The Briefing by Weintraub Tobin

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 episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Show me the money. Who you going to call? Go ahead, make my day. These are a few iconic phrases with significant equity. But protection of catchphrases like this are spotty. We are going to talk about the protectability of short phrases on this next installment of the Briefing by Weintraub Tobin. Scott: Iconic short phrases are worth their weight in gold, and the creators of those short phrases would probably like to prevent others from using those phrases under any circumstances. That’s not always possible. Tara: Let’s first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under Copyright law, and that isn’t the case. Scott: That’s right. Short phrases are not protectable under US Copyright law. According to a Copyright Office Circular, short phrases, such as slogans, are uncopyrightable because they contain an insufficient amount of authorship. Even if the Copyright Office will not register short phrase even if they are novel, distinctive, or lends itself to a play on words. Tara: And if a work is not protectable under copyright, then it can’t be the subject of a copyright infringement claim. But that doesn’t mean that all uses of a third party’s short phrase is always ok. Scott: Right. While the quotation of a short phrase in books and movies may not be actionable, the use of “let’s get ready to rumble” in connection with the sale of goods or services could certainly bring a lawsuit. Tara: It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for “Let’s get ready to Rumble” and has been quite active in policing its use. Scott: Trademark protection is the best form of IP protection for short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and are used in connection with goods or services. Tara: Just Do It is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie? Scott: Well, a quote like “ET Phone Home” could be protectable for the merchandise but not likely for the movie itself.

The Trademark Trial and Appeals Board denied an application to register a trademark for essential oil dispensers meant to fill smoking devices with cannabis-based oils. Scott Hervey and Tara Sattler talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show notes: Scott: On May 3, the TTAB issued a precedential opinion denying an application to register a line of essential oil dispensers used to dispense premeasured amounts of cannabis-based oil to a vaping or smoking device for ‘dabbing on the grounds that such products are illegal under the Federal Controlled Substances Act. It’s been known since the legalization of medical cannabis that it’s impossible to get a federal trademark. However, here the Applicant argues that an exemption under the Controlled Substances Act makes these goods lawful under federal law and thus eligible for federal trademark registration. We are going to talk about this case next on the briefing by Weintraub Tobin. Scott: National Concessions Group, Inc sought to register the mark BAKKED and a stylized drop design mark for an essential oil dispenser. The trademark examiner assigned to the application contended that this oil dispenser is drug paraphernalia, used in dabbing, and is illegal under the CSA, and refused registration on that basis. Even though the Applicant argued that the goods were intended for and could be used for legal purposes, the examiner looked at extrinsic evidence, including NCG’s website and advertisements for the products, which supported the examiner’s position that the goods were primarily intended for use with cannabis. Tara: Under Section 1 of the Lanham Act (15 USC 1051), the owner of a trademark used in commerce may request registration of its trademark on the principal register. Section 45 of the Lanham Act (15 USC 1127), “commerce” means all commerce that may lawfully be regulated by Congress. If the record indicates that the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible, and a refusal under Trademark Act Sections 1 and 45 is appropriate. Where the identified goods are illegal under federal law, including the federal Controlled Substances Act (CSA), the Applicant cannot use its mark in lawful commerce. Scott: Section 863(a) of the CSA makes it unlawful to (1) sell or offer for sale drug paraphernalia. Drug paraphernalia is defined as “any equipment, which is primarily intended or designed for use in introducing into the human body a controlled substance. Marijuana and marijuana-based preparations are controlled substances under the CSA. The denial of a cannabis-related application under the CSA is not new to trademark practitioners. What makes this case interesting is NCG’s argument that two exceptions in the CSA supported registration. Tara: However, the CSA includes two exceptions to section 863. They state that section 863 shall not apply to any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items. And the Applicant argued that its goods qualified for an exemption because the Applicant is “authorized by” Colorado state law to “manufacture, possess, or distribute” such goods, Scott: This argument was a matter of first impression for the board. That doesn’t happen very often, and while it usually means that the TTAB will address and resolve the matter, in this case, the TTAB said that they do not need to decide the merits of the Applicant’s argument. The TTAB said that even if the Applicant’s interpretation of the exemption is correct, it is not entitled to the registration it seeks. Tara: First, the Applicant’s application was not geographically limited to Colorado. A federal registration would give Applicant presumptive exclusive nationwide rights to its mark in association with the identified goods. Scott: Second, the Applicant’s goods are not legal in other states outside of Colorado. Any authorization by Colorado of Applicant’s manufacture, possession, or distribution of the goods cannot override the laws of the other states or federal law outside Colorado. So, despite some, it’s still the status quo.

