s copyright infringement lawsuit, which alleged that Top Gun Maverick, the sequel to the popular 1986 motion picture Top Gun, infringed the copyright in his magazine article. The district Court granted Paramount’s motion for summary judgment and dismissed Yonay’s complaint. I’m Scott Hervey from Weintraub Tobin, and I’m here today with Jamie Lincenberg from Weintraub Tobin and we’re going to talk about the Court’s ruling on this installment of “The Briefing.” Jamie, welcome back to “The Briefing.” Jamie Thanks for having me today, Scott. Scott Great. Well, first, let’s get into the facts of the case a little bit. So, in May 1983, California Magazine published the article Top Guns by Ehud Yonay. This article was an inside look at the real Navy fighter’s weapons school, Top Gun, based out of Miramar, California. The article begins with a vivid description of two Top Gun F-14 Tomcat aviators, Yogi and Possum, on a hop, a simulated dogfight training against two Top Gun instructors. Then, the article continues with a deep dive into what makes Yogi and Possum and the other fighter pilots at Top Gun tick. A look at the Top Gun training regimen, what life on the base is like, and the history of Top Gun. When the article was published, it was optioned. In the credits for Top Gun, Yonay is credited in the original movie as the writer of the magazine article. Jamie On January 23rd, 2018, the Yonays properly availed themselves of their right to recover the copyright to the story optioned by Paramount by sending Paramount a statutory notice of termination under the Copyright Act, and then filed it with the Copyright Office. As we have discussed previously on this program, Section 203 of the Copyright Act permits authors or their successors to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978, when certain conditions have been met. Upon the effective date of termination, all rights in the work that were covered by the terminated grant revert to the author. However, any derivative work prepared under the authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination. But this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant. The Yonays sued Paramount for copyright infringement, claiming that the Top Gun Maverick infringes that Yonays rite in their original article. Scott In Paramount’s motion for summary judgment, the court took into account expert testimony of both parties. The court found that the plaintiff’s expert testimony was unhelpful and inadmissible because that expert failed to filter out the elements of the article and the sequel that are not protectable by copyright law. Jamie In order to state a claim for infringement, a plaintiff must show substantial similarity between the work’s protected elements. Determining whether works are substantially similar involves a two-part analysis consisting of, one, the extrinsic test and two, the intrinsic test. The extrinsic test assesses the objective similarities of the two works, focusing only on those protectable elements of the plaintiff’s expression. Whereas, on the other hand, the intrinsic test examines an ordinary person’s subjective impressions. Although a plaintiff must prove both to establish substantial similarity, a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury. As such, on a motion to dismiss, the court will only consider the extrinsic test, and the extrinsic test can end a plaintiff’s infringement case only when the similarities between the works are either wholly due to unprotected elements or where the amount of similar protected expression is de minimis as a matter of law. Scott In applying the extrinsic test and by filtering out the elements that are not protected under copyright law, that is, facts, ideas, sans affair, which are situations and incidents that flow necessarily or naturally from a basic plot line or plot premise. And stock elements, the two works are not substantially similar. The plaintiffs contended that the article and the sequel were substantially similar because they have similar plots, sequences of events, pacing, themes, moods, dialogs, characters, and settings. Paramount contended that the similarities identified by the Yonays were either not similarities at

Unraveling the threads of Fair Use and how recent legal rulings threaten documentary filmmakers. Join Scott Hervey and Jamie Lincenberg as they dissect the Tenth Circuit’s Impact on filmmaking in this episode of ‘The Briefing.’ Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott Leading up to the Supreme Court’s decision in Andy Warhol Foundation versus Goldsmith, there was significant concern by documentary filmmakers about how the Court’s decision in favor of Goldsmith could upend how those filmmakers make use of fair use as part of the filmmaking process. Now, in light of the Tenth Circuit recent application of the Warhol case in Timothy Seppi versus Netflix, filmmakers are again concerned and are calling for a rehearing or an inbound rehearing. If left uncheck, the Motion Picture Association said that this decision threatens to severely impair the ability of filmmakers and other creators to create documentaries, docudramas, biographies, and other works based on the real world. I am Scott Hervey from Weintraub Tobin, and today I’m joined by my colleague, Jamie Lincenberg. We are going to talk about the Tenth Circuit’s controversial decision in Seppi versus Netflix. On this installment of “The Briefing.” Jamie, welcome back to “The Briefing.”   Jamie Thanks for having me, Scott.   Scott For a while now, I have expressed some concern that the Warhol case does, in fact, remove a fair use basis that filmmakers have relied on for quite some time. The use of a third-party clip or third-party content as a biographical anchor. That is, quoting copyrighted works of popular culture to illustrate an argument or point, and the use of copyrighted material in a historical sequence. Those have been used for a very long time by filmmakers, and they’ve been regarded as a best practice in fair use.   Jamie Right. A great example of what a biographical anchor looks like comes from the of Hofheinz first A&E Television Networks, where the court found that a TV biography that used a short clip of movie star Peter Graves from one of his earliest films was justified, not because it commented on the original film, but because it enabled the viewer to understand the actor’s modest beginnings in the film business.   Scott That’s right. The Tenth Circus decision in Seppi runs the risk of forever reversing decades of jurisprudence. Seppi, some facts of the case. Seppi was a former Zoom employee who livestream the funeral of the husband of Joe Exotic. Joe Exotic, Tiger King, right? Everybody knows Joe Exotic and Tiger King. Netflix used a one-minute portion of the funeral video in its series, Tiger King. Netflix tried to dismiss Seppi’s infringement claim based on fair use, specifically based on the biographical anchor claim or jurisprudence. Post-war hall in determining fair use, courts ask, as part of the first factor, whether and to what extent the use at issue has a purpose or character different from the original and whether that supports a justification for copying. Now, the appeals court granted Seppi’s opposition to Netflix’s motion, finding that Netflix’s use was not transformative under the first fair use factor since it did not criticize or comment on the work itself, meaning the video that Seppi filmed, but instead was used to comment on and criticize Joe Exotic.   Jamie The concerns from the parties that filed briefs requesting review of this decision all express concern that the Tenth Circuit, whether it was intentional or not, has created a bright line comment on requirement and is not examining other justifiable uses beyond criticism or commentary.   Scott That’s right. Left as is, there is a concern that this opinion will negatively impact filmmakers who use third-party content for historical value and newsworthiness, even though they do not target the underlying third-party content through criticism or commentary. A number of the amicus brief cite past cases supporting the use of third-party content by a biographer or a filmmaker as a biographical or historical anchor. These cases include Time, Inc. Versus Bernard Geis Associates, which involved the use of sketches of President Kennedy’s assassination that were taken from the famous Zapruder films, Bill Graham Archives versus Dorian Kindersley, which involved the use of Grateful Dead concert posters in a book about the history of the band. Sofa Entertainment versus Dodger Productions, which involved the use of a short clip from the Ed Sullivan show in a musical about the band, The Four Seasons, and Elvis Presley enterprises versus Passport Video, which used television clips featuring Elvis. While the funeral scene in Tiger King isn’t as significant as President Kennedy’s assassination, and while Joe Exotic doesn’t have the same cultural significance as The

Update on Rachel Williams’ defamation lawsuit against Netflix’s “Inventing Anna.” Weintraub lawyers Scott Hervey and Jamie Lincenberg discuss the recent court ruling as a warning for docudrama producers on “The Briefing.” Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott We have an update on the defamation lawsuit brought by Rachel Williams, the Vanity Fair photo editor whose friendship with Anna Delvey, who passed herself off as German heiress Anna Sorkin, was featured in the Netflix series Inventing Anna. The news is not great for Netflix, and this should be a warning for producers of docudramas who take creative license with facts. I’m Scott Hervey from Weintraub Tobin, and today, I’m joined by fellow Weintraub lawyer Jamie Lincenberg. We are going to review this lawsuit, the recent court ruling not allowing Netflix to get out from under William’s defamation claim, and talk about how this should be a concern for producers of the genre du jour docudramas on today’s installment of “The Briefing” by Weintraub Tobin. Jamie, welcome back to “The Briefing.” Jamie Thanks for having me today, Scott. Scott So, let’s jump right into this. For those who may not remember, Rachel Williams is a real person. At the time of her portrayal in the Netflix program Inventing Anna, she was a Vanity Fair photo editor and a friend to Anna Delvey, also known as Anna Sorkin. Williams did not come across well in inventing Anna. Jamie No, she didn’t. She comes across as a privileged freeloader who sponges off of Sorkin and then abandons her when her real situation comes to life. Scott True, true. She does come across that way. As a result, Williams sued for defamation. Now, in order to prevail, she would have to demonstrate that her portrayal in inventing Anna was an assertion of fact was actually false or created a false impression about her, that it was highly offensive to a reasonable person or was defamatory. Since Williams is a public figure, she published a story in Vanity Fair and published a book about her experience with Sorkin; she must also prove by clear and convincing evidence the statements were made with actual malice, meaning that the defendants knew that the statements were false or had serious doubts about the truth of the statement. Jamie There are numerous instances of William’s portrayal in this series, she claims to be actionable. We recently reran the podcast episode where you first reported on this lawsuit, where you covered all of the instances in detail. So, there’s no need to do that here. Instead, let’s look at the two portrayals addressed by the court in denying Netflix’s motion to dismiss. Both of those have to do with the scene in Morocco where Williams leaves. Scott That’s right. The first portrayal comes after several scenes depicting the problems with the credit cards at the hotel and a very expensive private museum tour. Williams tells Anna, who is portrayed as being alone in her room, drinking and heavily depressed, that she is leaving. Sorkin is portrayed as begging Williams not to leave her, but Williams leaves anyways. Now, the next portrayal is the following statements that’s made by another character in Inventing Anna. This character says, “Please, Rachel abandoned Anna, kicked her when she was down, and left her alone in some foreign country. Rachel’s happy to call herself Anna’s friend when it means free ‘stuff’ trips to Morocco. But as soon as times got tough, some friend.” actually, the character didn’t say “tough” or “stuff,” she said some expletive that we won’t use here on the pod. So according to the complaint, Williams alleges that these statements are false, as Williams had a pre-existing business meeting in France. And Williams told Sorkin, prior to the pair heading to Morocco, that she would have to leave early. Also, according to the complaint, when Williams left Morocco, Sorkin was not sad, was not depressed, and was not alone. Williams alleges that those statements in those scenes are defamatory because Williams is falsely portrayed as a fair-weather friend who abandoned Sorkin when she was alone, depressed, and in trouble in Morocco and needed help and support. Williams claims that these are negative personal traits or attitudes that she does not hold. Jamie The court does agree that Williams plausibly alleged that both of these statements are false statements of fact and are defamatory. Netflix tried to argue that the statements were substantially true because Williams actually left Morocco before Sorkin to go to France, and before knowing Sorkin was a fraud, Williams had also decided to give the relationship some space. But the court didn’t buy it or the argument that other scenes in the series portraying Williams as a true friend, somehow make these two portrayals not def

The ongoing dispute between Brandy Melville and Redbubble over trademark and copyright infringement continues. Despite previous setbacks, Brandy Melville has filed a new lawsuit against Redbubble, alleging the sale of counterfeit products and copyright infringement. Scott Hervey and Jamie Lincenberg from Weintraub Tobin explore the history of the dispute, the claims made in the new complaint, and potential legal strategies moving forward. Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott We have covered Brandy Melville’s dispute with Redbubble, including the Ninth Circuit’s refusal to hold Redbubble liable for contributory copyright infringement because Redbubble didn’t know or have reason to know of specific incidents of infringement by its users and the Supreme Court’s refusal to take on Brandy Melville’s certiorari petition. Despite these significant setbacks, Brandy Melville seems determined to hold Redbubble accountable and has filed a new lawsuit against Redbubble. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Weintraub lawyer Jamie Lincenberg to talk about this update in the Brandy Melville Redbubble Dispute on this installment of “The Briefing” by Weintraub Tobin. Jamie, welcome back to the briefing. Jamie Thanks, Scott. I’m glad to be here and happy we can jump into this Brandy Melville Redbubble case again. Scott This is our third conversation about Brandy Melville Redbubble, and I have the feeling that it will not be our last. Before we dive into this new complaint, can you take us back through the history of the Brandy Melville Redbubble dispute? Jamie Sure. The dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble’s website that infringed the company’s trademarks. Initially, the District Court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement of the marks. Then, on appeal, the Ninth Circuit Appellate Panel overturned much of the lower Court’s findings. Scott And then, as we know, the Supreme Court denied certiorari to Brandy Melville’s petition, thus letting stand the Ninth Circuit’s holding. So here we are again. Brandy Melville filed a new complaint against Redbubble on March 29, 2024, which alleges that Redbubble is advertising, creating, and selling counterfeit Brandy Melville products, which incorporate exact replicas of the Registered Chilled Since trademark and Radio Silence trademark. They’ve added a couple of new causes of action that we’ll talk about, such as a claim that these products infringe and include exact because of the Registered Comic Eyes copyrighted design. Jamie The trademark claims made in this new complaint are mostly the same as the trademark claims Brandy Melville made in its case against Redbubble the first time around. So, Unless Brandy Melville alleges a failure to redress specific instances of infringement or infringers, it may seem the same result as the first case. Scott I agree. But it’s worth noting that This new complaint does seem to focus on this heightened standard imposed by the Ninth Circuit. Brandy Melville claims that Redbubble continued to sell counterfeit items bearing one or more of the exact same designs and brands even after Brandy Melville had previously reported them to Redbubble. Brandy Melville also contends that Redbubble has been, and continues to be aware of, and contributing to the infringement of its trademarks and that it creates and distributes the infringing and counterfeit goods to end consumers and facilitates financial transactions. Brandy Melville also includes as an alternative basis for its contributory trademark infringement that Redbubble has remained woefully blind to the infringement and/or counterfeiting of the Brandy Melville trademarks. Jamie Yeah, and the complaint also alleges direct copyright infringement and contributory copyright infringement claims against Redbubble. These claims weren’t raised in the first lawsuit. Scott That’s right. In copyright law, direct infringement occurs when a third party reproduces, distributes, displays, or performs a copyrighted work or prepares a derivative work based on a copyrighted work, all without authorization from the copyright owner. In support of its direct copyright infringement claim, Brandy Melville contends that Redbubble infringed Brandy Melville’s copyrighted works by displaying, distributing, and selling products bearing Brandy Melville’s copyright without their permission. Jamie Contributory infringement happens if a party, with knowledge of the i

Kim Kardashian faces a lawsuit from the Donald Judd Foundation for allegedly using and promoting knockoff furniture in her office tour video. While Kardashian’s counsel denies liability, the case underscores the importance of due diligence in endorsements. Scott Hervey and Jamie Lincenberg from Weintraub Tobin dissect the legal drama in this installment of “The Briefing.”   Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Jamie Last week, the art world was buzzing with yet another dupe scandal. Kim Kardashian has been sued by the Donald Judd Foundation for using and promoting knockoffs of the late designer’s furniture. We will dive into the details of this case on today’s episode of “The Briefing.” I’m Jamie Lincenberg of Weintraub Tobin, and I’m joining my colleague, Scott Hervey, on today’s episode of “The Briefing.” Scott Thank you for joining me today, Jamie. Can you provide us with a recap of how this case came about? Jamie Of course. Yeah. In a lawsuit filed just two weeks ago on March 27th in California’s district Court, the foundation of artist Donald Judd, who passed in 1994, known famously for his minimalist designs, is suing reality television star and entrepreneur Kim Kardashian and the Los Angeles-based interior design firm, Clements Design, the company who’s been faulted for fabricating and selling allegedly infringing tables and chairs to Kardashian. The lawsuit asserts that the firm sold Kardashian fakes of Judd’s tables and chairs for the offices of Skin by Kim, which is Kardashian’s skincare company, and accuses Kardashian of false endorsement and Clements Design of trademark and copyright infringement, false advertising, and unfair competition. Scott So this dispute stems originally from a video Kardashian posted on her personal YouTube account. Where she gave a tour to her followers of the Los Angeles office of her skincare brand, Skin by Kim. It’s just a typical house tour, office tour-type video that influencers do. In this video, while showing a large communal kitchen and dining room, Kardashian said, “If you guys are furniture people, I’ve really gotten into furniture lately. These Donald Judd tables are really amazing, and they totally blend in with the seats.” As of late January of this year, the video had been viewed more than 3.6 million times, and this video was then subsequently removed from YouTube a few days after the lawsuit was filed. Jamie That’s right. So shortly after the video was posted, the Judd Foundation contacted Kim Kardashian and Clements Design, demanding that those furnishings in question be destroyed or recycled and that Kardashian issue a public statement. Kardashian ultimately declined to replace the furniture, retract the video, or issue a corrective statement. Her reps instead offered to update the caption information in the video and to create a separate social media post in which she would promote the Judd Foundation. The foundation rejected that as that would, of course, still allow the knockoff furniture to remain in the video online. Scott When the foundation learned that Clements Design, which is a well-known celebrity design firm, and apparently, they also custom-make furniture pieces. When they learned that Clements Design had made the knockoff furniture, it asked for an agreement that the design company would never make and sell fake Donald Judd furniture again and that it would return and recycle Kardashian’s furniture, according to the complaint. But the design company rejected both requests and denied the foundation’s rights to the furniture design. Jamie So, the foundation has now filed suit and is seeking injunctive relief, a retraction of the video by Kim Kardashian. Issuance of a corrective statement, recycling of the inauthentic furniture, and any profits that Kardashian and Clements’ design may have received from the purported misrepresentation of the tables and chairs in question, as genuine Judd works. Scott The foundation argues that consumers are likely to believe that the Judd Foundation and the Donald Judd brand are connected or affiliated with or otherwise sponsored or endorsed by Kardashian, which is particularly is misleading because the Judd Foundation categorically prohibits customers from using purchased Judd, Donald Judd furniture from marketing and promotional purposes. Jamie In an online statement, Rainer Judd, Judd’s daughter who leads and is the President of the foundation, says that the furniture in question is irrefutably fake and that the existence of inauthentic furniture undermines the integrity of Judd’s original work, which includes specifications of design, craftsmanship, and materials. In its argument, the foundation cites a design proposal, Clements Design created for Skin by Kim, that includes dining tab

Delve into the complexities of vicarious infringement and DMCA violations in AI training. Scott Hervey and James Kachmar from Weintraub Tobin dissect the recent district court ruling on OpenAI’s copyright infringement allegations on this installment of “The Briefing.” Watch this episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott As we have previously reported, in 2023, several authors, including the comedian Sarah Silverman, filed putative class action lawsuits against OpenAI’s ChatGPT, alleging various copyright infringement claims. On February 12th, 2024, a district court in the Northern District of California issued its order and ruled on the OpenAI defendants’ motion to dismiss various claims in the two pending putative class action lawsuits. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my partner, James Kachmar, and we’re going to discuss the Court’s order on this installment of “The Briefing by Weintraub Tobin. James, welcome back to “The Briefing.” James Thanks, Scott. It’s good to be back. Scott So, James, could you give us some background on these cases? James Sure, Scott. The author plaintiffs alleged that OpenAI infringed on their published works by using these works to help train its Large Language Model or LLM. Basically, OpenAI is alleged to have scanned the books into their system to help train the language models. The authors claim that because these books are protected by copyright law, using them in this training and the output generated by OpenAI, which the app is known ChatGPT, by summarizing their books, constituted an infringement of their copyright protections in their works. The plaintiffs in the two separate lawsuits alleged similar claims against OpenAI for both direct and vicarious copyright infringement under the Copyright Act, as well as violation of Section 1202(b) of the Digital Millennium Copyright Act or DMCA, which is removal of copyright management information. The OpenAI defendants moved to dismiss all the claims alleged by the author plaintiffs, with the exception of the first cause of action for direct copyright infringement. It’s a bit unclear from the Court’s order as to why the defendants did not move to dismiss that claim as well. Scott Yeah, I found that to be interesting. The Court began by recognizing the general rules that govern motions to dismiss in federal actions. In essence, to survive such a motion, a plaintiff must plead enough facts to state a claim to relief that is plausible on its face. In essence, the plaintiff must allege sufficient factual content that allows the Court to draw the reasonable inference that the defendant is liable for the misconduct alleged. James That’s correct, Scott. Let’s first look at the vicarious copyright infringement claim. The Court noted that the Copyright Act grants the copyright holder exclusive rights to reproduce the copyrighted work and any copies thereof, to prepare derivative works, and distribute copies of the copyrighted work to the public. However, the Court noted that the mere fact that a work is copyrighted does not mean that every element of the work may be protected. Scott That’s right. To allege a valid copyright infringement claim, the plaintiff must show that one, he or she owns a valid copyright in the work alleged to be infringed, and two, that the defendant copied aspects of protectable aspects of his or her work. James That’s right, Scott. The Court was really focused on this second prong, which really contains two separate components: copying and unlawful appropriation of a copyrighted work. Generally, a plaintiff can satisfy these elements by showing that the defendant had access to the plaintiff’s work and that the two works share similarities probative of copying, while the hallmark of unlawful appropriation is that the work shares substantial similarities. Scott The Court noted that a claim of vicarious infringement requires a threshold showing of direct infringement. James Right. The OpenAI defendants sought to dismiss the vicarious infringement claim on the grounds that, number one, the plaintiffs did not allege direct infringement occurred. Two, that there was allegation that the OpenAI defendants had the right and ability to supervise. Three, there was no allegation that the OpenAI defendants had a direct financial interest. For the Court’s order, it’s really that first element that it focused on in its order. Scott Ok. The author plaintiffs argued that because the defendants directly copied the copyrighted books to train the language models, they did not need to show a substantial similarity between the two works. James That’s right. They were relying on a 2012 Ninth Circuit case, Range Road Music, Inc., Versus East Coast Foods. That really involved a cover band playing songs in a venue and copying