Major League Baseball player Aaron Judge went before the Trademark Trial and Appeals Board to block a person’s attempt to secure trademark rights for slogans that play on his name. Scott Hervey and Josh Escovedo discuss this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Josh: Welcome to the Briefing. Today we have some interesting news coming out of the sports world. Aaron Judge, the New York Yankees captain, has successfully blocked a Long Island man’s attempt to secure trademark rights on the judicially themed slogans “All Rise” and “Here Comes The Judge” for apparel. The Trademark Trial and Appeal Board issued a 61-page precedential opinion, stating that Judge and the Major League Baseball Players Association had priority of use over Michael P. Chisena’s use of “All Rise,” “Here Comes The Judge,” and a logo design with an image of the scales of justice superimposed on a baseball field, which all cover various articles of clothing. Scott: According to the TTAB, Judge and the MLBPA presented evidence of third-party licensees that paid royalties to use words and designs referring to Judge, often including judicial terminology, on apparel since August 2016. Chisena did not use the marks until he filed the applications in July and October 2017, which worked against him. Josh: That’s right, but Chisena argued that Judge and the MLBPA’s prior use of “All Rise” and “Here Comes The Judge” did not function as source- indicating trademarks and were only meant to “engender acknowledgment of, enthusiasm and overall support” for Judge. But the TTAB stated that the consuming public recognizes the subject slogans and symbols carrying judicial connotations as pointing to only one baseball player on one major league team. Scott: Chisena claimed that he was not a baseball fan and had no knowledge of Judge until “some point in 2017.” He said that his creation of the marks in question between 2012 and 2015 stemmed from his interest in developing a new sports product. Josh: Still, Judge and the MLBPA argued that Chisena adopted his marks in bad faith. The TTAB noted in its opinion that Chisena’s “timing, and choice of marks and colors are indeed eyebrow-raising, and his protestations of good faith strain credulity.” Scott: The TTAB also stated that it was the perception of the relevant public, i.e., baseball fans, rather than the parties’ intent that determined whether a designation functioned as a trademark. Josh: Overall, the TTAB deemed the evidence sufficient to negate Chisena’s protestations of good faith, and Judge and the MLBPA were able to successfully block his attempt to secure trademark rights on the slogans. What do you think, Scott? Is this the right outcome? Scott: So I’d say this was the right outcome. It’s definitely an interesting dispute, Josh. Thanks for sharing. Josh: Thanks, Scott.

The Universal Music Group is accusing a TikTok creator of copyright infringement after they published an AI-Generated song that was made to sound like a Drake and Weeknd collaboration. Scott Hervey and Josh Escovedo discuss this dispute in this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Middler v. Ford Astley v. Matthew Hauri, pka Yung Gravy Show Notes: Scott: Last week, a new Drake and Weeknd collaboration disrupted the Internet. The only problem is that it wasn’t a Drake and Weeknd collaboration, after all. The song “Heart on My Sleeve” was written and produced by TikTok user ghostwriter977. The vocals for “Heart on My Sleeve” were generated by artificial intelligence, made to sound like Drake and The Weeknd. UMG, the record label behind the artists, is furious and is pushing music streamers to block AI tools from training on its artists’ melodies and lyrics. While “Heart on My Sleeve” was ultimately removed from Spotify due to a copyright issue…the song had an unauthorized sample in it…we could see more original AI fake Drake songs from ghostwriter 977, and there may not be anything UMG or the artist can do about it. We are going to talk about this next on the Briefing by the IP Law Blog. Scott: The music industry sees generative AI tools that can create music that sounds like a specific artist, as a real threat to business. In response to the fake Drake AI song, UMG issued a statement publicly encouraging digital service providers not to let generative AI tools train on music issued by their artists. UMG considers this a violation of copyright law. Josh: As we have previously covered, this issue-whether the training of an AI tool on existing copyright-protected works constitutes infringement or is fair use – is currently being litigated in a number of cases. Whether the initial content-copying AI tool does as part of its learning process constitutes infringement or protectable fair use will have a profound effect on the future of AI. The court’s focus will be on whether this copying is part of an overall