ELVIS Act —Breaking down the Ensuring Likeness, Voice, and the Image Security Act of 2024. Scott Hervey and James Kachmar from Weintraub Tobin discuss its impact on AI audio technology and how it protects musicians in the next installment of “The Briefing.” Watch this episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott: Tennessee’s ELVIS Act isn’t what you think. The acronym stands for Ensuring Likeness, Voice, and the Image Security Act of 2024. It’s about protecting a musician’s voice from AI clones. The bill was signed into law on March 21st, 2024, amid a growing concern by the music industry and musicians over AI soundalikes and deep fakes. I’m Scott Hervey from Weintraub Tobin, and I’m joined again by my partner, James Kachmar, to talk about this bill and its impact on the nascent AI audio space in this episode of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.” James: Thanks, Scott. Scott: So, James, let’s dive right into this bill and see what it does and doesn’t do. So, this bill amends Tennessee’s existing right of publicity statutes. Tennessee’s existing law has previously provided that individuals, or in the case of a deceased individual, their estate, have a proprietary right in the use of that person’s name, photograph, or likeness in any medium, in any manner. Now, one could probably have argued that likeness included voice, but this bill now makes it clear that a person’s voice is among the personal property rights this statute now protects. James: Right, Scott. And in the bill, voice is defined as a sound in a medium that is readily identifiable and attributable to a particular individual, regardless of whether the sound contains the actual voice or a simulation of the voice of the individual. So essentially, a soundalike. Scott: That’s right. So, let’s talk about what this bill protects against. Tennessee’s right of publicity statute now protects against the use of a person’s name, photograph, voice, or likeness for the purpose of advertising products, merchandise, goods or services, or for the purposes of fundraising, solicitation of donations, purchases of products, merchandise, goods, or services. The bill also adds new language which provides that a person will be civilly liable If they publish, perform, distribute, transmit, or otherwise make available to the public an individual’s voice or likeness with knowledge that the use of the voice or likeness was not authorized by the individual. James: So, Scott, I assume that this bill is going to put a target on AI voice companies for possible lawsuits? Scott: Yeah, it does. It absolutely does. The bill provides for civil liability for any person that distributes, transmits, or otherwise makes available an algorithm, software tool, or other technology, service, or device, the primary purpose or function of which is the production of an individual’s photograph, voice or likeness without authorization from the individual. James: Scott, do I understand the bill correctly that not only the individual performer will have a cause of action, but it also gives record labels a right to sue for violations? Scott: Yeah, absolutely. That’s right. The bill adds a paragraph to the section that discusses remedies for violations of the section. This new paragraph states that well where a person has entered into a contract for an individual’s exclusive personal services as a recording artist or an exclusive license to distribute sound recordings that capture an individual’s audio performances, an action to enforce the rights set forth, and this part may be brought by the person or individual. So, in other words, record labels. James: I’m sure there’s a lot of them in Nashville, Tennessee. Scott, even though the statute does not appear to be limited to commercial advertising, previous federal court decisions have limited its scope to the advertising or promotional context. And have excluded performances, sports broadcasts, websites, and creative works from its reach. The new language from this bill seems to also target creative works, such as the fake Drake AI song, and other AI soundalike recordings. James: I agree with you, and I think that this may be problematic. Scott: In what way? James: Well, if an artist or a recording label attempts to sue under the statute for an AI soundalike recording that is a creative work, such as the AI Johnny Cash cover of Barbie Girl, well, I think that may run afoul of Section 114B of the Copyright Act. Now, Section 114B permits soundalikes. A publication by the US Copyright Office specifically says that, quote, Under US copyright law, the exclusive rights and sound recordings do not extend to making independently recorded soundalike recordings. If that isn’t clear enough, the notes

Safeguard your brand in the world of social media marketing, from IP infringement risks to FTC guidelines compliance. Scott Hervey and Jessica Marlow from Weintraub Tobin continue the discussion on legal risks brands face in part 2 of our social media marketing series on “The Briefing.” Make sure to catch Navigating the Legal Risks for Brands in Social Media Marketing – Part 1. Watch this episode on the YouTube channel here Show Notes: Scott: Brands spend a lot of money on social media marketing, and that amount continues to grow. According to a recent survey, ad spend on social media is projected to reach 129 billion in 2024. However, social media marketing presents unique legal issues, not generally present in more traditional advertising. Last week, we discussed the legal risks for the celebrity endorser in social media marketing. This week, I’m joined again by my partner, Jessica Marlow, and we’re going to discuss the legal risks for brands in social media marketing. I’m Scott Hervey with Weintraub Tobin; this is “The Briefing.” Jessica, welcome back. Jessica: Pleasure to be back. Scott: Last week, we discussed the risks celebrities or influencers face in social media marketing. Today, we’re going to talk about the risks brands face in social media marketing. Let’s first talk about FTC compliance. Like influencers, brands have FTC compliance requirements. As you mentioned last week, Jessica, we did an entire episode on this. Jessica: Right, but let’s review a few points because it seems that this can be one of the biggest blind spots for brands. Scott: Sure, you’re right because this really is the biggest blind spot for brands. Previously, the FTC would hold an advertiser liable for misleading or unsubstantiated statements made through endorsements when there is a connection between the advertiser and the endorser. Now, the FTC has recently deleted the wording when there is a connection between the advertiser and the endorser. So generally, there’s always a connection between an advertiser and an endorser because it is, after all, a marketing or a promotional message. However, the FTC pointed out that a connection is not always needed for an advertiser to be liable for an endorsement. If, for example, an advertiser retweets a positive statement made by an unrelated third party or publishes in an advertisement a positive review by an unrelated third party, those statements or reviews become endorsements for which an advertiser may be liable. The despite the lack of any connection. Jessica: Right. Then, there are performance claims. Performance claims must be for the typical result. If the results being hyped are atypical, then the advertiser must clearly and conspicuously disclose the generally expected performance in the depicted circumstances. To be effective, the disclosure must alter the net impression of the advertisement so that it’s not misleading. Scott: If the brand is reposting content from a paid endorser or someone who received anything of value to make that initial post, the brand must make sure that the material connection between the brand and the endorser is conspicuously disclosed. Jessica: In boosting, upvoting, reposting, pinning, or liking consumer reviews of products, a brand should not take action that have the effect of distorting or otherwise misrepresenting what consumers think of their product. This includes suppressing or deleting negative reviews or comments. Scott: Like risks with FTC compliance, similar to influencers, brands also face IP infringement risks. In an influencer marketing campaign, a brand will hire an influencer to create content for the purpose of endorsing and promoting a product. Even though the contract between the brand and the influencer generally requires the influencer to create the original content and not use content that belongs to someone else, sometimes that doesn’t happen. Sometimes an influencer may use, whether intentionally or unintentionally, content that doesn’t belong to them. If that happens in an integration post, the brand faces a risk of being tied up in the copyright infringement case. Jessica: True. As an example, let’s look at the O’Neill versus Ratajkowski case. In that case, model Emily Ratajkowski posted a photo of her outside of a flower shop in downtown Manhattan. The photo showed Ratajkowski with her face covered by the bouquet of flowers. O’Neil sued Ratajkowski and her loan-out company for copyright infringement. But it’s important to note that the content used doesn’t necessarily have to be the entire photo. It could be many things, an image, footage, or even music. The infringement by the influencer may not be intentional. It’s amazing how many people who make their living by posting content think that if something’s on the internet, it’s available to be used. Scott: That’s so true. Even t

Delve into the legal terrain of influencer marketing from IP infringement risks to FTC guidelines compliance. Scott Hervey and Jessica Marlow from Weintraub Tobin navigate the complexities of brand deals with expert insights on safeguarding your brand partnerships on this episode of “The Briefing.” Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Influencer social media marketing is big business, whether it’s a brand integration on Instagram by an influencer or a long-term brand endorsement deal by an A-list movie star. Each deal is different, but there are similar issues that are apparent in all brand deals. I’m Scott Hervey with Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. Today is part one of our profile on understanding and navigating risks in brand marketing deals on today’s installment of “The Briefing” by Weintraub Tobin. Jessica, welcome back to “The Briefing.” Jessica: Thank you. Happy to be back. Scott: This is something we both deal with frequently from both the brand and the talent side. There are certain risks that celebrities and brands have to navigate in these types of deals. Making these risks more prevalent is the fact that we’re talking about digital marketing, where things tend to move quicker. And for whatever reason, people, even marketing professionals, may sometimes believe that the laws applicable to terrestrial or regular advertising don’t apply to the Internet. Let’s talk about our top general risks from a talent perspective and how to deal with them. Now, we have a bunch of lawyers that listen to our podcast, and you might have a different list, and we would love to hear from you if you think we should have covered something that we didn’t. But this is what we think are the top legal issues in a talent brand deal. Jessica: One of the major risks is IP infringement. Now, this is multifaceted, and the risk of infringement comes from a few different places. First, there is infringement risks that the celebrity or influencer imposes on themselves, which can happen in a few ways. The first way is by using content where the copyright is owned by a third party, for example, where a celebrity or influencer posts an image that they don’t own. You’ve covered a few cases on “The Briefing” about this. Scott: That’s right. One of the more well-known case is what is O’Neill versus Ratajkowski. While that case didn’t necessarily involve brand marketing, it’s a perfect example of this type of risk. In 2009, O’Neill, who was a professional paparazzi, took a photo of Ratajkowski outside of a flower shop in downtown Manhattan. Now, the photo showed Ratajkowski with her face covered by this bouquet of flowers. O’Neill subsequently registered his photograph with the Copyright Office. Now, shortly after O’Neill posted the photo online, Ratajkowski posted the photo on her own Instagram account. The photo she posted was the same, except that she added the words “Mood Forever” to the bottom of the Instagram post. Now, O’Neill, of course, sued Ratajkowski and her loan-out company for copyright infringement. Jessica: Right. And Ratajkowski tried to get out of the case on a fair use defense on a motion to dismiss, but she was unsuccessful. And this case was before the Supreme Court ruling in Warhol versus Goldsmith. Under the new fair use analysis, it’s almost certain that Ratajkowski would not have had a fair use defense. Scott: Yeah, that’s true. And this type of liability isn’t just limited to cases where the photo that is used makes up the entire post. This type of potential liability can exist where the third-party photo only makes up a portion of the poster video. Jessica: Right. It’s just not limited to photos. This could be a video or other similarly copyrighted, protected material like music or logos. Scott: Yeah, and music can be a bit tricky. You would think that almost everyone would understand that you can’t just use your favorite band sound recording in a YouTube video or Instagram story. Unless, of course, it’s offered as music library content from the platform. But you still see that happening. Jessica: True. But where there tend to be more problems with music is not in the use of the sound recording, but in the use of the composition. As you know, there are two copyrights in music. One copyright covers the actual sound recording, and those rights are generally owned by the record company. The other copyright is in the composition, meaning the actual music and the lyrics. The copyright in the composition is generally owned by either a music publisher if the song have a publishing deal, or by the songwriters themselves. When you normally see issues of publishing is where the celebrity or influencer performs as in sings the song. Scott: Now, normally, if

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a defamation dispute between Rachel Williams – a victim of con artist Anna Sorokin – and Netflix, over her portrayal in the docudrama “Inventing Anna.” Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Netflix finds itself mired in yet another defamation and false light lawsuit, this one brought on by its portrayal of Rachel Williams, the Vanity Fair photo editor who’s friendship with Anna Delvey – who passed herself off as German heiress Anna Sorokin. Williams’ complaint raises some interesting questions about the portrayal of Williams in the program. We are going to discuss this lawsuit on the next installment of the Briefing by the IP Law Blog Scott: Rachel Williiams does not come across well in the Netlix program, Inventing Anna. Rather, she comes across as a privileged, freeloader, who sponges off of Sorokin and then abandons Sorkin when Sorkin’s real situation comes to life. So, let’s talk about what Williams will have to establish in order to move her claim forward. Josh: Williams. brings claims for defamation and false light. For her defamation claim Williams will have to establish: that the statements were defamatory; that the statements were published to third parties; that the statements were false; and that it was reasonably understood by the third parties that the statements were of and about herf. Since Williams is a public figure – she published a story in Vanity Fair and a book about her experiences with Sorkin – she must also prove by “clear and convincing evidence” the statement was made with “actual malice” meaning that the defendant knew the statement was false, or had serious doubts about the truth of the statement. In most states, libel is defined similarly. Scott: A false light claim is a type of invasion of privacy, based on publicity that places a person in the public eye in a false light that would be highly offensive to a reasonable person, and where the defendant knew or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the aggrieved person would be placed. A false light claim is equivalent to a libel claim, and its requirements are the same as a libel claim, including proof of malice. So, in order for Williams to prevail on both her false light and defamation claims, she would have to demonstrate that her portrayal in Inventing Anna was (1) assertions of fact, (2) actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice. Josh: Actual malice would be established by showing that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact. Scott: So, let’s take a look at the various portrays of Williams she claims to be actionable. Williams notes a scene in episode 2 where Sorokin’s friend Neff Davis states or implies that Williams used to be Sorokin’s best friend, but Williams dropped her as a friend because she was jailed and could not pay for Williams’ social life and clothes. Williams claims that these scenes are false. Williams was friends with Sorokin because she liked her, not because Sorokin would pick up the tab, and she did not drop Sorokin as a friend because Sorokin was no longer able to pay for her social life and clothes, but rather because she discovered that Sorokin had made the fraudulent statements and promises which induced her to incur significant liabilities, and that Sorkn was a liar and a con artist. That Sorokin never bought clothes, shoes, earrings, or a bag as gifts for Williams, who never wore Sorokin’s clothing or accessories and never told Neff that Sorokin had bought her clothes. Williams claims that the statements are defamatory because Williams is falsely portrayed as a disloyal and opportunistic friend, a sponger, and a freeloader. Josh: There are other scenes referenced by Williams which portray Williams as a freeloader or a false friend. For example, a scene in episode 5 where Williams is portrayed in attempting to convince Sorkin to pay for an expensive hairstyle for Williams and a scene in episode 6 where Williams is portrayed trying to get Sorkin to pay for a more expensive hotel room in Moracco. Williams claims. Williams claims that this scene is false and never happened. Williams never tried to get Sorokin to pay for an expensive hair stylist for her, and Sorokin never paid for her hair. Also, Sorokin made the arrangements with the Hotel herself, and Williams did not make any suggestions to her about the accommodation there. Williams also takes offense to her being portrayed in the program as not paying for any dinner, drinks or spa outings with Sorkin. Williams claims that this wrongfully

Discover how truth became the ultimate defense in the legal battle between Cynthia Love and Kanye West. Join Scott Hervey and Eric Caligiuri from Weintraub Tobin as they unpack the court’s ruling on whether displaying historical footage amounts to defamation on this episode of ‘The Briefing’. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Truth is a defense to a defamation claim. So, it would be no surprise to think that displaying a recording of the way someone actually behaved at some past date would also not be defamation. That assumption was put on trial, literally, in the case of Cynthia Love versus Kanye West in the Central District of Illinois. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Weintraub lawyer and frequent guest of “The Briefing,” Eric Caligiuri, to talk about this case and the court’s ruling on today’s episode of “The Briefing.” Eric, welcome back to “The Briefing.” Eric: Good to be here again, Scott. So, Scott, can you tell us a little bit about the history of the case? Scott: Sure. Absolutely. So, in 2003, Cynthia Love appeared in a Kanye West music video for “Talking Through The Wire.” Love apparently does some short dance number in a barbecue restaurant before asking West for some change. She, according to the complaint and according to the court documents, she looks unsteady and sounds slurred. Fast forward to 2022, when Netflix released a docuseries called “Jeen-yuhs,” a Kanye trilogy, which included clips of Love from that music video, plus previously unreleased footage, all totaling about two minutes of screen time. Love took issue with how she was portrayed in the clips taken in that barbecue restaurant decades ago, and so she sued. Eric: The basis of her claim is that the documentary captures Love at her darkest moments, and that is not who she is now. Love bases her defamation claims on the grounds that she is not the same person now that she was in 2003 when they made the music video. Scott: That’s right, Eric. That’s the basis of her complaint for defamation, false light, and other causes of action. On the defendant’s motion to dismiss, the court analyzed Love’s defamation claim. Now, under Illinois law, to state a defamation claim, a plaintiff must present facts showing that the defendant made a false statement about the plaintiff, that the defendant made an unprivileged publication of that statement to a third party, and that this publication caused damages. Eric: Similar to California law, in Illinois, truth is an absolute defense to defamation. True statements cannot support a defamation claim. Scott: That’s correct. And the court found that any allegations about Love in the “Jeen-yuhs” docuseries were true. The docuseries included real-world, real-life clips of Love without doctoring the content or adding any false material. It shows true clips of a real event. The court noted that the docuseries makes clear that the footage is from 20 years ago, and the fact that Love later turned things around does not make the footage from years earlier false. Eric: So, a defamation claim fails if the allegedly defamatory statement is a historical truth, even if it’s not necessarily the current truth. Scott: That’s right. If a defamatory statement is a historical truth, even if it’s not currently true, it’s true, and the defamation claim must fail. The “Jeen-yuhs” video accurately portrayed Love in a moment of time several decades ago. The video does not suggest that Love in this day remains in an intoxicated state or anything of that sort. The video shows a past truth without suggesting that the past is the present. The footage is historically accurate. So Love’s defamation claim and false like claim fail. Eric: There were other claims, too. A violation of publicity rights and intentional infliction of emotional distress. Scott: That’s right, and the court made short work of the right of publicity case, finding that the exemption for audiovisual works under the Illinois right of publicity law covered the docuseries. And as for the intentional infliction of emotional distress, the court had this to say, “A lighthearted dance by some barbecue is not extreme or outrageous. If anything, dancing while a little intoxicated near some barbecue is an all-American activity. It sounds like the 4th of July, lots of viewers might think, been there, done that.” As an aside, kudos to Justice Steven Seeger for the United States District Court for the Northern District of Illinois, the Eastern Division, for writing quite a pithy order. Eric: Scott, you work with a lot of production companies. Does this case surprise you at all? Scott: The ruling didn’t surprise me. Given that truth is a complete defense to a defamation claim, it is important for

Can AI inventions be patented? Scott Hervey and Eric Caligiuri explore recent USPTO guidance on patenting AI-assisted inventions in this installment of “The Briefing” by Weintraub Tobin.   Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Can AI inventions be patented? Can inventors use AI assistance in the creation of an invention, and can that invention be patented? On February 12, 2024, the United States Patent and Trademark Office issued guidance on the patentability of inventions developed with the assistance of artificial intelligence. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Weintraub lawyer and frequent guest to the briefing, Eric Caligiuri, to discuss this new development in patent prosecution on this episode of “The Briefing.” Eric, welcome back to “The Briefing.” Eric: Good to be here, Scott. Scott: So, Eric, the USPTO recently issued a guidance statement that addressed the listing of non-humans on patent applications. Now, this seems to stem from the various patent applications filed by Stefan Thaler or Thaler, which lists his AI tool device for the autonomous bootstrapping of unified sciences, or DABUS, as the inventor. The USPTO denied these applications, and this denial was upheld by the Federal Circuit. Eric: Right, Scott, in the guidance, the USPTO explained that AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents. The USPTO reasoned that the US Supreme Court has indicated that the meaning of invention in the patent act refers to the inventor’s conception. Similarly, the Federal Circuit has made clear that conception is the touchstone of inventorship. Conception is often referred to as a mental act or the mental part of the invention. Specifically, it is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice. Because conception is an act performed in the mind, it has to date been understood as only performed by natural persons. Scott: Eric, there has been some question about the patentability of inventions created using AI tools. The USPTO issued guidance on this issue as well. Eric: That’s right. The USPTO explained that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity. Thus, patent protection may be sought for inventions created through the use of AI tools under specific circumstances. Scott: So the USPTO made it clear that inventions created through the use of AI tools are not per se unpatentable. Eric: That’s correct. The USPTO said that there are no specific sections of the patent act that support a position that inventions that are created by natural persons using specific tools, including AI systems, result in improper inventorship or otherwise unpatentable. The statutes only require the naming of natural persons who invented or discovered the claimed invention. Irrespective of the contributions provided by an AI system or other advanced technology system. Scott: So, Eric, what are the circumstances under which a creator or inventor using an AI tool can claim ownership of the invention? Eric: In the context of AI-assisted inventions, natural persons who create an invention using an AI system or any other advanced system must still contribute significantly to the invention. There is no requirement for a named inventor to contribute to every claim in an application or patent. A contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent or patent application. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application. Inventorship is improper if any patent or patent application that includes a claim in which at least one natural person did not significantly contribute to the claimed invention, even if the application or patent includes other claims invented by at least one natural person. Scott: In determining whether a person significantly contributes to an invention created using AI tools, the USPTO will look to the same test it uses to determine inventorship in claimed joint inventions, right? Eric: Correct. The USPTO looks at the Pannu factors. Each inventor must contribute in some significant manner to the conception or reduction to practice of the invention, make a contribution to the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention, and do more than merely explain in the real inventor’s well-known concepts an

How far back can a plaintiff recover damages in a copyright infringement case? Scott Hervey and Jamie Lincenberg discuss this contested copyright law question in this installment of “The Briefing” by Weintraub Tobin. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Just how far back can a plaintiff in a copyright infringement case go in recovering damages? I’m Scott Hervey of Weintraub Tobin, and today, I’m joined by my colleague Jamie Lincenberg. We will take a look at an important and contested question in copyright law, which is headed to the Supreme Court this spring, on today’s episode of “The Briefing” by Weintraub Tobin. Jamie, welcome back, and thank you for joining us today. Jamie: Thanks, Scott. Happy to be here. Scott: Jamie, can you tell us more about the topic that we’re diving into here? Jamie: Of course. In the case of Nealy versus Warner Chappell Music, the Supreme Court will be discussing the question of when the clock starts ticking in the Copyright Act’s three-year statute of limitations and whether a copyright claim plaintiff can recover damages beyond the three years from when the claim was filed. The justice’s decision to hear this case highlights a circuit split on the matter. The case began in 2018 when music producer Sherman Nealy filed a lawsuit against Warner Chappell Music and Artists Publishing Group. It was a run-of-the-mill copyright infringement case in which Nealy claimed that Flo Rida’s 2008 song “In The Sir” featured an unlicensed sample of a 1984 track that Nealy had owned. And now, almost six years later, Nealy’s lawsuit is headed to the Supreme Court to answer the unresolved questions of whether damages in a copyright case are limited to just the last three years before the case was filed or can damages go back for years, potentially dramatically increasing the amount of damages that a plaintiff can recover? Scott: The debate at the center of the case against Warner Chappell goes back to the case of Petrella versus MGM, when the Supreme Court ruled that the movie studio MGM could be sued for copyright infringement over the Scorsese-directed film “Raging Bull”. Great film, by the way, even though the case was filed decades after the film had first been released in 1980, MGM argued that such a long delay was unfair, but the Supreme Court decided that the Copyright act has a three-year statute of limitations that resets with every new infringement. Jamie: Yeah, that’s right. Under the court’s interpretation of the law in that case, as long as copies of allegedly infringing material, whether a book or a song or movie, had been sold during the three years prior to the lawsuit, it was ripe for a copyright case. Unsurprisingly, that ruling then led to a burst of infringement cases that had been long delayed, including a high-profile lawsuit against Led Zeppelin over the very popular 1971 song “Stairway to Heaven.” Scott: But with respect to the awarded damages in the Raging Bull case, the late Justice Ruth Bader Ginsburg stated that a successful plaintiff can gain retrospective relief only three years back from the time of the suit. No recovery may be had for infringement in the earlier years. Profits made in those years remain the defendants to keep. In the years since the rulings in the New York U. S. Court of Appeals for the Second Circuit have abided by that decision, and copyright accusers have not been awarded damages for any conduct past that three-year mark. In 2021, the judge of the Nealy case cited “Raging Bull” and ruled that Nealy was not entitled to damages from earlier than 2015. Nealy said he had only learned of the illegal sample in 2016 and wanted damages dating back to the song’s release in 2008, and the judge cited the Supreme Court’s binding precedent in “Raging Bull” that had explicitly limited damages to the three years prior. Jamie: That’s true, Scott, but that’s actually not the case in the US Court of Appeals for the 9th Circuit, which covers California and has held that if a plaintiff can prove they only recently discovered the fact that their copyright was infringed, they can seek damages going back all the way to the very first infringement. So we’re talking about potentially decades worth of damages. And earlier this year, the US Court of Appeals for the 11th Circuit overturned that 2021 ruling in the Nealy case. Siding with the 9th Circuit’s approach, the appeals court held that a copyright plaintiff may recover relief for infringement occurring more than three years before the lawsuit’s filing, so long as the plaintiff’s claim is timely under the discovery rule, a rule under which a claim accrues when the plaintiff discovered or should have discovered the infringement. The 11th Circuit stated that the Supreme Court’s ruling

Delve into the new WGA and SAG contract provisions relating to AI. Scott Hervey and Jamie Lincenberg tackle the terms and changes in this installment of “The Briefing” by Weintraub Tobin. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott AI ended up being a bigger than expected part in the writers’ and actors’ strikes. What exactly are the new WGA and SAG contract provisions relating to AI? I’m Scott Hervey from Weintraub Tobin, and today, I’m joined by my colleague Jamie Lincenberg. We are going to talk about the AI terms and the 2023 changes to the WGA and SAG MBA on this installment of “The Briefing” by Weintraub Tobin. Jamie, welcome back to “The Briefing.” Jamie Thanks. It’s good to be back. Looking forward to getting into this topic with you. Scott Yeah. So, let’s dive right in. So, let’s first talk about the changes to the Writers Guild MBA related to AI. I think the most logical place to start is with how the WJ defines AI. So the term generative artificial intelligence, or let’s call it GAI, because we don’t have enough acronyms, let’s call it GAI. And that generally refers to a subset of AI that produces content based upon learned patterns like Chat GPT, DALL-E, and Llama, and it does not include traditional AI technologies such as those used in computer-generated imagery like CGI and visual effects. Jamie Scott, the WGA terms say that GAI cannot be a writer or professional writer as defined in the MBA because it’s not a person, and therefore, materials produced by GAI should not be considered literary material under any MBA. This is important because the fact that GAI output can’t be considered literary material has a direct impact on a writer’s credit and compensation. Scott Yeah, that’s right. While a producer can provide a writer with GAI output and instruct the writer to use it as the basis for writing a story or a script, that GAI output cannot be considered assigned or source material for the purpose of determining compensation or writing credit, and it can’t be used to disqualify a writer from that writer’s eligibility for separated rights. Jamie While writers can use GAI in the process of preparing literary material, for example, a screenplay with consent of the company, a company may not require that a writer do so as a condition of employment. Material created by writers who elect to use GAI should be considered literary material as opposed to material produced by GAI. Scott That’s right, but given the issues surrounding the protectability of GAI output and the requirements that must be satisfied when registering a work that includes GAI output with a copyright office, it’s not clear to me why a producer would want a writer to incorporate GAI output into any literary material. The WGA terms do acknowledge that producers can establish their own policies with respect to the use of GAI that writers will be required to adhere to, and companies can reject the use of GAI, including when that use could threaten the copyrightability or the exploitation of the work. Jamie We should also talk about the 2023 changes to the SAG Basic Agreement related to AI. Those revisions seem to be a bit more involved. Scott Yeah, they are. I would agree with you there. So, the 2023 changes in the SAG Basic Agreement, they really address three different types of digital replicas. The first is an employment-based digital replica. The second is an independently created digital replica. And then the third is called a synthetic performer. Jamie Let’s talk about the employment-based digital replica first. Scott Sure, let’s do that. So, an employment-based digital replica is a replica of the voice or likeness of the performer that is created in connection with the employment, performer’s employment on a motion picture. And note that this can be both the program for which the performer was employed and a program other than which the performer was employed. And it’s a replica that’s created using digital technology with the performer’s physical participation, and is for the purpose of portraying the performer in photography or on a soundtrack in which that performer did not actually perform. Jamie If a studio wants to use an actor in the creation of an employment-based digital replica, the studio must give 48 hours of advance notice prior to the services and get written consent, which must be clear and conspicuous. Scott It is also important that the producer gets written consent where the producer desires to use an employment-based digital replica. Now, the scope of consent and the manner in which it can be obtained is the same for the creation because you have to get consent for creation and consent for use. So, I would think it would be best practice to get both required consents in the same document. This consent

Graffiti artists Nekst and Bates have filed a lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing. Scott Hervey and James Kachmar discuss this case in the next installment of “The Briefing.” Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: This case is a head-scratcher. Graffiti artists Nekst and Bates have filed the lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing manufactured by Guess and sold by Macy’s. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We are going to talk about this lawsuit on the next installment of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.” James: Thanks, Scott. Scott: So it seems that Guess manufactured various clothing items that incorporated the tags of graffiti artists Nekst and Bates, and those pieces of clothing were then sold by Macy’s. Now, a tag, in the parlance of street art, graffiti art, is a design element that reflects, among other things, the artist’s elaborately expressed signature or name. The plaintiffs contend that these tags are the primary calling cards and source identifiers of their artwork and, well, themselves. James: That’s right, Scott. The plaintiffs in this case bring a number of claims in the complaint, including a false endorsement claim under the Lanham Act, a right of publicity claim under California law, and a copyright infringement claim. Let’s talk first about the Lanham Act claim. Scott: Sure. So that’s section 43A of the Lanham Act, and that imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin or false or misleading description of fact or false or misleading representation of fact which is likely to deceive consumers. As to the affiliation, connection, association, sponsorship, or approval of another person’s goods or services, courts have held that a person’s physical likeness, voice, or other unique or distinguishing characteristic, such as a signature, constitutes a symbol or device as specified in that section. James: That’s right, Scott. The mere use of a celebrity’s image or likeness is not ordinarily actionable. But using the celebrity’s image or likeness to suggest sponsorship or approval could constitute false endorsement where the celebrity hasn’t, in fact, given their endorsement. A false endorsement claim must also be something that is likely to confuse consumers or must lead them to thinking that the celebrity endorsed a product or brand when, in fact, they actually have not. Scott: That’s right, James. The complaint alleges that Guess falsely used artwork reflecting artists’ names and signatures on apparel, creating the false impression that the artists endorsed Guess and Macy’s. Now, we can’t show you the pictures of the apparel on the podcast, but it’s pretty blatant. The plaintiffs argue that the use of the artist’s name and signature is designed to create and does, in fact, create the false and deceptive commercial impression that these artists and their products are somehow associated with or somehow endorse the Guess merchandise.   James: So, Scott, I suppose that Guess may try to argue that a tag is not a symbol device or any of the other enumerated items in section 43A. That seems like a pretty thin argument. Scott: Yeah, I would agree with you, James. It does seem like a thin argument. James: So, Scott, what about the California right of publicity claim? Scott: Well, California Civil Code section 33 44A provides any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise, goods, or services without that person’s prior consent, or in the case of a minor, the prior consent of the parent or legal guardian shall be liable for any damages sustained by the person or persons injured as a result thereof. So, the plaintiffs claim that Guess is using their name and their signature on merchandise, and they also claim that Macy’s is using their name and their signature in advertisements to sell Guess’ merchandise. James: Seems to be a very straightforward claim. Scott, what about the copyright claim? Normally, the Copyright Office will not recognize a copyright using short words or phrases. Scott: That’s true, James. The Copyright Office generally does not recognize a copyright in short words or phrases. Now, this claim is advanced by Bates only the depiction of Bates’ signature. It does have a very unique design elements, design element. Nekst do

As James Kachmar previously wrote on the IP Law Blog, the man who was photographed as a naked baby in 1991 for Nirvana’s iconic “Nevermind” album cover is now suing the band for distributing child pornography. Scott Hervey and James discuss the Ninth Circuit’s opinion on the case in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: James: In 1991, the grunge band Nirvana was one of the most popular musical acts in the United States with its anthem “Smells like Teen Spirit”, which was featured on its album Nevermind. Many will remember the cover of that album, which featured a naked baby swimming underwater and reaching for a dollar bill on a fishing hook. Three months after its release, Nevermind rose to the top of the Billboard 200 rankings and since then has sold over 30 million copies. The picture on the album was licensed for use on other merchandise, such as t-shirts, and was also the subject of various parodies. Now, 30 years later, Nirvana, its surviving members, and its record companies face a civil lawsuit for allegedly distributing child pornography by the now-grown man who was depicted on the album cover as a baby. I am James Kachmar from Weintraub Tobin, and I am joining Scott Hervey from Weintraub Tobin to talk about this case on the next installment of “The Briefing.” Scott: James, welcome back to The Briefing. This case, the case of Elden versus Nirvana, has been on my mind since I read your excellent article on the case. Can you give us some background? James: Sure. Scott, the baby in that photo, is now a gentleman. His name is Spencer Elden, and he was four months old at the time the photograph was taken. He turned 18 in 2009 12 years later in 2021, at the age of 30, he filed a lawsuit, and after two rounds of amended complaints, filed a second amended complaint in January 2022. Mr. Elden asserts a single claim against the defendants for a violation of 18 USC section 22 55, which allows victims of child pornography to bring a civil cause of action for their injuries. Scott: And, James, what is the nature of Mr. Elden’s complaint? What’s it based on? What is it based on? James: Mr. Elden’s complaint alleges that the cover of Nevermind depicting him in the nude constitutes child pornography and that the defendants, quote, knowingly possessed, transported, reproduced, advertised, promoted, presented, distributed, provided, and obtained, end quote, this alleged child pornography depicting him. He further alleges that the image has been reproduced and redistributed during the ten years preceding his lawsuit, and since then, pointing out that Nevermind had been rereleased in September 2021, claimed that he had suffered personal injury as a result of the ongoing violations of section 22 55. Scott: So initially, the defendants moved to dismiss Mr. Elden’s complaint, arguing that it was barred by the applicable tenure statute of limitations for such claims. The district court agreed with the defendants and dismissed the complaint with prejudice. Mr. Elden appealed that dismissal to the 9th Circuit. And what happened on appeal, James? James: Well, Scott, just days before Christmas last year, the 9th Circuit issued its opinion in Elden versus Nirvana, LLC, and reversed the dismissal of his claims. Importantly, the 9th Circuit, in its decision, did not decide whether the album cover, in fact, constituted child pornography. Rather, it only decided whether his claims were timely. The issue of whether the album cover constitutes child pornography will be decided on remand by the lower court. Scott: So, what was the basis for the 9th Circuit’s reversal of the district court’s dismissal? James: Well, the 9th Circuit began by examining the text of the statute of limitation provisions in section 22 55, which set forth two pertinent time frames. First, the plaintiff must have been a minor when victimized by the violation, such as the distribution of child pornography. And two, the plaintiff must have suffered personal injury as a result of the violation, regardless of whether the injury occurred when the plaintiff was a minor or as an adult. The 9th Circuit made clear that while the violation of the criminal law must have initially occurred while the plaintiff was a minor, the plaintiff could pursue a claim for personal injury that did not occur until after he or she became an adult. Scott: Okay, and how does the tenure statute of limitations apply to the violation? Then when can the plaintiff bring a claim either? Well, the plaintiff can bring a claim that was based on an injury that occurred either before or after the plaintiff was an adult. James: Well, Scott, a plaintiff can bring a claim within ten years after the date of which the plaintiff reasonably discovers the violation that forms the basis of the claim. Scott: Okay, but this album was released in the early nineties, and that’s well ov

Brandy Melville has asked the Supreme Court to review the 9th Circuit’s decision in its dispute with Redbubble. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Jamie: This past summer, we analyzed the willful blindness doctrine, which was highlighted by the 9th Circuit’s decision in the case of Redbubble, Inc. Versus Y.Y.G.M. doing business as Brandy Melville. The 9th Circuit in that case refused to hold Redbubble liable for contributory infringement because Redbubble didn’t know, or have reason to know of specific incidents of infringement by its users. The matter seems settled, but Brandy Melville has asked the Supreme Court now to review the 9th Circuit’s decision, which now causes a circuit split. I’m Jamie Lincenberg of Weintraub Tobin. We’re going to talk about this update in the Brandy Melville Redbubble dispute on this installment of The Briefing. Scott: I’m Scott Hervey of Weintraub Tobin. Jamie, welcome back to The Briefing. Jamie: Thank you, Scott. It’s great to be here again. Scott: So before we dive into Brandy Melville’s petition for assert to the Supreme Court, can you take us back through the history of the case? Jamie: So this dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble’s website that infringed their company’s trademarks. Scott: Initially, the district court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement. Then, on appeal, the 9th Circuit appellate panel overturned much of the lower court’s findings, holding that a party is liable for contributory infringement when it continues to supply its products to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to infringement. In short, willful blindness requires the defendant to have knowledge of specific infringers. General knowledge of infringement on the platform is not enough. Jamie: This decision for the first time defined the 9th Circuit’s legal standard for contributory liability, and it really heightened the hurdle for brand owners to establish contributory infringement. Now, six months later, Brandy Melville argues that the appellate court was wrong in its holding and has asked the Supreme Court to review the 9th Circus decision that liability for user-submitted trademark infringement only stands when there’s specific knowledge of the infringement. Scott: Brandy Melville argues in its petition for rid of Cert. That the 9th Circuit has adopted an erroneously narrow view of such liability and points to the Second Circuit and the 10th Circuit, where once a defendant knows or has reason to know that it is assisting in trademark infringement, it has a legal duty to take reasonable steps to stop it? The attorneys for Brandy Melville argue that the 9th Circuit’s decision has no basis in background principles of common law and effectively flips the burden of ensuring compliance with the law from the defendants to the plaintiffs. In its writ for Cert. Brandy Melville argues that the issue is whether the defendant must know or have reason to know to trigger such liability. In particular, is contributory trademark liability limited solely to a defendant’s knowledge of and failure to redress specific instances of infringement or infringers, as the 9th Circuit holds? Or does it extend to a defendant’s knowledge that it is assisting infringement of the plaintiff’s trademark and fails to take reasonable steps to stop such assistance as the Second and 10th Circuit holds in. Jamie: Support of Brandy Melville’s argument during oral arguments last year, an attorney for Brandy Melville said that even after the lawsuits were filed, Redbubble continued to sell infringing products on its website and required companies to notify it of the infringement in order to take down the products, and it kept certain features up on the website that allowed sellers to sell infringing products in the future. The attorney compared Redbubble’s conduct with infringing products to that of an exterminator who shows up to a house and kills insects once, but not the eggs. Then, three months later, of course, all the insects are back. The justices haven’t considered the standard for contributory trademark infringement under the Lanham Act since 1982. Given the rapid growth of the Internet and e-commerce in recent years, the petition states that it’s really time that the Supreme Court revisits this issue. I would perso

As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Jack Daniels Properties v. VIP Products Rogers v. Grimaldi Punch Bowl v. AJ Press 20th Century Fox Television v. Empire Distribution, Inc. Show Notes: Scott: The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel’s dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I’m Scott Hervey from Weintraub Tobin, and I’m joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing. Jamie: Thanks, Scott. It’s good to be back after a little bit of a hiatus. Scott: Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case. Jamie: That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity’s name in the title of the work. Scott: The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can’t be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California’s 9th Circuit. Jamie: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test. Scott: On appeal, the Supreme Court said that the issue really was not whether the dog toy was an expressive work but rather the nature of the use of Jack Daniel’s mark by VIP products. The Supreme Court found that VIP’s use of the marks, while humorous for sure, was for the purpose of serving as a source identifier, trademark use. In other words, the Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it’s also used to perform some expressive function. Jamie: So why don’t we talk about Punch Bowl versus AJ Press? Scott: Sure. So, Punch Bowl is an online technology company whose product is online invitations and online greeting cards. Punch Bowl has been using the Mark Punch Bowl since 2006, and it has a couple of federal registrations covering the mark. Now, AJ Press was founded by two journalists who used to work for Politico, and AJ Press operates Punch Bowl News, which is a subscription-based online news publication that covers topics in American government and politics. Given the publication’s focus on politics, AJ Press chose Punchbowl because, well, that’s the nickname the Secret Service uses to refer to the US Capitol. I never knew that before reading this case, but there you go. So, the title Punch Bowl News was selected, at least according to AJ Press was selected to elicit the theme and geographic location of the publication, Washington, DC Punchbowl. The tech company sued for trademark inf