transformative process to be weighed against the commercial impact the tool has on the applicable industry. Scott: Focusing on the output, most, if not all, of those cases deal with generative AI platforms that create visual works. Here we are talking about the creation of a musical work where the song itself was original, written by ghostwriter977. And since UMG based its takedown on a small sample audio tag included in Heart on My Sleeve, it seems fair to assume that the original components of the song itself probably are not infringing. Josh: “Heart on My Sleeve” wasn’t the last of the Fake Drake. Another Fake Drake AI track recently dropped. The track “Winter’s Cold” was posted to Soundcloud on April 18, featuring the artificial vocals of Drake. The track has already garnered over 120,000 listeners on the platform. This, I am sure, has the record industry strategizing on how to put this all back in the bottle. And I assume further legal maneuvering is in the works. Scott: I agree. I suspect the next step could include the artist filing a right of publicity claim. Josh: California’s right of publicity statute is Civil Code section 3344 prohibits the use of another’s name, voice, photograph, or likeness on or in products, merchandise, or goods or for purposes of advertising or selling…..such products, merchandise, goods without such person’s prior consent. California also has a common law right of publicity that’s a bit broader than the statute. The Ninth Circuit has adjudicated two right of publicity cases involving sound-alike recordings. Scott: That’s right. The first was Middler v. Ford, in which Ford hired a singer who sounded like Bette Midler to sing a recording from one of Midler’s albums in a TV commercial. Middler sued for violation of her right of publicity…both under the civil code and under common law. The trial court initially granted Ford its motion for summary judgment. On appeal, the 9th Circuit addressing Middler’s common law claim held that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California. Josh: However, this holding from the Midler case doesn’t seem to be of much use to either UMG or Drake. The fake Drake AI songs were not being used to sell products. Also, the Midler court’s analysis of the interplay between the First Amendment and Midler’s publicity claim seems relevant here. The Midler court noted that if the purpose behind the use of a person’s identity is “informative or cultural,” the use is immune; if the use serves no such function but merely exploits the individual portrayed, imm

Popular food chains Chipotle and Sweetgreen settled a trademark dispute relating to Sweetgreen’s use of ‘CHIPOTLE’ on its menu. Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: And I’m Josh Escovedo with Weintraub Tobin. Over the course of a few days, Chipotle and Sweetgreen engaged in a trademark skirmish concerning the CHIPOTLE mark and settled the matter just a few days later. That what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: Today we’re going to discuss a recent legal dispute between two fast-casual restaurant chains, Chipotle and Sweetgreen. In short, Chipotle filed a lawsuit in California federal court against Sweetgreen, accusing the rival chain of infringing its trademark by selling a “Chipotle Chicken Burrito Bowl” that Chipotle claims is directly competing with Chipotle’s own menu item. Scott: That’s a bold move by Chipotle. What exactly are their claims? Josh: Chipotle alleges that Sweetgreen has been infringing its well-known Chipotle trademark since March 30 by selling a menu item with very similar ingredients to Chipotle’s own popular burrito bowl and incorporating the CHIPOTLE mark into the name of the item. By now, you may be wondering, how exactly is Sweetgreen infringing on Chipotle’s trademark? Scott: Well, according to the complaint, Sweetgreen’s menu item is listed with a capitalized “Chipotle” or sometimes in all caps on its website and in its social media posts on Instagram or Twitter. In addition, some ads for the allegedly infringing item utilize a font or background color which Chipotle claims is eerily similar to Chipotle’s font and background color. Josh: So basically, Chipotle is claiming that Sweetgreen is trying to create confusion among customers by falsely creating an impression that its product is somehow sponsored or authorized by Chipotle. At the very least, Chipotle is claiming that Sweetgreen has inadvertently created a situation that is likely to create consumer confusion. Scott: That’s right. Chipotle says that Sweetgreen’s actions are likely to cause confusion among customers, and that Sweetgreen is wrongfully profiting from and trading off of Chipotle’s valuable goodwill and reputation. Josh: I see. So, what was Chipotle seeking through this lawsuit? Scott: Well, Chipotle alleged three Lanham Act violations along with a claim under