Fruity Pebbles failed to attain a trademark for the various colors of its cereal. Scott Hervey and Jessica Marlow discuss the TTAB’s decision to reject the trademark application on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: A trademark examiner refused to register a trademark for the various colors that make up the colors of Fruity Pebbles Cereal on the grounds that the proposed color mark fails to function as a trademark. The applicant, Post Foods, could not stomach the refusal, and it appealed it to the Trademark Trial and Appeal Board. On January 4, 2024, the TTAB upheld the examiner’s refusal. This case exemplifies the difficulty of securing a color trademark. And there’s some other takeaways, important takeaways, too. We’re going to discuss this on this next installment of The Briefing by Weintraub Tobin. Welcome back to The Briefing. I’m Scott Hervey of Weintraub Tobin, and today, I’m joined by my law partner, Jessica Marlow. Jessica, welcome back to The Briefing. Jessica: Thank you. Happy to be back. Scott: So, Jessica, I know that you’re a fan of fruity pebbles, right? Jessica: I am. Scott: Okay. Jessica: At all ages. Scott: Yeah, this case is right up your alley. So Post Foods applied to register a trademark for the various colors that make up the colors of Fruity Pebble Cereal. Understanding just how difficult it would be to register the color mark, the application included a declaration from the applicant’s counsel supporting the two-f claim, which is a claim of acquired distinctiveness and allegations of long use, extensive advertising and, unsolicited media coverage and significant product sales. Supporting this claim of acquired distinctiveness. The examining attorney refused to register the mark because it consisted of a nondistinctive product design or nondistinctive features of a product design that are not registerable on the principal register without sufficient proof of acquired distinctiveness. And while the applicant’s two-f claim and all the evidence that the applicant submitted in support of the two-f claim was an attempt of establishing acquired distinctiveness, the trademark examiner said that the section two-f claim showing was insufficient to demonstrate acquired distinctiveness. Jessica: Right. And in response to the office actions, the applicant submitted additional evidence of the mark’s acquired distinctiveness, including the results of a consumer survey, long use of the mark, significant advertising expenditures and sales revenue, extensive media coverage, and customer statements. Despite all of this, the examiner found the additional evidence insufficient to show acquired distinctiveness and continued to refuse registration on the grounds that the mark failed to function as a trademark. Post appealed this refusal to the TTAB. Scott: Now, color marks are never inherently distinctive when used on products or on product designs. Where a color mark is not functional, it may be registered on the principal register if it is shown to have acquired distinctiveness. The TTAB noted that the burden of proving that a color mark has acquired distinctiveness is substantial there are six factors that are considered in determining whether a color mark has acquired distinctiveness, and those six factors are the association of the trade dress with a particular source by actual purchasers, and usually that’s measured by customer surveys, the length, degree, and exclusivity of use the amount and manner of advertising the amount of sales and the number of customers, intentional copying and unsolicited media coverage of the product embodying the mark. No single factor is determinative, and all six factors are to be weighed together in determining the existence of secondary meaning. Jessica: In response to the evidence submitted by the applicant, which included product history and length of use, product pictures, advertising samples, sales volume and revenues, advertising expenditures, unsolicited third-party references, and two consumer recognition surveys, the trademark examiner submitted examples of third-party multicolored cereals in the form of puff rice balls, ring shapes, and other shapes. Lexus Nexus printouts has seven articles discussing rainbow-colored cereals and various articles discussing the color evolution of fruity pebbles from three colors in 1973 to the seven colors that presently exist. Scott: That someone would write an article about the evolution of the colors of fruity pebbles is just a head-scratcher. Jessica: It must have been fun to write, though. From the TTAB opinion, it seems that the TTAB found extremely persuasive the pictures of cereal boxes that show similar multicolored cereal combinations, which were submitted as evidenced by the trademark examiner. This includes some of my personal favorites: Captain Crunch, All Berries, Fruit

The FTC recently made changes to its guide concerning the use of endorsements and testimonials in advertising. Scott Hervey and Jessica Marlow discuss these changes and their expected impact on the influencer marketing industry in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: It’s a new year, and some changes are in place for those in the influencer marketing business, whether it’s on the brand side or on the talent side. We’ll be covering recent changes to the FTC’s guide concerning the use of endorsements and testimonials in advertising on this installment of The Briefing by Weintraub Tobin. Happy New Year, and thank you for tuning in to today’s installment of The Briefing. I’m Scott Hervey of Weintraub Tobin, and today, I’m joined by a first-time guest to The Briefing, my law partner, Jessica Marlow. Jessica, welcome to the briefing. Jessica: Thank you, Scott. Happy to be here. Scott: So, Jessica, can you give us a little background on the FTC’s involvement in endorsements and testimonials and the endorsement guide? Jessica: Absolutely. So, the FTC has the authority to investigate and bring cases related to endorsements made on behalf of an advertiser under section five of the FTC Act, which generally prohibits deceptive advertising. The endorsement guide is intended to give insight into how the FTC perceives various marketing activities involving endorsements and how the FTC’s acts prohibition against deceptive advertising might apply to those particular activities. The guides do not have the force of law, but they are considered to reflect safe practices, meaning that if your marketing activities are inconsistent with the guides, that could result in law enforcement actions alleging deceptive advertising, which could include fines or restitution. Scott: That’s a great summary. So, I understand that the guides have been around since, believe it or not, 1979, with the biggest update occurring in 2009, which addressed bloggers. Remember those celebrity endorsers and UGC user-generated content. Since then, the guides have continued to be updated to address the evolution of social media advertising. So, what’s new? Or what’s new in this most recent update to the guide? Jessica: Well, the FTC has provided some new guidance on what is an endorsement and who is an endorser. The historical definition of endorsement is any advertising, marketing or promotional message for a product that consumers are likely to believe reflects the opinions beliefs finding experiences of a party other than the sponsoring advertiser. So, the FTC has now included tags and social media posts in the list of things that can be considered. Scott: Endorsement and the FTC’s position on who is an endorser. Now that changes. A reflection of the proliferation of AI influencers. The FTC now defines an endorser as that which quote appears to be an individual, group or institution. The FTC did make it clear that this language does not just apply to virtual or fabricated influencers. It also applies to writers of fake reviews and nonexistent entities that purport to give endorsements. So, let’s talk about something that I’m sure everybody loves talking about. That’s liability. Jessica: Oh, yes, liability. So, let’s dive into that a little bit further. Everyone likes talking about how they can be sued. So, the previous language about advertiser liability said that advertisers are subject to liability for misleading or unsubstantiated statements made through endorsements. When there is a connection between the advertiser and the endorser, the FTC has deleted the wording. When there is a connection between the advertiser and the generally, there’s a connection between the advertiser and the endorser because it is, after all, a marketing or promotional message. However, the FTC has pointed out that a connection is not always needed for an advertiser to be liable for an endorsement. If, for example, an advertiser retreats a positive statement by an unrelated third party, or let’s say, republishes in an advertisement, a positive review by an unrelated third party, then that statement or review becomes an endorsement for which the advertiser may be liable despite the lack of any such connection. Scott: That’s an interesting potential trap for liability. And I know lots of brands that do that, and they have no insight into whether or not the original poster or tweeter is being truthful in what they’re saying. Jessica: Right? Scott: Yeah, like, oh, this is my favorite thing. I use it all the time, and they repost it. That could not be true. Right. We’ll talk about best practices at the end, but I definitely can think of one thing that brands and advertisers probably need to be very thoughtful of when they’re reposting and retweeting posts from third p

While iconic catchphrases from TV and film can hold significant equity, protection of them can be spotty. Scott Hervey and Tara Sattler talk about the protectability of short phrases on this archive episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: “Show me the money.” “Who are you going to call?” “Go ahead, make my day.” These are a few iconic phrases with significant equity, but protection of catchphrases like these is spotty. We’re going to talk about the protectability of short phrases on this next installment of The Briefing by Weintraub Tobin. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. Tara, thank you for joining us. Tara: Thanks for having me, Scott. Glad to be here. Scott: So, Tara, we deal with this quite a bit. Iconic short phrases that come up usually in script search reports. Now, these phrases are worth their weight in gold, and the creators of these short phrases would probably like to prevent others from using those phrases under any circumstances. But that’s not always the case. Tara: Yeah, you’re right, Scott. So let’s first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under copyright law, and that isn’t the case. Scott: That’s right. Short phrases are not protectable under U.S. copyright law. According to a copyright office circular, short phrases such as slogans are unprotectable because they contain an insufficient amount of authorship, no matter how creative or catchy they may be. The copyright office will not register short phrases, even if they’re novel, distinctive, or lend themselves to a play on words. Tara: And if a work is not protectable under copyright, then it cannot be the subject of a copyright infringement claim. But that doesn’t mean that all uses of a third party’s short phrase are always okay. Scott: That’s right. While the quotation of a short phrase in books or in movies may not be actionable, the use of let’s get ready to rumble in connection with the sale of goods or services could certainly bring a lawsuit. Tara: It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for “let’s get ready to rumble” and has been quite active in policing its use. Scott: He’s been very active in policing its use. Trademark protection is the best form of IP protection for such short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and they’re used in connection with goods or services. Tara: Just do it is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie? Scott: Well, if it’s a quote like ET phone home, that could be protectable for merchandise but not likely for the movie itself. Tara: Yeah, that’s right. And the same applies to may the force be with you. Scott: The problem that one may encounter is when is a short phrase not a short phrase? Right. When does it become longer material such that there’s a sufficient amount of authorship and thus protectable under copyright law? I like to think that if it’s more than a sentence or two, that’s when there’s enough authorship that it’s protectable under copyright law. Tara: I would agree with that. And I also think it matters what is included in those sentences, because another element that the copyright office considers in what material can be protected by copyright is originality. Scott: Right. But we all know from the FIS case that the organization of a telephone book can be sufficient to meet that level of originality. So it can be a low threshold. Obviously, if it’s the same words over and over again for four sentences, it’s probably not original enough to suffice for copyright. I kind of liken it, too. Is, is it a quote or is it a stanza or a poem? And if it’s just a quote, then it’s not copyrightable and it is okay to be used. But if it’s longer than that, then it requires clearance. But also, we’re only talking about U.S. copyright law. We’re not talking about protection under foreign law, which, granted, I’m not an expert on, but there is the implication of moral rights and attribution under moral rights in certain foreign territories. When you have the use of phrases like this, and it’s questionable, I don’t know if French copyright law has the same or Australian copyright law has the same rules or the same requirements that we have such that short phrases like this are not protectable. Tara: That’s right. Copyright law in different countries. Really,

In the case of Martinez v. Zoom Info Technologies, the Ninth Circuit addressed the “Public Interest” exemption to California’s anti-SLAPP law. Scott Hervey and James Kachmar talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: The 9th Circuit was recently asked to address the public interest exemption to California’s anti-SLAPP law in a proposed class-action lawsuit brought by a plaintiff whose photo and personal information were used without her consent to advertise subscriptions to the website Zoom info. The case is Martinez v. Zoom Info Technologies. My colleague James Kachmar recently wrote an article exploring the interesting substantive and procedural issues concerning the interplay between one’s intellectual property rights and California’s anti-SLAPP law that arose in this case. James is joining me today to talk about this case on this installment of The Briefing by Weintraub Tobin. James, welcome back to The Briefing. James: Thanks for having me. Scott. Scott: James, you wrote an extremely insightful article about the holding in Martinez versus Zoom Info Technologies, Inc. Can you give us some background on the case? James: Sure, Scott. Zoom Info is a website. It boasts a database of approximately 125,000,000 business professionals and contains their relevant information. When someone searches for a person or a business person, either through a web search or through Zoom Info’s website, they can view a teaser profile of Zoom Info with some information about that person, such as their photo, maybe some limited business information, but most of the information is redacted. This teaser profile then contains the subscription buttons that invite the viewers to subscribe to Zoom info for a fee to access more information about that person and do other searches. The plaintiff in the case, Kim Martinez, is a political and legislative director of a labor union representing California public sector employees. Zoom Info has a profile dedicated to her that includes information regarding her job title, her employment at the union, contact information, and names of several of her business colleagues. Her teaser profile included options for a viewer to subscribe to Zoom Info, including, apparently, an option for a $10,000 annual subscription. Ms. Martinez alleged she never used Zoom Info and had not consented to the use of her profile by Zoom Info for marketing purposes. In September 2021, Ms. Martinez filed a lawsuit against Zoom Info in federal court on behalf of herself and a proposed class of California citizens whose profiles might have been used without their consent, like hers. She claimed that Zoom info violated California law, particularly the right of privacy statute, by unlawfully profiting from her intellectual property of herself and the class. Members, such as the use of her name, photo and employment information and Zoom. Scott: Info responded to this filing by filing a motion to dismiss under California’s anti-SLAPP laws, correct? James: Yes. It filed two motions, a motion to dismiss saying that the lawsuit had no merit, and a motion to strike under the anti-SLAPP law in California. California’s anti-SLAPP laws, designed to protect against lawsuits brought primarily to suppress free speech and petition rights while encouraging participation in matters of public significance. The district court denied Zoom Info’s motions, including the motion to strike under the anti-SLAPP, which led Zoom Info to file an immediate appeal to the 9th Circuit. Scott: Now, California’s anti-SLAPP law includes several exemptions or exceptions where the anti-SLAPP statute may not apply. These exemptions are designed to ensure that the law is appropriately applied in cases where there are legitimate concerns or disputes that go beyond free speech and public participation. If the alleged conduct falls under one of these exemptions, it may not be protected by the anti-SLAPP statute. For example, one exemption is commercial speech. If the lawsuit is related to advertising, marketing, or other purely commercial activities, the anti-SLAPP protection may not apply. So, the 9th Circuit initially considered whether it even had jurisdiction to review the district court’s denial of Zoom Info’s anti-SLAPP motion to strike. So what happened there? James: This is the interesting procedural issue you mentioned in the introduction. So, under California’s anti-SLAPP law, if a court denies an anti-SLAPP motion on one of the statutory exemptions, such as the public interest exemption or commercial speech exemption, that denial may not be immediately appealed. However, here, the district court denied the motion based on its determination that Zoom Info had failed to establish the elements for anti-SLAPP relief and was not based on any of the exemptions. As such, the 9th Circuit conc

Country singer Andy Stone, A.K.A Vince Vance, has renewed his lawsuit against Mariah Carey, which claims that her holiday hit ‘All I Want for Christmas Is You’ infringes the copyright of his song with the same name. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Andy Stone, known professionally as Vince Vance, is suing Mariah Carey and Sony Music Entertainment for copyright infringement. Vance claims that the decades-old Christmas hit ‘All I Want for Christmas is You’ infringes his 1989 song ‘All I Want for Christmas is You.’ I’m Scott Hervey with Weintraub Tobin, and I’m joined today on this holiday edition of The Briefing by my partner Tara Sattler to discuss this Christmas-themed copyright infringement dispute on this next installment of The Briefing by Weintraub Tobin. So, Tara, I think nothing rings in the holiday like a good copyright infringement lawsuit. Tara: Yeah, who doesn’t want to spend the holidays with their lawyers in court? Scott: I know I certainly do. So, Tara, according to the complaint, Stone and his co-writer Troy Powers claim that in 1989, they co-wrote a country music hit also titled ‘All I Want for Christmas is You.’ That song was recorded by Stone’s band Vince Vance and the Valiants, and apparently, it went to number 23 on Billboard’s Hot 100 airplay list. He claims that he has performed this song over 8000 times in concerts across 20 countries. He also claims that this song was licensed by Kelly Clarkson, who recorded her version of it in 2021. Tara: In the complaint, Stone alleges the unique linguistic structure of his song was copied and that his song is about a person disillusioned with expensive gifts and seasonal comforts, wants to be with their loved ones at Christmas, expresses that wish to Santa, and that the loved one and unnamed you standing under the Christmas tree would be a dream come true. Stone also identifies the phrase ‘All I want for Christmas is You’ as an element that was infringed. Lastly, the plaintiff claims that similarities in the melody support its claim. Scott: So, let’s take a look at these claims and see how Carey and her team may respond and also how a court, right here in the Central District of California, may analyze the plaintiff’s claims. So, as we know, a court will analyze the complaint by applying the extrinsic test, which, as we’ve discussed before, is used in the determination of substantial similarity. After the plaintiff has identified specific criteria that it alleges to have been copied, the court separates the unprotectable elements, such as facts or ideas, from those elements that are protectable. And then it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant’s work is substantially similar to the plaintiff’s work. So, let’s look at two of the elements the plaintiff identifies as being infringed: the linguistic structure and the phrase ‘All I want for Christmas is You.’ Tara: Sure? There are many songs that express the sentiment of wanting to be with a loved one during the Christmas season, and I can think of a few songs that draw on the theme of expressing wishes to Santa, such as Ariana Grande’s ‘Santa, Tell Me,’ ‘My Grown-Up Christmas List’ by Amy Grant, and even ‘Santa Baby’ by Earth A. Kitt. Scott: That’s right, and I suspect that Carrie’s team will argue that the theme of expressing the desire to be with a loved one for Christmas is too common of a theme for Christmas songs to be protectable. They will argue that the concepts of love, longing to be with a loved one at Christmas, and expressing desires to Santa are frequently present in Christmas songs, and that places them outside of the protection of copyright law. Tara: Similarly, I think that Carrie’s team will argue that ‘All I want for Christmas’ is you is a short phrase. And as we have discussed before, short phrases lack copyright protection. Scott: Yeah, that’s right. According to the copyright office circular, short phrases are unprotectable because they contain an insufficient amount of authorship. Tara: Vance seems ready to argue this point, though. In his complaint, he states that the phrase ‘All I want for Christmas is You’ may seem like a common phrase today, but in 1988, it was, in context, distinctive. What about the claim alleging melodic similarities? Vance alleges that the combination of the specific chord progression in the melody paired with the verbatim Hook was a greater than 50% clone of Vance’s original work in both lyric choice and chord expression. Scott: The determination of melodic similarities are really for the musical experts, and thi

Mariah Carey has widely been referred to by fans as the ‘Queen of Christmas,’ but when she attempted to trademark the title last year, it was met with pushback from another singer and songwriter who claimed to hold the same title. Scott Hervey and Tara Sattler discuss this dispute on this Holiday edition of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In 2022, Mariah Carey sought to register the trademark ‘Queen of Christmas’ for a wide variety of goods and services. Her application was opposed by a singer-songwriter who claimed she was known as the Queen of Christmas. I’m Scott Hervey with Weintraub Tobin, and I’m joined today by my partner Tara Sattler to discuss this holiday trademark dispute on this next installment of The Briefing, Christmas edition, by Weintraub Tobin. Tara, welcome to The Briefing. You have a great holiday sweater on. Tara: Thanks for having me, Scott, and so do you. Scott: So, as you know, Tara, Mariah Carey is extremely well known for her 1994 holiday hit “All I Want for Christmas is You”, which has reportedly made more than $60 million in royalties alone. In 2022, her company filed a trademark registration application for Queen of Christmas, covering a wide variety of goods and services. In the prosecution of her trademark application, while the United States Patent and Trademark Office trademark examiner assigned to the application raised a few issues, the application pretty much sailed through to publication. Tara: Then, later that year, singer-songwriter Elizabeth Chan filed an opposition to the registration of the mark. The basis of Chan’s opposition was likelihood of confusion. In her filing, Chan claimed that she is pop music’s only full-time Christmas singer-songwriter and has herself been repeatedly dubbed the Queen of Christmas. She claims to have prolifically written, composed, and performed only original Christmas holiday-themed songs for more than a decade, and due to the notoriety that she’s attained for this singular and specific achievement, Elizabeth Chan has been referred to as the Queen of Christmas by multiple media, including in 2018 by the New Yorker Magazine. Scott: In her opposition, Chan claims to have been in continuous use of the Mark Queen of Christmas since at least 2014. Chan further argued that Queen of Christmas should not be owned or controlled by Ms. Carey’s company since Ms. Carey herself has admitted that she did not create the title or moniker Queen of Christmas, and she does not even consider herself the Queen of Christmas. Tara: So, with the opposition filed, Ms. Carey’s company was required to file an answer by a date certain, which did not happen. As a result, a default was entered against Ms. Carey’s company, and the application to register the mark was deemed abandoned by the TTAB. So Scott, do you think that Carey was being Scrooge in filing her trademark application? Scott: I don’t think so. She was represented by a highly reputable law firm and she certainly could have pressed her rights if she desired to do so. Maybe she was moved by the opening paragraph in Chan’s petition, which said Christmas is big enough for more than one queen. Over the decades, several recording artists have been dubbed with the nickname Queen of Christmas, including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come. I mean, whatever Carey’s motivation was not to defend against the petition and to allow her application to go abandoned. This thing we can be certain of, as certain as there is a Santa Claus, that there will be more than one queen of Christmas. Tara: Well, that’s a really interesting case study and example. Scott, thanks for telling us about this one. Scott: Thank you for listening to this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.

Netflix has been ordered to pay GoTV Streaming $2.5 Million in damages for infringing one of its wireless technology patents. Scott Hervey and Eric Caligiuri discuss this update on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. In a prior discussion with my colleague, Eric Caligiuri, earlier this year, we talked about a case where a federal court denied discovery requests aimed at uncovering details surrounding the financing of a plaintiff’s patent litigation. That case was GoTV Streaming LLC versus Netflix in the Central District of California. In response to some inquiries and requests for further updates from some of our viewers and listeners, we wanted to give you an update on the broader outcome of this case. That’s coming up on this installment of The Briefing by Weintraub Tobin. Eric, welcome to another episode of the Briefing. Thanks for joining us today. Eric: Great to be here, Scott. Scott: Eric, what can you tell us about what’s happened in the GOTV streaming versus Netflix case since we last spoke? Eric: Well, Scott, California jury has found that Netflix did in fact, infringe one of GOTV Wireless’s technology patents with its television and movie streaming platform, and found Netflix owes GOTV Streaming 2.5 million for the infringement. In the verdict, the jury said that Netflix should pay GOTV the damages in one lump sum as a penalty for infringing US patent number 898715. But the jury did find that Netflix did not infringe a second patent that was also included in the suits. Both patents generally covered methods for rendering content on a wireless device. Scott: So, 2.5 million is not really a lot of money for Netflix. But I do have a technical question for you, and maybe you might not know, based on the judgment, does the judgment include ongoing royalties? In other words, will Netflix be able to continue to use this technology if it continues a particular royalty payment? Or does that $2.5 million include ongoing use of the patent, or is this just for past use, and Netflix can’t use this technology without further infringement? Do you know? Eric: Yeah. So, that judgment was just for past infringement. It was a lump sum payment. There’s nothing about ongoing royalties or future payments. There’s probably a bit of an open question in terms know what Netflix can do in the future, and they may have to go and license the patent. But there was nothing specific in the jury verdict about going forward. It was simply damages for past infringement. Scott: Okay, so either Netflix has to enter into a commercial deal with GOTV, or they need to come up with a technology that doesn’t infringe that particular patent. Interesting. Eric, can you tell us about some of the background of this case? Eric: Yeah, sure. So GOtV first sued Netflix in October of 2022, alleging certain parts of Netflix’s streaming service infringed two of its wireless technology patents. Specifically, GOTV alleged Netflix’s streaming service uses the methods covered by GOtV’s patents to lay up content on its app and website, like its widgets, menu buttons, photo imagery. Netflix argued in response that it had no pre-filing knowledge of the patents, and without that knowledge, there couldn’t be any indirect infringement or induced infringement. Instead, Netflix argued that GotV tried to create knowledge of the patents by filing suit, sorting the patents, and then alleging inducement and an amended complaint. But, according to Netflix, in order to claim induced infringement, there has to be proof that the infringer had knowledge of the patents in suit before the complaint was filed. Scott: Interesting. So what happened next? Eric: Well, after conducting discovery, including covering some of the issues into litigation funding that we discussed last time, the jury found that Netflix did in fact infringe on one of GOTV’s patents through the use of its cloud computing providers to operate its streaming platform. But it did not infringe Netflix. That is the other one of the patents which was covering Netflix’s operation of the devices. So that’s when the jury then awarded the $2.5 million for the infringement of the one patent. Scott: Okay, so, I mean, as I just said, I think $2.5 million is almost a rounding error for Netflix nowadays. Do you have any idea what’s going to happen next? Is Netflix just going to pay the $2.5 million, or do you think they might appeal? Eric: Can’t say exactly what Netflix will do, but most likely, Netflix won’t just hand over the 2.5 million to go TV at this point, and instead, they may try to challenge the jury’s verdict, either through some post-trial motions with the district court or possibly an appeal to the Federal Circuit, sort of separately. Netflix also still has some challenges

The Supreme Court rejected a trademark infringement claim against the producers of the Quentin Tarantino film ‘Once Upon a Time… in Hollywood’ over its portrayal of the late actor Christopher Jones. Scott Hervey and Tara Sattler discuss this decision in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: The laws surrounding false endorsement claims in the United States are rooted in section 43 A of the Lanham Act. There’s quite a bit of case law that analyzes false endorsement claims brought by celebrities who claim that a company or brand used a lookalike or soundalike to promote the brand in advertising or marketing campaigns without the celebrity’s permission. Recently, the U.S. Supreme Court refused to review a California case about this exact topic. This time, the case was brought by the partner of the late actor Christopher Jones concerning the popular 2019 Quentin Tarantino film ‘Once Upon a Time in Hollywood.’ This is what we will be discussing in today’s installment of the Briefing by Weintraub Tobin. Scott: I’m Scott Hervey from Weintraub Tobin. Tara, thanks for joining me today. So you’re right that celebrities bring these types of false endorsement claims under section 43 A of the Lanham Act relatively frequently. So, let’s talk about the specific language in the Lanham Act that addresses false endorsement. Tara: That’s a great place to start. Section 43 A imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol or, device, or any combination thereof, or any false designation of origin. False. Or misleading description of fact or false or misleading representation of fact, which is likely to deceive consumers as to the affiliation, connection, association sponsorship, or approval of another person’s goods or services. Scott: Right. And courts have held that a celebrity’s physical likeness, voice, or other unique or distinguishing characteristics does constitute a symbol or device as specified in section 43 A of the Lanham Act. So, this is the usual basis for a celebrity false endorsement claim. These types of claims often arise in marketing and advertising campaigns where a brand or a service will use a lookalike or a sound alike of a celebrity. And I’ve even seen cases where they’ve used photographs of a celebrity to market that brand. Vanna White from Wheel of Fortune and the pop culture and music icon Ariana Grande, to name just a few, have brought false endorsement claims in the past. Tara: This recent case that went up to the U.S. Supreme Court concerns the likeness and unique physical attributes of the late actor Christopher Jones. Jones was a popular actor in the 1960s, starring in both TV and movies. Jones passed away in 2014 and assigned the rights in his likeness to his partner, Paul McKenna. Sony released Quentin Tarantino’s film Once Upon a Time in Hollywood in 2019. The film is loose historical fiction based in the 1950s and centers around fictional characters played by Leonardo DiCaprio and Brad Pitt. It also touches on the Manson family murder of Sharon Tate McKenna. Scott: The executor of Jones’s estate brought both a false endorsement claim and a trademark infringement claim against the producers of Tarantino’s film. The plaintiff cited a few examples as the basis of the claim. First, Jones’s name was mentioned in Tarantino’s film. Second, a television advertisement and a marquee advertisement that mentions Jones’s name and one of Jones’s films. Three in The Addict are shown on screen in Tarantino’s film. And third, Jones was used as the inspiration for the fictional character played by Brad Pitt and Leonardo DiCaprio. While these characters interacted with commercial brands. Tara: In Tarantino’s film, the trial court evaluated the merits of McKenna’s claim. While evaluating the defendant’s anti-slapp motion on the false endorsement claim, the trial court emphasized that mere use of a celebrity’s image or likeness is not actionable, but the use of a celebrity’s image and likeness needs to suggest sponsorship or approval in order to constitute a false endorsement. The court further emphasized that a false endorsement must also be something that is likely to confuse consumers or mislead them into thinking that the celebrity endorsed a product or brand when they actually did not. While the question of consumer confusion is a factual one, the court did not find it plausible that a brief use of Jones’s name or some loosely similar personality characteristics would mislead a reasonable viewer watching the film. Scott: Right. And this is in line with the decades of other precedent on this matter that establishes that a celebrity’s voice, likeness, or persona; first it needs to be distinctive enough t

The creator of a LEGO brick Second Holy Temple product is accusing another LEGO creator of copyright infringement for their interpretation of the same temple. Scott Hervey and Eric Caligiuri discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here or read Eric’s article about this case here. Show Notes: Scott: I’m Scott Hervey from Weintraub Tobin. My colleague Eric Caligiuri wrote an interesting article for The Briefing about a recent copyright ruling involving competing LEGO sets. And we’re not talking about just any old LEGO set, but a LEGO Brick interpretation of the Second Holy Temple. We are going to talk about this case, the case of JBrick versus Chazak Kinder, Inc, on this installment of The Briefing by Weintraub Tobin. Eric, welcome back to the podcast. Eric: Thanks, Scott. Good to be here. Scott: Great. Can you give us a rundown of the case? Eric: Yeah, sure. Of course. The founders of Plaintiff JBrick created a LEGO brick Second Holy Temple product that was based on independent research and at least three years of studying of historical teachings. Plaintiff also consulted with various rabbis as part of the design process. According to the court, the Second Holy Temple product is a tangible, sculptural interpretation of what the Second Holy Temple may have looked like in real life, based on the written words and interpretations of Hebrew scholars and philosophers. Scott: And JBrick even went so far as to obtain copyright registrations for its Second Holy Temple product, along with the copyright registrations for the product’s photographs, right? Eric: Yes, that’s correct. And now the plaintiff, JBrick, alleged that the defendant’s product was almost an exact replica of its own Second Holy Temple product, containing all the unique features that set JBrick’s product apart from its competitors. Accordingly, JBrick filed a complaint in May of 2021, citing claims for copyright infringement and unfair competition against these defendants. The defendants responded by claiming or by filing counterclaims for non-infringement of copyright, copyright invalidity, torture’s interference with prospective economic advantage, and false advertising. Scott: And let’s forward to the recent court ruling. And in that ruling, the court addressed the plaintiff’s motion for summary judgment on the defendant’s counterclaim for copyright invalidity. So, under the Copyright Act, a copyright registration creates a rebuttal presumption that the copyright is valid. This presumption of validity may be rebutted where other evidence casts doubt on that question. So, given what we have here, given that JBrick has copyright registrations, the burden it shifted to the defendant to come forward with evidence that the works in question were copied from the public domain. Eric: Yes, that’s exactly right. So, the defendants argued that because the information concerning the Second Holy Temple is in the public domain, the plaintiff’s copyrighted works are not original. As a result, the defendants contended that the plaintiff’s second Holy Temple product can be copied and used in derivative works. The defendants further argued that a historically accurate replication does not constitute a new and original work. Scott: So I can see that Eric being a fairly compelling argument. How did J Brick respond to this? Eric: The plaintiff responded that there’s no evidence to support the defendant’s depiction of the Second Holy Temple in the public domain, that there’s no evidence that plaintiff’s depiction is a historically accurate replication because the Second Holy Temple was destroyed almost 2000 years ago and there are no images from before when the building was destroyed. In order to create the Second Holy Temple product, the plaintiff had to read numerous textual descriptions and translated words into a 3D sculpture, further supporting its claim. Originality. Scott: So, to qualify for copyright protection, a work must be original to the author. And originality means only that the work was independently created by the author, as opposed to being copied from some other works, and that this work possesses at least some minimal degree of creativity. Now, a new work that incorporates public domain material can itself enjoy copyright protection as long as the author-added content meets the threshold of originality. Eric, how did the court address J Brick’s contention that its work was not in the public domain? Eric: Well, the court found that defendants did not show that the work had been copied from the public domain. Court noted that the defendants identified only four written texts that would support its public domain argument. A copyright is invalid only if the subject work shows no originality. That is, the copyrighted work is in no way distinguishable from something that had alre

The Supreme Court recently heard oral arguments in the case of Vidal v. Elster to determine whether the USPTO’s refusal to register the trademark “Trump Too Small” violates the applicant’s First Amendment rights. Scott Hervey and Eric Caligiuri discuss this case on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Today, November 1, 2023, the Supreme Court will hear oral arguments on whether the Trademark Office’s refusal to register the trademark “Trump Too Small” on the grounds that it violates Section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual’s consent violates the applicant’s First Amendment rights. We are going to talk about this case on this installment of The Briefing by Weintraub Tobin. The case is Vidal v. Elster. The facts are relatively simple. Elster sought to register the mark “Trump Too Small” for T-shirts. The USPTO refused to register the mark based on section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual’s consent. Elster appealed this refusal to the Federal Circuit, where Judge Timothy B. Dyke held for a unanimous panel that the government’s interest in protecting the privacy and publicity rights of President Trump did not outweigh Elster’s First Amendment right to criticize that public figure. Eric: USPTO suspended the examination of applications of trademarks that cover phrases that are critical of government officials or public figures and petitioned the Supreme Court for review? Scott: That’s right. The question for review by the Supreme Court is whether the Section Two C Bar of the Registerability of trademarks that identify a particular individual without their consent, including those that are critical of government officials or public figures, is a condition of a government benefit, the trademark registration, or a restriction on speech. Eric: So let’s talk about this in light of Matal vs. Tam, which struck down a ban on trademarks that may disparage groups of people, which included marks that incorporated racist or demeaning terms on First Amendment grounds, and also Iancu v. Brunetti that invalidated a ban on profane or lewd trademarks, also on First Amendment grounds. Scott: That’s a good point, Eric. In its petition to the Supreme Court, the USPTO distinguished these two cases from this instant case. The USPTO argued that the restrictions at issue in Tam and Brunetti were viewpoint-based restrictions. The USPTO contends that Section Two C is viewpoint neutral, meaning it doesn’t matter whether the application is for a mark that is critical of a live person, complimentary of a live person, or neutral. If the mark contains the name of a live individual, it can’t be registered without their consent under section two C. Eric: So, Scott, putting aside the argument that Section Two C is a viewpoint neutral, do you think that the trademark Office’s refusal to register Chill’s political speech? Scott: I don’t remember. Registered trademark is a protectable right. So what happens if this applicant was granted registration? Then, others who want to express a similar political sentiment on a T-shirt or a bumper sticker would be prohibited from doing so. The granting of a trademark registration to Marx that includes political criticism of notable figures would actually limit that kind of speech. Specifically, the office stated that it is the registration of marks like the respondents, not the refusal to register them, that would chill such speech. Eric: Thanks, Scott. Very interesting. Be sure to update us when the Supreme Court issues a ruling. Scott: I certainly will. Thank you for listening to this episode of the Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a commentary.

Thomson Reuters sued Ross Intelligence for using its content to train its AI technology. Scott Hervey and Tara Sattler talk about this copyright dispute on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Thompson Reuters, the provider of the Westlaw Legal Research Platform, sued Ross Intelligence for copyright infringement based on Ross’s use of Westlaw content to train Ross’s IP technology. This court ruling on a motion for summary judgment may provide guidance for future similar cases, and it even provides some additional guidance into the application of a post-Warhol fair use defense. We’re going to talk about this case on the next installment of The Briefing by Weintraub Tobin. These are the basic facts underlying this lawsuit. Ross is an AI legal startup. Ross hired a subcontractor to create memos with legal questions and answers. The questions were meant to be those that a lawyer would ask, and the answers were direct quotations from legal opinions. Those memos were used to train Ross’s AI tool. Thompson Reuters contends that these questions were essentially Westlaw case Headnotes. Ross denies that the Westlaw Headnotes were copied but also raises a fair use defense. As the case went forward, both sides moved for summary judgment on Ross’s fair use defense. The court denied the party’s motions for summary judgment on Ross’s fair use defense, but there are a few points in this opinion that may shape the way future AI training cases play out. Tara: Before we get into the analysis of Ross’s fair use defense, the court spent a significant amount of time talking about the scope of Westlaw’s copyright. Westlaw’s copyright extends to its Headnotes and its arrangement of the Headnotes and opinions, but its copyright does not extend to the opinions itself. Scott: That’s right, and the reason the court spent so much time talking about the scope of Westlaw’s copyright was because Ross challenged Westlaw’s copyright claim in the Headnotes. Ross claims that the Westlaw Headnotes follow or closely mirror the language of the judicial opinions. And if a Headnote merely copies a judicial opinion, it’s not copyrightable. But if it varies more than a trivial amount, then Westlaw owns a valid copyright. The court found that this leaves a genuine factual dispute about how original the Headnotes are. If the Headnotes are mere regurgitation of parts of an opinion, this will severely impact the strength and the extent of Westlaw’s copyright case and Westlaw’s copyright in its whole, including in the Headnotes. And it also goes to whether Ross was copying the Headnotes or the opinions themselves. Tara: So, how do you see this applying to other copyright cases involving AI training? Scott: Well, this analysis is part of the extrinsic test, which is used in the determination of substantial similarity after the plaintiff has identified specific criteria which it alleges have been copied. The court separates the unprotectable elements, such as facts or ideas, from the elements that are protectable. And then, it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant’s work is substantially similar to the protected elements of the plaintiff’s work. This analysis is part of any copyright case, and it certainly will be part of an AI training case as well. Tara: Okay, so back to Ross’s fair use defense, because the court finds that Ross actually copied the head notes. So fair use balances four factors: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for the copyrighted material. The first factor assesses whether the use is transformative, as established in the Supreme Court case of Campbell versus Acuff Rose music. Transformativeness occurs where the new work adds something new with a further purpose or different character, altering the first with new expression, meaning, or message. Scott: Right? And the Warhol decision now requires courts to ask, as part of the first factor, whether and to what extent the use at issue has a purpose or character different from the original and whether that supports a justification for copying. So now, the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify copying. Under the Warhol decision, a transformative use cannot be found for any use that just adds some new expression, meaning, or message. Now, the purpose of the use must be distinct enough from the purpose of the original use to justify copying. Tara: We have always known that the first fair use

A tattoo artist is suing Netflix for showing one of her tattoos in the series “Tiger King” without her permission. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: On this installment of The Briefing, we’re going to talk about yet another post-Warhol fair use case. However, in this case, the Court finds the secondary use to be transformative. This case also makes me think that fair use, grounded in use as a biographical anchor, isn’t quite as dead as I may have thought it is. We’re going to talk about Molly Cramer vs. Netflix on this installment of the Briefing. The case is Molly Kramer vs. Netflix. It arises from a tattoo artist’s lawsuit against Netflix due to the portrayal of her Joe Exotica tattoo, actually, a picture of her Joe Exotica tattoo as tattooed on her husband’s arm that she posted on Facebook, and the use of this image in the first episode of the second season of Tiger King. The context of the display of this photo and the tattoo is relevant to the Court’s analysis. So the opening of the episode, this is the first episode of the second season, is meant to be reflective of the popularity of Tiger King and Joe Exotica and how it spread like literal wildfire during the first half of COVID The montage shows approximately 27 TikTok videos depicting dancers dressed as Joe Exotica are wearing animal print clothing and a clip from a Trump press conference where he asks, is that Joe Exotica? Then there are about 58 seconds into the episode, an eight-way split-screen montage appears with all types of images of or relating to Joe Exotica, and this includes the photo of the tattoo in the lower left-hand corner. And this appears on screen for about 2.2 seconds. The barrage of images and videos continue on for about three minutes in total, all of which is to show how Joe Exotica, Carol Baskin, and the other cast of characters from Tiger King became a huge part of the cultural zeitgeist for that specific moment in time. Tara: So the tattoo artist here, Molly Kramer, obtained a copyright registration covering the tattoo and then sent Netflix a demand letter. The court opinion says that she demanded $10 million to settle the infringement claim. Scott: So, let’s talk about that demand for a second. If, as a plaintiff in a case like this, you come out with such a huge demand number, a number that, at least as far as I’m concerned, has no relation to the amount of damages that you would likely be awarded. I think it only pushes the defendant to defend the case because it says that you either aren’t reasonable or that you don’t understand how damages in a copyright case are to be assessed. So, yes, I mean, Netflix has a lot of money, but it isn’t handing out bags of money to plaintiffs who have a potentially defensible claim. Tara: And it seems like that’s probably what happened here, because it seems that Netflix and Kramer’s attorney did exchange further letters, and Kramer eventually offered to settle for $50,000 instead of 10 million. But Netflix continued to insist that their use was fair use. Kramer eventually filed a copyright infringement lawsuit, and Netflix filed a twelve B six motion to dismiss the case on the grounds that Netflix’s use of the tattoo image was fair use. Scott: So, to determine whether a work constitutes fair use, courts engage in a case-by-case analysis and a flexible balancing of relevant factors. Those factors are the purpose and character of the use, including whether the use is of commercial nature or is for a nonprofit educational purpose. The second factor being the nature of the copyrighted work that’s copied, the third factor being the amount and substantiality of the portion of the work that’s used in relation to the copyrighted work as a whole. And the fourth factor is the effect of the use upon the potential market for or value of the copyrighted work. Tara: So, the first factor assesses whether the use is transformative, as established in the Supreme Court case of Campbell versus Cuff Rose Music. Transformativeness occurs where the new work adds something new with a further purpose or different character, altering the first with new expression, meaning, or message. Scott: Right. And the recent Warhol decision now requires courts to ask, as part of the first factor, whether and to what extent the use at issue has a purpose or character different from the original and whether that supports a justification for copying. So now, the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. Under the Warhol decision, a transformative use cannot be found for any use that just adds some new expression, meaning, or message. Now, the purpose of the use must be distinct e

Former New York prosecutor Linda Fairstein is suing Netflix over her portrayal in the limited series “When They See Us,” which tells the story of the 1989 Central Park Five case. Scott Hervey and Tara Sattler discuss this dispute on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: There have been quite a few high-profile defamation cases making their way through the courts recently. One of those cases is Fairstein v. Netflix, a defamation case brought by attorney Linda Fairstein, the New York City prosecutor who ran the sex crimes unit and oversaw the prosecution of five African American men known as the Central Park Five, who were wrongly accused and imprisoned for a near-fatal rape in Central Park. Fairstein sued Netflix for defamation over her character’s depiction in the limited series When They See US, that was released by Netflix and produced by The Streamer. Even though the case has not yet gone to trial, there have been several interesting pretrial rulings. In the most recent ruling, a federal judge in New York denied Netflix’s motion for a summary judgment, which means that the case is one step closer to trial. On this installment of the briefing, we’re going to talk about the recent ruling and the potential impacts that this ruling may have on the uber-popular film and television programming that’s based on real events and real people. Scott: Since it has been a while since we’ve talked about this case, let’s briefly talk through Fairstein’s allegation of defamation. She alleges that she was incorrectly portrayed by actress Felicity Huffman as having a larger role in the Central Park Five’s fate than was factually accurate. She mentions three specific episodes and that she is portrayed in a false and defamatory manner in nearly every scene in those episodes. Her original complaint claims that this series depicts her using her true name as a racist, unethical villain who is determined to jail innocent children of color at any cost. Tara: Decades of case law has established that in order to prevail in a defamation case, the plaintiff has the burden of proof to establish that the statements at issue were indeed false. And here, because the plaintiff is considered a public figure, the plaintiff also has to prove that the defendant acted with actual malice in making the statement at issue. While there are some other factors in defamation, these factors are the most interesting in this particular case. Scott: That’s right. And the last element you mentioned, that the defendants acted with actual malice, was part of the recent ruling in the Fairstein case of Netflix’s motion for summary judgment. In order to prove that the defendant acted with actual malice, the plaintiff has to prove that the defendant acted in reckless disregard for the truth. Here, we’re dealing with dramatization, and courts have applied the actual malice standard to dramatized accounts of real events, often recognizing that the use of invented dialog or a condensed timeline may be necessary for storytelling and that those facts are not themselves evidence of actual malice. Here, Fairstein needed to prove with clear and convincing evidence that Netflix and the producers acted in reckless disregard for the truth when portraying her in the series. Tara: So Netflix filed for summary judgment, arguing that they did not act with actual malice. Because the filmmakers are very confident that their portrayal of Ferrise reflected the essence of truth based on their multiple trusted sources and research, including previously published books, news reports, the Ken Burns documentary, and extensive interviews with the five, their families, and their lawyers. The Court denied Netflix’s motion for summary judgment, ruling that a jury could reasonably find that the producers recklessly disregarded the truth and that it is the job of a jury to evaluate all of the evidence in this case. Scott: And the Court mentioned some interesting things about the creative process in its ruling. First, the Court noted that while the filmmakers can refer to numerous research sources, many of those sources generally critique law enforcement and law enforcement’s overall handling of the case. But those sources didn’t specifically attribute certain actions or statements to any one person, including Fairstein herself. Also, the Court noted various notes and emails, both from production and from Netflix, which commented on making Fairstein appear to be unsympathetic. On that, the Court found that a reasonable jury could conclude by clear and convincing evidence that the decision to make Fairstein the face of the system and the central villain caused the defendants to act with actual malice by recklessly imputing conduct to Fairstein that was unsupported by the writer’s substantial body of source material. Tara: Tha

The Parmigiano Reggiano Consortium claims that Italy’s renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. Scott Hervey and Jamie Lincenberg discuss how they plan to fight off these counterfeits on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Scott: The Parmigiano Reggiano Consortium claims that Italy’s renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. And the consortium is seeking to fight off the cheap imitations through lawsuits and through technology. I’m Scott Hervey from Weintraub Tobin. I’m joined today by my colleague, Jamie Lincenberg. We are going to talk about when Parmesan cheese isn’t Parmesan cheese on this next installment of the Briefing by Weintraub Tobin. For those who may not know, Parmigiano Reggiano traces its history back to the Middle Ages. In 1996, the European Union recognized a protective designation of origin, or a PDO, for Parmigiano Reggiano. According to the PDO, this cheese can only be produced in a small geographic area of northern Italy, which includes Parma and Reggiano. A PDO designation is used for agricultural products that traditionally have been produced in a particular geographic region. When used on a product, the PDO designation guarantees that the food product originates in that specific region or follows a particular traditional production process. Jamie: If I’m recalling correctly, there was a legal issue involving a challenge to Germany permitting the sale of cheese branded as Parmesan, but it didn’t meet the PDO designation requirements. Germany argued that Parmesan was a generic term for a type of cheese often grated over food and could not be called uniquely Italian. A European Court of Justice, hearing the dispute, finally held that Parmesano Reggiano is the only type of cheese that can be called Parmesan within Europe and that Parmesan is not a generic term. Scott: That’s right. And that’s why when you go to Italy or other members of the European Union when you buy Parmesan, you’re buying Parmesan or Reggiano. But that ruling and the PDO is only binding within the European Union. Now, the consortium is taking steps to try to prevent the sale of what it calls counterfeit Parmesan cheese outside of the European Union. This includes filing various certification marks with trademark offices throughout the world, which includes the United States. Under the Trademark Act, a certification mark is used to certify regional or other origin, material, motive, manufacture, quality, accuracy or other characteristics of goods or services or that the works of labor on the goods or services was performed by members of a union or other organization. With regard to the certification mark, Parmesan or Reggiano, it certifies that the cheese that is branded Parmigiano Reggiano originates in the Parma Reggiano region of Italy. Jamie: So what about Kraft? We all know that green can of Kraft Grated cheese. I assume Kraft has the right to use that mark. Scott: Kraft does have various registered trademarks in the US. Covering its product, but the consortium seems to be fighting Kraft’s use of Parmesan. Last year, the consortium filed the equivalent of an opposition with the Australian Trademark Office challenging Kraft’s application for its Parmesan cheesemarks in Australia. The consortium argued that Kraft’s use will confuse consumers. Kraft argued that the term Parmesan is generic for a certain style of hard cheese Kraft’s position that Parmesan is generic for a certain style of hard cheese is supported by the fact that Kraft has disclaimed the term parmesan in its trademark applications in and outside of the United States. Jamie: A mark owner trying to register its mark is required to disclaim the right to use a word that is part of the mark when that word is either descriptive or generic. The reason behind this is that merely descriptive or generic words should be free. Scott: For all of us to use, that’s right, under the US Trademark law, a mark is merely descriptive if it immediately conveys knowledge of a quality, a feature, a function, or a characteristic of the goods or services with which it is used. And the test for generalness is comprised of two parts. The first part being what is the genus of the good or services at issue? And two, does the relevant public understand the designation primarily to refer to that genus of goods or services? So with regard to Parmesan, the first part of the generic test would be the genus being cheese. And the second part does the relevant public understand the designation primarily to refer to that genus meaning cheese? And I think in the United States, it clearly does. Jamie: So how did the consortium fare in its challenge in Australia? Scott: Well, Kraft had been selling its product in Australia since 1966. The Australian Tradem

Amazon is suing two social media influencers for promoting the sale of counterfeit luxury goods on the platform. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Jamie: Last week, Amazon.com, Seattle-based tech and e-commerce giant, and its counterfeit crimes unit launched lawsuits in Seattle federal court against two social media influencers and their coconspirators, accusing the defendants of using their profiles to promote, advertise, and facilitate the sale of knockoff luxury brand products as part of a scheme with third-party counterfeit sellers. I’m Jamie Lincenberg of Weintraub Tobin, and we’ll be joining my colleague Scott Hervey to talk about this case on today’s episode of The Briefing. Scott: Thank you for joining me today, Jamie. Can you provide us with a quick recap of the lawsuits? Jamie: Sure. In the filed complaints, Amazon Alleges that Influencers Ashley Howett and Cameron Russell posted links on Instagram and other social platforms to direct their followers to dupes of Prada, Hermes, Chanel, Louis Vuitton, Christian Dior, and other designer accessories through hidden links leading to seemingly generic product listings in the Amazon store. The lawsuits say that both influencers collaborated with a series of retailers on, per the complaints, sophisticated campaigns of false advertising in an attempt to evade Amazon’s counterfeit and infringement detection tools. Amazon alleges that both influencers use the same CD method to avoid getting caught through social media posts. The influencers make it very clear that they are promoting fake versions of the luxury brand items but then direct their followers to product listing pages in the seller’s Amazon stores, where the items appear generic with blurred logos or pixelated images. Amazon’s complaint against how it says that she openly acknowledged that the products were fake, informed her followers that they would receive products bearing luxury brand trademarks, and urged them to order the products before Amazon could take down the listings. According to the lawsuit against how Amazon, investigators ordered some of the products that she advertised and confirmed they spore the stolen brand names and logos. Scott: Both Howet and Russell, of course, received commissions for sales via the links they shared on their social media channels. Jamie: Yeah. The crux of the case against the influencers there are a number of charges against the manufacturers of the counterfeit goods, which are allegedly Chinese manufacturers located in various provinces of China. But the crux against the influencers is 15 USC. 1125 A, which is part of the Lanham Act. And that statute prohibits the use in commerce of any mark or false designation of origin, which can be a designation of the manufacturer in connection with goods that are false. Or misleading and which A are likely to cause confusion or to cause mistake or to deceive as to the affiliation, connection, or association of such person with another person or as to the origin, sponsorship, or approval of his. Or her goods, services, or commercial activities by that other person or b in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities. The lawsuits accuse the influencers of contributory violations of this statute. The complaint alleges that the influencers’ liability stems from their knowing, facilitation, and assistance in the sale of counterfeit and infringing products offered by the manufacturers. But, Jamie, like you said, all of the Influencer social posts admitted and acknowledged that the products were counterfeit. Scott: The Influencers did not try to hold the products out as legitimate. And I’m curious about this from a legal standpoint. Jamie: Yeah, Scott, I am, too. Do you think that the Influencers thought by admitting and acknowledging that the products were counterfeit that would somehow eliminate any liability under their part? Is it possible that they were thinking if we admit the goods are counterfeit, there can be no consumer confusion as to the authenticity of the goods? Scott: No, Jamie, we don’t represent them or know them. So I’m only assuming that that could have been what they were thinking, but that’s not going to save them. Contributory infringement happens where you intentionally induce or encourage direct infringement, and that’s exactly what the Influencers did here. They contributed by funneling the buyers to the Amazon stores or the manufacturers who were making the counterfeit goods. The director of Amazon’s Counterfeit Crimes Unit said that the Influencers and the sellers they worked with knew exactly what they were doing when they attempted to evade Amazon&

A recent article in The Hollywood Reporter explores TV and movie studios’ potential use of AI for generating scripts. Scott Hervey and Jamie Lincenberg discuss this and other statements in the article on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: An August 23rd article in The Hollywood Reporter had the title, “Studio’s Offer to Writer May Lead to AI-created Scripts that are Copyrightable.” The article acknowledged that copyright law doesn’t recognize works solely created by artificial intelligence, but the article theorized that by incentivizing writers to participate in the creation process, studios may have a better shot at getting that work protected. We are going to dissect some of the statements made in this article in light of the recent ruling by the D.C. District Court that AI works are not entitled to copyright protection on this installment of The Briefing by Weintraub Tobin. Let’s set the stage with a recent ruling by Judge Howell in the lawsuit brought by Stephen Thaler against the Copyright Office based on the Office’s rejection of his application to register their work. A recent entrance to paradise. The work was created by an AI technology called Creativity Machine and was submitted for copyright registration in 2018 by Stephen Thaler as a work made for hire, in which Thaler listed the Creativity Machine as the author and Thaler as the copyright owner. In his application, Thaler left a note from the Office stating that the work was autonomously created by a computer algorithm running on a machine, and he was seeking to register his computer-generated work as a work for hire as the owner of the Creativity Machine. Jamie: We previously covered the Copyright Office’s rejection of Thaler’s application in March of last year. Basically, the Copyright Office rejected Thaler’s application because it lacked the human authorship necessary to support a copyright claim. Thaler appealed the rejection to the District Court for the District of Columbia, and the Court upheld the rejection of Thaler’s application, holding that human authorship is an essential part of a valid copyright claim. Scott: Right. The single legal question before the Court was whether a work generated autonomously by a computer falls under the protection of copyright law upon its creation. The Court acknowledged that copyright is designed to adapt with the times and that copyright law has proven malleable enough to cover works created with or involving technologies developed long after the traditional media of writings memorialized on paper. But underlying that adaptability and that malleability has been a constant understanding that human creativity is at the core of copyrightability, even as that human creativity is channeled through new tools or into new media. Jamie: The Court cited the 1884 Supreme Court case of Borough Giles Lithographic Company versus Serenay, which upheld the constitutionality of an amendment to the Copyright Act to cover photographs. In that case, the Supreme Court reasoned that photographs amounted to copyrightable creations of authors despite being issued from a mechanical device that merely reproduced an image of what is in front of the device because the photographic result nonetheless represented the original intellectual conceptions of the author. Scott: The Court said that at its founding, copyright was conceived of as a form of property that the government established to protect. It was understood that recognizing exclusive rights in that property would further the public good by incentivizing individuals to create and invent the act of human creation and how to best encourage human individuals to engage in that creation and thereby promote sciences and the useful arts was and continues to be central to American copyright from its very inception. Jamie: The Court then cited to the numerous cases that stood for the proposition that human creation is a required element of copyright, including one of your favorite cases, I believe Naruto versus Slater, better known as the Monkey selfie case. Scott: Yes, that is one of my favorite cases. Jamie: Okay, so the Court made it abundantly clear that human creation is a required element for copyright protection to exist. The Court also noted that we are approaching new frontiers in copyright, and the increased attenuation of human creativity from the actual generation of the final work will prompt challenging questions regarding how much human input is really necessary to qualify the user of an AI system as an author of a generated work and the scope of the protection obtained over the resulting image. But you wanted to tie this into the Hollywood Reporter article, right? Scott: So, the article was partially an update on this decision by the district court, but it was also an update on the Writers strike, and it discussed the August 11 proposal t

An Illinois judge rejected an infringement claim brought by rapper Gutta, alleging that a song released by hip-hop artist Future infringed his rights. Scott Hervey and Jamie Lincenberg talk about this dispute on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Jamie: On August 25, 2023, the U.S. District Court for the Northern District of Illinois rejected an infringement claim brought by rapper Dequan Robinson, otherwise known as Gutta, alleging that a song released by hip-hop artist Future infringed his rights. We are going to talk about this case and why the court dismissed Robinson’s claim on today’s episode of The Briefing I’m Jamie Lincenberg of Weintraub Tobin and I’m joined today by my colleague Scott Hervey. Scott: Hi Jamie, thanks for having me today. Looking forward to diving into this case. So first, why don’t you provide us with a quick recap on the lawsuit. Jamie: So, on Friday, a Chicago federal court dismissed the copyright infringement lawsuit that was brought in 2021 against popular Atlanta hip hop artist Future by Virginia rapper Dequan Robinson, who, as I said, performs as Gutta. He alleged that Future’s song, ‘When I Think About It’, released in 2018, ripped off his own 2017 song ‘When You Think About It’ to make a hit of his own and claiming that he had emailed a draft of his song to future’s producer a year before the song was released. His complaint alleged that they created the song in the image of his song, likening his case to the famous Blurred Lines lawsuit in which Pharrell Williams and Robin Thicke’s very popular track Blurred Lines was found to have infringed Marvin Gaye’s iconic ‘Got to Give It Up.’ The lawsuit raised arguments that the works were substantially similar due to the following factors one, similar thematic content of guns, money and jewelry two, that they were both in the key of e and three, that they had the same chorus and verse structure. The lawsuit also named some of future’s companies, his producer and Sony Music Entertainment as defendants. The suit sought injunctive relief damages, a running royalty and litigation costs, among other relief. Scott: Future’s team filed a motion to dismiss, arguing that Robinson did not adequately allege the protectable elements of ‘When You Think About It’ were copied. They argued that both the songs repeat exceedingly commonplace phrases when you think about It and when I think about it, and both include commonplace themes of guns, money and jewelry. Jamie: That’s right. Then Robinson’s team filed an opposition to the motion, citing that there are a lot of questionable similarities between the two works and that the lyrical theme, content, structure and rhythm are identical. But Judge Martha Picold of the District Court of the Northern District of Illinois disagreed, ruling that it didn’t matter whether Future had copied Robinson’s song because the material he allegedly borrowed, even if he did so, was not covered by copyright in the first place. Scott: That’s right. Citing other examples, including tracks from Biggie, Kanye West and Neil Young. That’s an interesting trio, if you think about it. She notes that thematic elements that are frequently present in certain genres of music place them outside of the protections of copyright law. This was the same argument that won the dismissal of the lawsuit against Kanye West over the lyrics what doesn’t kill you makes you stronger. In his 2017 hit track Stronger, Judge Picold writes that quote first and most critically, the phrase quote when you think about it or quote when I think about it is not entitled to copyright protection. It’s a fragmentary expression that is commonplace in everyday speech and ubiquitous in popular music. And we have previously discussed the lack of copyright protection for short phrases. According to the Copyright Office, short phrases such as slogans are uncopyrightable because they contain an insufficient amount of authorship. And even though the phrases are used in similar places and in similar ways in both songs, in the chorus of both songs, it’s still not enough to show that the two songs are substantially similar. The order states the judge also rejected Robinson’s argument that the works are substantially similar because they have similar thematic content, guns, money and jewelry, finding that those elements are frequently present in hip hop and rap music, again putting them outside of copyright protection. The judge writes that this argument fits within the song’s affair doctrine that’s right. Scott: Where elements of a work are indispensable, or at least standard in the treatment of a given topic, their songs are fair and they receive no protection. In addition, the judge rejected Robinson’s argument that the songs are substantially similar because they ar

A photographer is suing a real estate media site for copyright infringement after publishing several of his photos without permission. Scott Hervey and Jamie Lincenberg discuss this case and explain how media companies can handle similar situations in a post-Warhol world on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: One of the recent copyright infringement cases post the Supreme Court’s decision in Warhol is Brandon Vogts, I hope I’m pronouncing that correctly. Brandon Vogts vs. Penske Media Corporation. This case involved the display of Vogts photographs in connection with various articles appearing on Penske’s Dirt online media site. I’m Scott Hervey from Weintraub Tobin. I’m joined today by my colleague Jamie Lincenberg. We are going to take a look at this case and talk about how online media companies can deal with similar situations in a post-Warhol world, on this next installment of The Briefing by Weintraub Tobin. These are the facts of this case boots is a professional photographer who specializes in real estate photography. His clients include real estate companies, real estate agents and interior designers. The majority of these clients are real estate agents who retain Vogts to photograph a property to facilitate its sale. Dirt.com is an online news publication owned by Penske Media Corporation. Dirt publishes material on real estate transactions involving persons in the entertainment industry or prominent business persons. Dirt’s articles are intended to provide a unique peek into those individuals’ lifestyle. Dirt published various articles about transactions involving certain properties and used Vogts photographs in connection with those articles. Vogts eventually sued for copyright infringement. Jamie: And, Dirt advanced a fair use defense. Dirt claimed that it featured the photographs to provide readers with what he believed was a unique insight into the lifestyles of individuals who were involved in the transaction, including commentary and critique of the property featured in the photographs, and used only those photographs that Dirt Publishers believes were necessary to do so. After both parties moved for summary judgment, the Supreme Court ruled on Andy Warhol Foundation for the Visual Arts versus Goldsmith. Scott: Finding that Boots had established a prima facial case of copyright infringement, the court turned to Dirt’s fair use argument. Now, to determine whether a work constitutes fair use, courts engage in a case by case analysis and a flexible balancing of four factors. Those factors are one, the purpose and character of the use, including whether such use is of a commercial nature or for a nonprofit educational purpose. Two, the nature of the copyrighted work that is allegedly infringed. Three, the amount and substantiality of the portion used in relation to the infringed work as a whole. And four the effect the use will have on the potential market for or value of the original copyrighted work. Jamie: The first factor assesses whether the use is transformative, as established in the Supreme Court case of Campbell versus Acuff Rose Music. Transformativeness occurs where the new work adds something new, with a further purpose or different character, altering the first with new expression, meaning or message right. Scott: And that has been the traditional test for transformativeness. But now the Warhol decision requires courts to ask, as part of examining transformativeness, whether and to what extent the use at issue has a purpose or character that is different from the original, and whether that different purpose supports a justification for copying. So now the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. Under the Warhol decision, a transformative use cannot be found for any use that just adds some new expression, meaning, or message. Now, the purpose of the use must be distinct enough from the purpose of the original use in order to justify a copying. For example, in Warhol, the Supreme Court said that The Orange Prince, which was Warhol’s work, can be perceived to portray Prince as iconic, whereas Goldsmith’s portrayal was photorealistic. But the purpose of the use was to illustrate a magazine about Prince with a portrait of Prince. And the difference between illustrating a magazine about Prince with a portrait of Prince and portraying Prince somewhat differently from Goldsmith’s photograph, with no attendant critical bearing on her photograph, was not enough to justify the copying. Jamie: Dirt argued that its use is for a different purpose. Boot’s use is to portray the property in connection with the marketing of the property for sale, while Dirt’s use is to provide commentary on the lifestyles of various celebrities who either pur

Failure to disclose certain relationships with a third party may result in significant consequences from the court. Scott Hervey and Eric Caligiuri talk about this on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In our last discussion with my colleague Eric Caligiuri, we looked into a case where a federal court denied discovery request aimed at uncovering details surrounding the financing of a plaintiff’s patent litigation case. Today, we are going to discuss a case where a failure of one party to disclose certain relationships with a third party resulted in significant consequences. On this installment of The Briefing by Weintraub Tobin. Welcome to another installment of The Briefing. I’m Scott Hervey. I’m joined today by my colleague, Eric Caligiuri. Eric, thank you for joining us. Eric: Thanks, Scott. Great to be here. Scott: So, Eric, you wrote an interesting article on the case of Ventex versus Columbia Sportswear of North America. Similar to the last case we discussed, go to Streaming versus Netflix. This case, the Ventex case, deals with litigation financing and how the failure to disclose or possibly the attempt to hide critical information showing a financial relationship between two parties interested in the outcome of a certain proceeding can impact that legal proceeding. Eric, can you break down the key details of the case? Eric: Yes, absolutely. In this case, we have ventex comp versus Columbia Sportswear of North America. It centers around an inner parties dispute filed by Ventex. An inner parties dispute, or an IPR, is a proceeding before the Patent Trial and Appeal Board of the USPTO. Basically, it’s an administrative proceeding similar to a district court litigation similar to litigation, except a little more streamlined and presided over by an administrative law judge at the PTAB. And basically, the only remedy is to consider the validity of a patent. So, essentially, what happens is someone who may think that either a patent is invalid or patent has been asserted against them, they can file a challenge to that patent at the PTAB, and that dispute is called an IPR. In this case, the PTAB found that Ventex failed to disclose a variety of information asserting Ventex’s relationship with a company called Sirius Innovative Accessories, Inc. In response to discovery request by Columbia, the PTAB found that this failure to disclose led to unnecessary delays in the proceeding. As a result, the PTAB dismissed the proceeding and awarded over $32,000 in sanctions to Columbia, who was the patent owner. Columbia’s motions for sanctions was based on a contention that Ventex petitions were time-barred, meaning they didn’t file the IPRs in time, and therefore the PTAB should not have initiated the IPRs to begin with. Scott: So, Columbia’s argument revolved around Ventex’s nondisclosure of its relationship with Serious Innovative Accessories, which Columbia argued was both a proxy of Ventex and a real party in interest. The board agreed with Columbia, leading to dismissal of Ventex’s petitions and the termination of the IPRs and sanctions against Ventex. So what was the crux of Columbia’s argument in terms of the relationship between Ventex and Sirius? Eric: Yeah. So Columbia relied heavily on two prior agreements, a supplier agreement from 2013 and a 2016 exclusive manufacturing agreement. These documents illustrated a preexisting business relationship between Ventex and Sirius, suggesting that they shared a mutual interest in invalidating the patents. Columbia argued that payments tied to the Exclusive Manufacturing Agreement suggested a link between Sirius and the funding of the IPRs, which Ventex may have had difficulty funding on its own. This demonstrated a strong connection between Ventex and Sirius, essentially implying that Ventex was acting as a proxy for Sirius in these proceedings. Scott: And it seems that Columbia’s argument gained traction when the PTAB noted that the Exclusive Manufacturing Agreement was obtained through additional discovery. After Columbia’s motion, the existence of this agreement seemed to play a pivotal role in establishing Sirius as a real party and interest and a proxy for Ventex. After this was uncovered, Colombia moved for sanctions, right? Eric: That’s right, yeah. Columbia contended that Ventex withheld over 2000 pages of communications related to these agreements and to the funding arrangement, while also misrepresenting the scope of their document production. Columbia also alleged that Ventex’s destruction of the Exclusive Manufacturing Agreement and related emails to that amounted essentially to a spoliation of evidence. Lastly, Columbia claimed that Ventex’s corporate witness made false statements under oath about the existence of the agreement and the subject matter of the agreement. Scott: Those are some

In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: The trademark dispute in Blue Mountain Holdings versus Blitz Nutraceuticals ended with the 11th Circuit upholding the finding by the US. District Court for the Northern District of Georgia that Lighthouse Enterprises had issued a naked license to Blue Mountain, which covered the trademark that was the basis for the dispute. We’re going to talk all about the naked license on this installment of The Briefing by Weintraub Tobin. Thanks for joining us today. My name is Scott Hervey. I’m joined by my colleague, Eric Caligari. Eric, thanks for joining us today. Eric: Thanks for having me, Scott. Scott: Eric, can you give us some background on the case of Blue Mountain Holdings versus Bliss Nutraceuticals? Eric: Yes, of course. Lighthouse Enterprises and Blue Mountain Holdings initially sued Bliss in April of 2020 for federal trademark infringement, federal cybersquatting, and federal trademark dilution, along with some other claims. The lawsuit was based on their ownership of the trademark, Vivazen Botanicals claimed that had been selling Vivazen products since 2012 and registered the name as a trademark with the United States Patent and Trademark Office in 2017. Blue Mountain claimed that it acquired the Vivazen trademark and a 2019 purchase agreement with Lighthouse. Bliss claimed that this purchase agreement was really a license. The district court agreed with Bliss and found that the purchase agreement was really a license and that this license became a naked license when Lighthouse failed to police Blue Mountain’s use of the trademark. This resulted in the abandonment of Lighthouse’s rights in the trademark, and the 11th Circuit upheld the district court’s findings. Scott: While this case itself is very interesting, and it’s probably far from being over, what I want to focus on today is the ramifications of the court’s finding that the transaction between Lighthouse and Blue Mountain was a naked license. A naked license refers to a situation where a trademark owner grants permission to another party to use a trademark, and that trademark owner does not maintain proper control over the quality and nature of the goods or services associated with that trademark. In other words, it’s a license that lacks the necessary safeguards to ensure that the trademark’s reputation and distinctiveness are maintained. The nakedness of a license isn’t judged by whether the licensor allows product quality to suffer. It’s whether the license or is keeping an eye on product quality, and whether, in other words, it has abandoned quality control or not. If it has, the license is naked and the trademark is abandoned. Eric: Yeah, and if a trademark is abandoned, whatever rights the mark owner may have had in the mark are also abandoned. It’s quite a serious situation and result to avoid. Scott: I agree. And given this, let’s talk about how to avoid the granting of a naked license. Eric: Yeah, sure. Well, first of all, when entering into a license agreement, that agreement should be in writing, and the right agreement should fully outline the terms and conditions that the licensee must adhere to. These terms should include provisions such as quality control and the consequences of failing to meet those quality control standards. Scott: And it’s not enough that the agreement includes proper quality control language; but it’s imperative that the trademark owner actually exercise proper control over the products or services that are associated with the trademark. This can include setting quality standards, providing guidelines, and periodically inspecting the products or services to ensure that they meet those standards. This was emphasized by the 11th Circuit’s ruling, in which it noted that the record in the case showed that Lighthouse engaged in no meaningful supervision or inspection of the products bearing the Vivazen mark. Eric: And in exercising its quality control rights. It’s also important that there be consequences if the mark owner abjures any deviations from the agreed-upon quality standards and tries to enforce those consequences to make sure that they’re being adhered to. Scott: Agreed. The licensing agreement should include a clause that allows the license or to terminate the license if the licensee fails to meet the agreed-upon quality standards or breaches other terms of the agreement. Eric: Agreed. And thanks for bringing this case to our attention for highlighting the pitfalls of the naked

The Federal Circuit Court of Appeals invalidated seven patents owned by an AI technology company after applying the two-step Alice test. Scott Hervey and Audrey Millemann talk about this decision on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Under the Alice test for patent subject matter eligibility, the Federal Circuit Court of Appeals continues to strike down patents directed to abstract ideas. The case of People AI, Inc. V. Clary, Inc. was just such a case in which the Court invalidated seven patents owned by People AI. We are going to talk about this case and the Alice test on this next installment of The Briefing by Weintraub Tobin. Welcome to another episode of The Briefing by Weintraub Tobin. I am joined today by my partner, Audrey Millemann, a patent attorney who wrote an intriguing article titled a Prototypical Corporate Salesperson Is Not Patentable. We’ll be discussing the recent People AI v. Clary, Inc. Case and its implications on patent subject matter eligibility under the Alice test. Welcome, Audrey. Audrey: Hi, Scott. How are you? Scott: Great to have you here today, Audrey. So, let’s start by discussing the Alice test for patent subject matter eligibility. Can you explain the two-part test established by the Supreme Court in the 2014 case of Alice Corp. Versus CLS Bank International? Audrey: Yes, I can. Patent subject matter eligibility refers to whether an invention falls within categories of subject matter that can be patentable. So that’s referred to as patent eligible subject matter and by statute. And that’s federal statute. Section 101 of Title 35 of the United States Code provides that there are four categories of patent eligible subject matter, and they are articles of manufacture, machines, processes, and compositions of matter. And there are exceptions to those categories of patent eligible subject matter which the courts have decided over the years. And they include things like natural phenomenon, laws of nature, and abstract ideas. And those things are deemed to fall within patent ineligible subject matter, meaning they are not something that can be the subject of patent protection. So, the Supreme Court in Alice in 2014 developed a test for determining whether a claimed invention falls within patent ineligible subject matter, meaning whether it is something that is not eligible for patent protection. It’s a two-part test. And under the first step, the Court examines whether the invention falls within one of those types of ineligible subject matter, meaning natural phenomena, laws of nature, or abstract ideas. And if the invention falls within one of those categories, then the Court would proceed to step two. Under step two, the Court looks to see if there is some kind of inventive concept or something that improves the technology such that it takes it out of the patent ineligible subject matter and makes it into patent eligible subject matter. Now, this is a very complicated test, and courts have been struggling with how to apply it for years. Since it was decided. Scott: In the People AI versus Clary case, the Court invalidated seven patents owned by People AI based on the Alice test. Can you explain the basis of that Court’s decision? Audrey: Yes. People AI is a company that provides business analytics or software for customer relations management. So, they developed software that would take the notes and contacts that a salesperson would have. So, their notes of meetings, telephone calls, emails, and the software would automatically match it up to the particular customer that was involved. So, this was previously done by salespersons with using a pen and a notebook. And People AI developed software that would automate that process, which made it much more reliable, more accurate, so it would be less errors and much faster. And they patented that software, which basically was a data management kind of a system. Scott: And People AI sued Clary Inc. And Set Sail Technologies, Inc. For patent infringement. Correct. Audrey: Yes, they did. The defendants were competitors of People AI, and they sued them for People AI sued them for patent infringement of seven of their patents. The defendants then moved for judgment on the pleadings in the district court arguing that those patents were invalid because they were directed to patent ineligible subject matter, meaning abstract ideas. The district court applied the Alice test, as we’ve discussed it, and found that, yes, the patents are invalid because they are directed to abstract ideas. They’re directed to what a salesperson would do. And automating what people used to do manually does not make something patentable. The Federal Circuit, which is the Court of Appeal that addresses all appeals from patent infringement cases, affirmed the district court’s decision and held that automating that previously manual proc

The rise of deepfakes is a growing concern within the entertainment industry. Scott Hervey and Jamie Lincenberg discuss this and the intersection between free speech and protected rights on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Deepfakes and AI-generated likeness are not just the concerns of striking actors. Just ask Drake, The Weeknd, and UMG, a Drake and Weeknd collaboration that busted the Internet in May of this year wasn’t real. It was generated by AI and made to sound like the performers. Where is it that current write of publicity laws work? And in what situations do they fail to address the scenarios presented by Deepfakes and AI-generated images? We are going to talk about this next on The Briefing by Weintraub Tobin. Let’s first identify the type of AI output that triggers the right of publicity concerns. It’s visual likeness and appearances, and then it’s also voices or vocal likeness. California’s right of publicity statute is Civil Code section 3344, and it prohibits the use of another’s name, voice, photograph, or likeness on or in products, merchandise, or goods, or for the purpose of advertising or selling such products, merchandise or goods without such person’s prior consent. California also has a common law right of publicity that’s a bit broader than the statute. But whereas a celebrity’s likeness isn’t being used on or in products, merchandise, or goods, or for the purpose of advertising or selling such goods, California’s right of publicity statute isn’t applicable, really. As for a common law claim, even though common law provides for a broader right of publicity protection than the statute, the First Amendment may prevent any recovery. Generally, a claim for common law appropriation will not stand in the case of an expressive work due to First Amendment concerns. Jamie: So, Scott, it seems well settled that where a celebrity’s likeness, whether that be visual or vocal, is used in connection with the advertising or sale of goods or services, consent of that celebrity is required. The void seems to be where that celebrity’s likeness is used in an expressive work. Scott: That’s true, Jamie, and void is a good way of putting it since it’s not clear that this void is a shortcoming or some type of legal failure, or rather the greater importance of the First Amendment. Take, for example, the AI Drake song. Section 114 B of the copyright act permits sound-alikes. A publication of the US. Copyright Office specifically says that under U.S. Copyright law, the exclusive rights in a sound recording do not extend to making independently recorded sound-alike recordings. Copyright protection for sound recordings extends only to the particular sounds of which the recording consists and will not prevent a separate recording of another performance in which those sounds are imitated. The imitation of a recorded performance, no matter how similar to the original, would not constitute copyright infringement, even where one performer deliberately sets out to simulate another performance as exactly as possible. To extend a state right of publicity to cover the use of a celebrity’s vocal likeness in an expressive work like the A. I. Drake Song would put a law in effect that directly conflicts with the Copyright Act. Jamie: Let’s talk about New York’s right of publicity statute. In particular, section 50 F of New York’s Civil Rights Law, which took effect in 2021. This law addresses and prohibits certain uses of AI-generated lookalikes or digital replicas of deceased performers. The law prohibits the use of a deceased performer’s digital replica in a scripted audiovisual work, as a fictional character, or for the live performance of a musical work if the use occurs without prior consent from the owner of the publicity rights in the deceased celebrity. And if the use is likely to deceive the public into thinking it was authorized by that person, might that work as a potential model if it were also applicable to live celebrities? Scott: It may, but that statute has a rather large exception. Basically, a use is deemed not to be likely to deceive the public into thinking the use was authorized if the producer includes a disclaimer in the credits of the scripted audiovisual work or in any related advertisements in which the digital replica appears. Also, it’s not clear that this statute would hold up under a constitutional challenge. Jamie: And why is that? Scott: The prohibition of using a digital replica in a fictionalized audiovisual work may run afoul of the First Amendment. Noncommercial speech gets heightened protection under the First Amendment. We previously discussed this when we discussed Olivia de Havilland’s lawsuit against FX regarding her portrayal in Feud. In the court’s opinion, it assume

In the case of Brandy Melville v Redbubble, a three judge appellate panel explored whether an owner of an online market place is liable for contributory trademark infringement. Scott Hervey and Jamie Lincenberg discuss this on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: On today’s episode of The Briefing, we will be taking a dive into the Willful Blindness Doctrine which is highlighted by a recent filed opinion in the case between Redbubble and YYGM doing business as Brandy Melville, in which a three-judge appellate panel discussed what legal standard the district court should apply when examining whether an owner of an online marketplace is liable for contributory trademark infringement, which is committed by artists who sell products on its marketplace. I’m Scott Hervey of Weintraub Tobin, and I’m joined today by my colleague, Jamie Lincenberg. Jamie, thank you for joining us today. Jamie: Thank you, Scott. I’m happy to be here. Scott: Jamie, can you provide a quick recap of the lawsuit? Jamie: Absolutely. In 2021, Brandy Melville, a popular manufacturer of clothing, home goods, and other items, sued Redbubble for trademark violations alleging infringement of its registered Brandy Melville heart mark and La lightning mark. The defendant, Redbubble, owns and operates an online marketplace where artists can upload their own work to be printed on various products and then sold. Unlike other print on demand vendors, Redbubble outsources everything other than marketing and payment processing, so third party users upload their images, and third party manufacturers and other vendors produce and ship the ordered items. The district court had found Redbubble liable for one willful contributory counterfeiting of the heart mark and the lightning mark, two contributory infringement of those two marks, and three contributory infringement of unregistered trademarks that were Brandy Melville variations. After the jury’s verdict, the district court granted Redbubble’s motion for judgment as a matter of law on the contributory counterfeiting claim for the heart mark. The district court let the verdict stand for the remaining claims, and it denied Brandy Melville a permanent injunction, attorneys fees, and prejudgment interest. On Monday, the 9th Circuit appellate panel overturned much of the lower court’s findings and remanded for reconsideration of Redbubble’s motion for judgment as a matter of law, telling the district court to use the correct legal standard for what constitutes willful blindness, the doctrine we will explore in more detail today. Scott: This panel’s opinion vacates the district court’s order granting in part and denying in part Redbubble’s motion for judgment as a matter of law, and also vacated the district court’s denial of Brandy Melville’s motion to permanently enjoin Redbubble from referencing, mentioning, and or using Brandy Melville, brandy Melville’s registered trademarks and Brandy Melville’s unregistered trademarks. In reversing the lower court with respect to Redbubble’s contributory infringement liability, the panel held that a party is liable for contributory infringement when that party continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to that infringement. So how do we determine whether a party is willfully blind to infringement? Jamie: In agreement with other circuit courts, the panel held that willful blindness requires the defendant to have knowledge of specific infringers or instances of infringement, general knowledge of infringement on the defendant’s platform, even of the plaintiff’s trademarks, is not enough to show willful blindness. Without the specific knowledge or awareness of specific instances of infringement, the defendant need not search for infringement on its own accord. As mentioned, other circuits have reached similar conclusions, including the Second, Fourth and 10th Circuits. One such case is Tiffany Inc. Versus eBay Inc. Which involved counterfeit Tiffany jewelry being sold on eBay. The Second Circuit held that a service provider must have more than general knowledge that its platform is being used to sell those counterfeit products in order to be liable for contributory trademark infringement. Scott: The panel in this case also discussed a non-presidential companion ruling, Atari Interactive versus Redbubble, in which the court again ruled in favor of Redbubble. In that opinion, the court said that most of the evidence Atari relied on to show that Redbubble was willfully blind was evidence of general infringement on Redbubble’s website, and not specific instances of users infringing. Atari’s marks. Atari’s evidence showed that when it notified Redbubble of specific i

Alexis Hunley v. Instagram has been referred to as one of the top copyright cases to watch this year. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: It’s been referred to as one of the top copyright cases to watch this year. The case Alexis Hunley v. Instagram. It questioned the scope and validity of the server test, a copyright doctrine that was established by the 9th Circuit and has since been rejected by a number of other courts. The 9th Circuit has spoken, and we’re going to talk about this case on the next installment of the briefing by Weintraub Tobin. Alexis Hunley versus Instagram involved a potential class action claim against Instagram related to its embedding practice. The plaintiffs were two photojournalists whose photographs were featured on websites of various media outlets without a license. Hunley alleged that Instagram provided an embedding tool which allowed the photos or videos posted on an Instagram account to be simultaneously displayed on third party websites. Hunley alleged that these third parties who displayed her photos via the use of Instagram’s embedding tool, committed direct copyright infringement and that Instagram was secondarily liable for infringement. Jamie: Embedding is the process of copying unique HTML code assigned to the location of a digital copy of a photo or video published to the Internet, and the insertion of that code into a target web page or social media post enables that photo or video to be linked for display within the target post. Scott: The lower court tossed the case, holding that the third-party media companies that displayed the photographs Time and BuzzFeed, to name a few, were not liable for direct copyright infringement, and as a result, Instagram was not liable for secondary copyright infringement. The district court concluded that the 9th Circuit’s 2007 opinion in Perfect Ten versus Amazon, which established the server test, precluded relief. To Huntley to violate the public display right infringers must display copies of the copyrighted work. The district court held that the embedding websites do not store an image or video and do not communicate a copy of the image or video and thus do not violate the copyright owner’s exclusive display. Right under perfect Ten, an alleged infringer displays an image in violation of a copyright holder’s rights only if a copy of the image is embodied stored on a computer’s server or other storage device. Jamie: The court concluded that because Time and BuzzFeed did not store the image files on their actual servers, they were not liable for direct copyright infringement, and because there was no underlying direct infringement, Instagram could not be secondarily liable. The court invited the plaintiffs to raise their issue with the 9th Circuit if they believed the server test violated copyright law, and the photographers took the court up on its offer. Scott: In June 2022, the photographers filed an appeal with the 9th Circuit arguing for a review of the applicability of the server test. They claimed that the server test was outdated and impractical and argued that it had been widely rejected by virtually every court throughout the country that had considered the same issue. Jamie: In their appeal, the photographers argued that the server test is a technological loophole that did not exist when the Copyright Act was enacted by Congress, which has no support or explanation in the plain language of the Copyright Act and for which no public policy justification exists. Scott: The photographers also argued that the District Court went well beyond the scope of applicability of Perfect Ten. Perfect Ten applied to the use of embedded images in a search engine, not third-party website publishers. The plaintiffs contended that no court has expanded the server test to apply to embedding technology from Instagram or other social media platforms to third party website publishers. Jamie: The photographer’s appeal didn’t quite go as hoped. The 9th Circuit rejected their arguments that Instagram’s embedding tool violated their right of public display and also rejected all of their arguments for getting rid of or limiting the scope of the server test. Scott: That’s right. The Court rejected Hunley’s argument that the server test should only apply to search engines and should not extend to content embedded into commercial websites from social media platforms. The Court said that its holding in Perfect Ten did not rely on the unique technology of a search engine, but rather the plain language of the Copyright Act. Jamie: And the Court also rejected Hunley’s argument that the server test is inconsistent with the Copyright Act. Rather than address the specific challenges raised by Hunley, the Court simply said that it will not consider th

The Ninth Circuit recently issued an opinion affirming that Zillow infringed thousands of copyrights owned by a real estate photography studio. Scott Hervey and James Kachmar discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel, here.   Show Notes: Scott: In 2019, the 9th Circuit affirmed the trial court’s judgment against Zillow Group based on Zillow’s use of VHT’s photographs on Zillow’s Digs platform. In June of this year 2023, this case found itself back up to the 9th Circuit. I’m joined by my partner, James Kachmar, to talk about this recent decision on this episode of The Briefing You. Thanks for joining us. I’m joined today by Weintraub litigation partner, James Kachmar. James, thanks for joining us today. James: Thanks, Scott, for having me. Scott: Certainly, James. Let’s start by providing some context for our viewers and listeners. Could you briefly explain the background of the case between VHT and Zillow Group? James: Sure, Scott. Everyone should know what Zillow is the website with homes for sale. VHT is the largest professional real estate photography studio in the US. It is generally engaged by real estate agents and brokers to photograph homes for sale. These photos are edited, loaded into VHT’s database, and then sent back to the agents and brokers pursuant to a license agreement to help promote their listings. VHT’s photographs appear on Zillow’s website one of two ways. First, Zillow will use these photographs as part of showing property listings on its website. Second, Zillow would feature some of these photographs on their website, Digs, to offer users or give people some home improvement ideas. VHT filed a copyright infringement lawsuit against Zillow, claiming that the photos were being used without their permission. Scott: In the previous trial, the 9th Circuit found in favor of Zillow on most counts, but reversed the findings of fair use. Regarding the use of the photos on the Diggs website. Could you elaborate on how the court reached that conclusion? James: Sure. The 9th Circuit in the first case, which is referred to as Zillow One, determined that Zillow had added searchable functionality on its Zigs website, which made it not a fair use of VHT’s photographs. They concluded that Zillow had committed copyright infringement in doing so. However, the court in Zillow One held that Zillow was not liable for direct, secondary or contributory infringement and remanded the case back to the district court for further proceedings. This resulted in further motion practice and a second trial. Scott: The 9th Circuit addressed the issue of copyright registration and whether VHT’s claims should be dismissed due to incomplete registration. Could you explain the court’s reasoning and how it applied the U.S. Supreme Court’s fourth estate decision? James: Sure. Just days before the 9th Circuit rendered its opinion in Zillow One, the US. Supreme Court issued its decision in Fourth Estate Public Benefit versus Wallstreet.com, in which it found that the registration requirement to bring a copyright infringement claim can only be satisfied when the Copyright Office has registered the copyright, not merely when the application for registration is filed by the plaintiff. When the case went back to the lower court, Zillow argued that because VHT had filed its lawsuit before the Copyright Office had registered its copyrights, the action should be dismissed. The lower court, however, found that dismissal would cause irreparable harm to VHT, especially given the extensive litigation to date, and held that excusing this requirement did not undermine the purpose of the Act’s pre-filing registration requirement. The 9th Circuit, on a second appeal, agreed with the court’s finding in this regard. Scott: The Supreme Court’s decision in Fourth Estate was due to what had been a split among the Circuits with regard to the requirement the pre-filing requirement of the registration copyright registration. The 9th Circuit had long held that the mere filing of the registration application was required, while other Circuits had held that the actual issuance of the registration was required prior to the commencement of a lawsuit. James: That’s correct, Scott. Scott: Another issue main issue that the 9th Circuit considered in this case was whether VHT’s photos constituted a compilation or individual work for the purpose of statutory damages. James, how did the court approach this question, and what factors influenced its decision? James: Sure, Scott. As I mentioned earlier, VHT would load the photographs into its database, and VHT had applied to register its database of its photos as a compilation with the Copyright Office. The court had to determine whether the photos qualified as one work under the Copyright Acts provision that treats all parts of a compi

There is some concern that the Supreme Court’s decision in Andy Warhol Foundation v. Goldsmith will harm the documentary filmmaking community. Scott Hervey and Tara Sattler discuss the implications of this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: When Andy Warhol Foundation versus Goldsmith was pending before the Supreme Court, a group of prominent documentary filmmakers, including the makers of The Last Days of Vietnam, The Invisible War. Won’t you be my neighbor? And RBG filed an amicus brief and claimed that the Second Circuit’s proposed change to the way fair use is analyzed could, quote, devastate now that Warhol has been decided, it’s clear that the way in which fair use is now to be determined will have an impact on documentarians who rely on the use of unlicensed third-party materials as part of conveying their story. We are going to talk about this on this installment of The Briefing. We covered the Supreme Court’s decision in Andy Warhol Foundation versus Goldsmith in a previous episode, but let’s hit on some highlights relevant to the impact of this decision on documentarians. The decision changes the way fair use is analyzed. In determining fair use, four factors are examined. The first fair use factor examines the purpose and character of the use. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell versus Acuffro’s Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether the new work merely supersedes the objects of the original creation or instead adds something new with further purpose or different character, altering the first with new expression, meaning, or message. In other words, whether and to what extent the new work is transformative. Tara: This transformative use analysis took on great importance and often eclipsed the other fair use factors. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. If the work was transformative, it was almost always found to be fair use. The importance of transformativeness all changed with this opinion. The fact that the second work conveys a different meaning or message from the first work without more is not dispositive. Now, the focus of the first fair use factor, the purpose and character of the use, has shifted from a context-based analysis to a purpose-based analysis. Scott: That’s right, Tara. Now, the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. So now let’s talk about how this decision will and will not change how documentarians can use third party footage under fair use. So documentarians frequently use third party footage in order to comment on or critique the footage itself. Section 107 of the Copyright Act provides that the fair use of a copyrighted work, including such use for purposes such as criticism and comment, is not an infringement of copyright. Tara: At oral argument in Warhol, both Goldsmith and the US. Government agreed that commenting on the original work, criticizing it, or otherwise shedding light on the original work is the most straightforward way to establish fair use. Scott: Right. In its opinion, the Supreme Court reasoned that where the use is for commentary or criticism, a copying of the first work may be justified because copying is reasonably necessary to achieve the user’s new purpose. Also, the Court observed that criticism of a work ordinarily does not supersede the objects of or supplant the work. Rather, it uses the work to serve a distinct end. Tara: But what about uses that are not for the purpose of criticism or commentary, but for a biographical purpose? Documentarians often use third party footage as a biographical anchor to convey a biographical fact about the subject. Would such uses reasonably justify the use of the underlying material? Scott: That’s a great question, Tara. Let’s take, for example, the copyright infringement case filed by the rights holders to The Ed Sullivan Show against the producers of the Broadway hit Jersey Boys. That’s the case of Sofa Entertainment versus Dodger Productions. In that case, Sofa Entertainment took issue with a segment in the play where one of the band members speaks to the audience directly about how the band was coming of age during the British invasion. And then he speaks to the audience, or as he’s speaking to the audience. A clip of The Ed Sullivan Show is shown where Sullivan introduces the band, and then after that, the stage actors perform in. Tara: Sova the 9th Circuit said that using it as a biographical anchor, the producers put the clip to its own transformative ends, and that being selected by

The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce” occurs in the United States. Scott Hervey and Tara Sattler talk about this case on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: Extraterritorial? Not quite for the Lanham Act. The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce” occurs in the United States. This is what we will be discussing on this installment of the Briefing. Scott: We talked about the facts of this case, Abitron Austria GmbH, v. Hetronic International, Inc., and the holdings of the lower courts on an earlier episode of “The Briefing,” so Tara, why don’t you give us a quick reminder of the facts and how this case came before the U.S. Supreme Court. Tara: Sure, Hetronic International, Inc., is a U.S. company that manufactures radio remote controls used to operate heavy-duty construction equipment. Abitron, the defendant, distributed Hetronic’s products in Europe. When the distributor relationship ended, Abitron started manufacturing their own products that were identical to Hetronic’s and that included the Hetronic trademark. The defendant sold their products with the Hetronic branding in Europe, so Hetronic sued Abitron. A jury in the Western District of Oklahoma awarded Hetronic over $100 million in damages, most of which tied to the defendants’ trademark infringement based on sales outside of the U.S. as 97% of the defendant’s sales were made “in foreign countries, by foreign companies, to foreign customers, for use in foreign countries”. On appeal to the 10th Circuit, the defendants insisted that the Lanham Act’s reach for trademark infringement doesn’t extend to their conduct because their conduct generally involved foreign defendants making sales to foreign consumers. And now, the Supreme Court has remanded the case and held that liability for trademark infringement under the Lanham Act extends only to infringing “use in commerce” in the United States. Scott: The Lanham Act governs federal trademark and unfair competition disputes. It imposes liability on any person who uses in commerce any . . . “colorable imitation of a registered mark,” or “[a]ny person who . . . uses in commerce any” word, false description, or false designation of origin that “is likely to cause confusion . . . or to deceive as to the affiliation,” origin, or sponsorship of any goods. The Act defines commerce broadly as “all commerce which may lawfully be regulated by Congress. In the U.S. Supreme Court’s holding, they focused specifically on the “use in commerce” language in the Lanham Act, in holding that “use in commerce” must occur in the United States in order to constitute trademark infringement under the Lanham Act. Tara: That’s right. The focus on “use in commerce” is different than the holdings that some of the other federal circuits have taken on the extraterritorial application of the Lanham Act. Some federal circuits looked instead to whether the foreign activities of foreign defendants have a “substantial effect” on U.S. commerce. In fact, the only other Supreme Court case that addresses the extraterritorial application of the Lanham Act also discussed the effects of the alleged infringement on U.S. commerce. Scott: That case is Steele v. Bulova Watch Co. and was decided in 1952. In that case, Steele, a Texas man, procured component parts from the United States and Switzerland, assembled watches in Mexico City, and branded them ‘Bulova’. The Bulova Watch Company’s Texas sales representative received numerous complaints from retail jewelers in the Mexican border area of Texas whose customers brought in for repair defective ‘Bulova’ watches, but upon inspection, it often turned out that the watches weren’t Bulova watches at all. The Supreme Court held that Steele’s activities were covered by the Lanham Act and looked to the impact of Steele’s activities on U.S. commerce. Tara: So, the Supreme Court made sure to distinguish the Abitron case from the Steele case in its recent decision. The court clarified that the Steele case “implicated both domestic conduct and the likelihood of domestic confusion” as compared to the Abitron case, where 97% of sales were made in foreign countries, to foreign buyers, for use in foreign countries. Scott: This case will have broad implications for U.S. companies that sell products overseas, and best practices will probably lead to the registration of trademarks in strategic international jurisdictions. And it seems like this case would also raise concerns for foreign companies who sell products online in the U.S. Tara: That’s ri

The subjects of a documentary have dropped their long-standing defamation lawsuit against Netflix and producers. Scott Hervey and Jamie Lincenberg talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show notes: Scott: As of last week, a longstanding lawsuit against Netflix and producers, Doc Shop Productions, has been dropped. In a previous episode of The Briefing, we discussed the then-current status of the case where seven subjects of the Netflix docuseries “Afflicted” sued Netflix for claims of defamation, fraud and invasion of privacy. We are going to take a look at this dismissal on this installment of the Briefing by Weintraub Tobin. I am Scott Hervey of Weintraub Tobin and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to The Briefing. Jamie: Thank you, Scott. I’m happy to be here. Scott: Jamie, can you provide a quick recap on the lawsuit. Jamie: Sure. the seven-part series “Afflicted” explores the world of chronic diseases, following a number of patients and their loved ones suffering from the same. The show casts a skeptical eye on some of the subject’s illnesses and those subjects then brought claims accusing Netflix and the producers for editing the show to make the subjects’ rare illnesses look psychosomatic and alleging that the plaintiffs were “duped by the defendants into participating in a salacious reality television program that questioned the existence of chronic illness and portrayed the plaintiffs as lazy, crazy, hypochondriacs who were deserving of scorn and who in fact have since received scorn and abuse because of the shows false representation. Scott: Netflix and the producers fired back – filing an anti-SLAPP motion to quickly block the lawsuits, based on the right to free speech. However, an LA county judge rejected the motion, and the appeals court agreed in a unanimous decision where the judges found that “undisputed facts concerning the plaintiff’s diagnosed medical conditions, when contrasted with the show script excerpts and aired version of “Afflicted” were sufficient to constitute a threshold showing that the defendants could reasonably be understood as falsely implying that the sick plaintiffs were imagining their illnesses due to some psychological condition and that their caregivers were gullible pawns or enablers who had been duped into providing care for persons who did not need it.” The plaintiff’s attorney called the ruling a “Significant Win” and we discussed in our episode that such a ruling could in fact be a shift in the norm and represent major issues for documentary/non-scripted film and television producers. Jamie: Now, almost four years since the initiation of the lawsuit, the case has been dropped. From limited sources, it seems that both sides have agreed to drop the suit, according to a request for dismissal filed on June 6. Details of the deal have not been disclosed, but of course, this is a win for Netflix, and the producers. Scott: Of course, Netflix is no stranger to defending itself from accusations of defamation. This is one of many defamation lawsuits that have been brought against not just Netflix, but many studios and producers working in the documentary space. This case addresses a number of issues that are generally always present in documentary industry and highlights important lessons for both producers and subjects of those documentaries. Jamie: These issues are present now, more than ever. Given guild strikes halting much of traditional production and the significantly decreased cost of non-scripted content, documentaries, docuseries, and other non-scripted productions are booming and regularly ranked among the most viewed shows on Netflix and other streamers. Scott: Despite the dismissal, this case is a cautionary tale for produces in the documentary space. Jamie: I agree. This show was controversial from the moment it began streaming in 2018. Dozens of doctors, scientists, artists and writers, including names such as Lena Dunham and Monica Lewinsky, signed an open letter to Netflix a few years back, accusing the producers of the flagrant misrepresentations present in the show. In looking at the details of the case, it seems that the producers of the show likely used creative tools and journalistic practice to advance a narrative that is not actually supported by fact – from early misrepresentations of their intentions with the show, to showing apparent diagnoses from doctors who had never even examined the subjects. While we understand the need to produce a compelling documentary production, but I don’t think that can be at the cost of the subjects of those shows and the audience, who are also being misled by a false narrative. How do you think we reconcile this in the industry? And what is the advice to provide producers and studios as the documentary/non-scripted industry? Scott: I think the industry needs to understand that

The U.S. Supreme Court provided clarification on the application of the Rogers test in relation to Jack Daniels v. VIP Products. Scott Hervey and Jamie Lincenberg talk about this ruling on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In the case of Jack Daniel’s Properties, Inc. v. VIP Products, the Supreme Court has spoken and provided clarification on the application of the Rogers test and whether the parodic use of another’s trademark is always non-commercial use for the purposes of a dilution claim. We are going to talk about this ruling and its potential future applications on this installment of the Briefing by WT. I am Scott Hervey of Weintraub Tobin, and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to the briefing. Scott: On June 8, 2023, the United States Supreme Court handed down its opinion in JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS. The dispute dates back to 2014 when Jack Daniel’s sent a series of cease and desist letters to VIP products concerning its squeaky dog chew toy, Bad Spaniels. This toy parodies the Jack Daniel’s product; “Jack Daniel’s” becomes “Bad Spaniels.” And the phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” Jack Dailes claimed that VIP Products had infringed and diluted its trademarks. In 2018 a district court judge ruled in Jack Daniels’s favor. Jamie: In its ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s marks. Scott: On appeal to the Ninth Circuit, VIP argued that the district court erred in finding that the toy wasn’t expressive. The Ninth Circuit, therefore, remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work. Jamie: In reviewing the Ninth Circuit’s holding, the Supreme Court framed its analysis by starting its opinion with a discussion of the purpose and function of a trademark, which is to serve as an identifier of the source of certain goods and services. From there, the Court then looks at the Ninth Circuit’s application of the Rogers test and its analysis of Jack Daniels’ dilution claim. Scott: Right. With regard to the application of the Rogers test, the Supreme Court said the issue is not whether the dog toy is an expressive work. The issue is the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, was for the purpose of serving as a source identifier…trademark use, in other words. That didn’t seem to be a controversial analysis since, in its complaint, VIP claimed trademark rights in Bad Spaniels, and VIP had, in fact, secured trademark registration of Bad Spaniels. This use, use as a trademark, is outside of the application of the Rogers test and instead should be analyzed under the multi-factor test like Sleekcraft. Jamie: The Supreme Court said that this approach….confining Rogers to instances where a trademark is not used to designate a work’s source but solely to perform some other expressive function….. is not new and has been followed by lower courts in other cases. Scott: That’s an important point you raise. The use of the trademark must only be to perform some other expressive function. Where a mark is used both to perform an expressive function and also as a source identifier, the Rogers test is not applicable. Jamie: Scott, do you think the Court’s analysis would have been different if VIP had not claimed trademark rights in Bad Spaniels? Scott: That certainly gave the Supreme Court an easy out. The Supreme Court said that the lower Court got it right when it said that “VIP uses its Bad Spaniels trademark and trade dress as source identifiers of its dog toy,” and the Supreme Court said that this point was conceded by VIP when it said in its complaint that it both owns and uses the Bad Spaniels trademark and trade dress for its dog toy. For certain, the Supreme Court points to some other factors, but this seems to be the proverbial nail in the coffin. Jamie: Continuing with this hypothetical, what if VIP didn’t claim that Bad Spaniels was a trademark, didn’t treat it as a product name, and rather claimed that its use was merely humorous and ornamental and not any form of trademark use? Scott: That probably would have helped. It’s certain from this opinion that

A court denied Netflix’s request for GoTV Streaming to supply documents relating to the source of its patent litigation funding. Scott Hervey and Eric Caligiuri discuss this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Read more about this case here.

The U.S. Supreme Court will hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to register trademarks using the name of a living person without their consent. Scott Hervey and Tara Sattler discuss this on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: The U.S. Supreme Court has agreed to hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to secure registration of a trademark using the name of living persons without that person’s consent. That’s what we’ll be discussing in this installment of the Briefing by Weintraub Tobin. Tara: Last year, the Federal Circuit overturned a decision from the USPTO Trademark Trial and Appeal Board in which the USPTO refused to grant a trademark registration for the mark TRUMP TO SMALL for use on t-shirts. The USPTO refusal was based on Section 2(c) of the Lanham Act, which requires the USPTO to refuse registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”. Scott: After the TTAB affirmed the trademark examiner’s refusal to register, the applicant, Steve Elster, appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that “the government has no legitimate interest in protecting the privacy of President Trump.” Tara: Elster argued that the phrase was “political criticism” and accordingly protected by the First Amendment. The Federal Circuit agreed and overturned the USPTO’s refusal to register. The USPTO appealed to matter to the Supreme Court and suspended applications on all pending applications for trademarks that are critical of public or government officials until the Supreme Court weighs in on the issue. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided. Scott: In its petition to the Supreme Court, the Trademark Offices argued that enforcing the decision conflicts with the plain language of section 2(c) of the Lanham Act. Tara: The Trademark Office also argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent’s — not the refusal to register them — that would ‘chill’ such speech.” Scott: This is an interesting issue for the Supreme Court. Is a section 2(c) refusal to register the same thing as a government restriction on free speech? If the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, trademark examiners will have to make a decision about whether a particular trademark expresses protectable speech under the First Amendment. That isn’t the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue and a case we will be watching. Thanks, Tara.

The U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. Scott Hervey and Tara Sattler talk about this decision on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Andy Warhol Foundation v. Goldsmith Campbell v. Acuff-Rose Music Show Notes: Scott: In a closely watched copyright case, the U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. The decision affirms a previous ruling by the Second Circuit, which found that Warhol’s artwork shared the same commercial purpose as the original photograph taken by photographer Lynn Goldsmith. The Supreme Court seemed to make a great effort to state that its analysis was limited to the specific use alleged to be infringing – the foundation’s licensing of Warhol Prince portrait to Conde Nast – and stated that the court is not expressing an opinion as to the creation, display or sale of the original series of Warhol Prince portraits, and the case itself presents the unique situation of the two works actually competing in the same marketplace. However, this opinion is now the go-to for determining fair use, and it will have a very wide impact. We are going to talk about the impact of this case in this installment of the briefing by Weintraub Tobin. Scott: These are the underlying facts. In 1981 Lynn Goldsmith was commissioned by Newsweek to photograph a then “up and coming” musician named Prince Rogers Nelson. Newsweek later published one of Goldsmith’s photos along with an article about Prince. Years later, Goldsmith granted a limited license to Conde Nast publication – Vanity Fair, for use of one of her Prince photos as an “artist reference for an illustration.” The terms of the license included that the use would be for “one time” only. Vanity Fair then hired Andy Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400. Tara: After Prince died in 2016, Condé Nast contacted the foundation about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince. Condé Nast learned about a series of orange silkscreen portraits of Prince created by Warhol. This Orange Prince image is one of 16 works that Warhol derived from Goldsmith’s photograph. When Condé Nast learned about the Orange Prince Series images, it opted instead to purchase a license from the foundation to publish it instead. Apparently, Goldsmith was unaware of the orange prince Series until 2016, when she saw it on the cover of Condé Nast’s magazine. And from there, this lawsuit commenced. Scott: The sole issue on appeal to the Supreme Court was whether the first fair use factor, the purpose, and the character of the use weighed in favor of the foundation. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell v. Acuff-Rose Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether “the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[,]. . . in other words, whether and to what extent the new work is transformative. . .” Tara: This transformative use analysis took on great importance and often eclipsed the other fair use factors. If the work was transformative, it was almost always found to be fair use. Scott: Agreed. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. According to the Second Circuit in the Cariou v. Prince case, the second work did not need to comment on or parody the original work, and the creator of the second work did not need to articulate a transformative intent for one to be found. In response to the Foundation’s argument that the first fair use factor weighs in its favor because the works convey a different meaning or message than Goldsmith’s photograph, the majority of the Court said that this, without more, is not dispositive of the first fact. Rather, the majority focused on the specific use of the infringing work…the licensing to third parties. The majority said, “As portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and the Foundation’s copying use of it share substantially the same purpose.” The majority went on to say that even though the Foundation’s work ad