California’s Unfair Competition Law and sought injunctive relief and treble damages, according to the complaint. Josh: Those are some serious allegations. But there’s been a recent development in this case, hasn’t there? Scott: Yes, just days after Chipotle filed the lawsuit, Sweetgreen agreed to change the name of its new “Chipotle Chicken Burrito Bowl” to “Chicken + Chipotle Pepper Bowl” as part of a tentative agreement between the two companies to resolve the suit. Josh: That’s interesting. This really underscores the perils of adopting a mark in the restaurant industry that is also a popular ingredient. Here, it seems to have worked out for Chipotle through a quick resolution. I do question however how this would have played out if it had been litigated. I’m not confident Chipotle would have walked away victorious. What do both parties have to say about the resolution, Scott? Scott: According to statements provided to multiple news outlets, Sweetgreen says it made the change “to focus on business and continue serving our guests without distraction,” and Chipotle says it is “pleased that Sweetgreen has chosen to amend their materials in a manner that protects our trademarks and intellectual property.” Josh: So, it seems like both companies are satisfied with this resolution. Scott: At least to some extent. Now both parties can move forward with their business without the distraction and expense of litigation. I’m also willing to bet that Sweetgreen isn’t going to sell fewer bowls as a result of the name change. Josh: Absolutely. Litigating this issue would have been a pure matter of principle with little to gain at the end. Scott: I agree, Josh. Thanks for sharing.

Journalist Bob Woodward asked the court to dismiss former President Trump’s copyright infringement claim regarding Woodward’s audio book “The Trump Tapes,” which consists of 20 raw audio interviews with Trump. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Trump v. Woodward Taggart v. WMAQ Channel 5 Chicago Show Notes: Scott: Veteran investigative reporter Bob Woodward conducted an audio interview of former president Donald Trump for Woodward’s book, Rage. Woodward later released these recordings as a separate audiobook, and Trump claimed that Woodward did not have his permission to release these audiotapes as a separate audiobook and sued Woodard and his publisher for, among other claims, copyright infringement. Woodward filed a motion to dismiss, arguing that Trump’s complaint is without legal merit. We are going to talk about this. Scott: These are the facts according to Trump’s complaint against Woodward and his publisher, Simon and Schuster. Woodward sought and obtained President Trump’s consent to be recorded for a series of interviews with President Trump. Woodward interviewed Trump, both in person and over the phone, on numerous occasions during 2019, mostly during his term as president. Trump contends that he did not give permission for the recordings to be released as audio recordings and claims that he owns the copyright in the entire sound recording or at least Trump’s response to the interview questions. Josh: We previously covered this when Trump initially filed his complaint, and we questioned the merits of his copyright claim. Did Woodward’s motion to dismiss track our analysis? Scott: Woodward did raise one of the same as us – that Trump lacks any copyright ownership in the answers to interview questions. His motion even cites Taggart v. WMAQ Channel 5 Chicago, which we noted in our story. In that case, a Chicago television station videotaped a prison interview with a convicted sex offender in connection with a report on the lax regulation of summer camps. Taggart alleged that he had requested that the tape not be used in any manner, and when WMAQ broadcast an excerpt, he sued for copyright infringement and other claims. In ruling on the station’s motion to dismiss, the court held that Taggart did not have a copyright interest in unprepared and spontaneous utterances during an interview and dismissed his copyright claim. The basis of this finding is the Copyright Act’s lack of protection for ideas. While courts have recognized common law protection for the spoken word, according to the Taggart holding, courts have not and cannot recognize a proprietary interest where there is no tangible embodiment of the expression of an idea Josh: To qualify as an author under the Copyright Act, one must supply more than mere direction or ideas. According to the Supreme Court in Community for Creative Non-Violence v Reid, “an author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Scott: And based on that, the court found the responses given by Taggart “are not an expression of an idea for the purpose of copyright law.” On a more practical level, the judge noted that the granting of protection for the answers to questions “gathered in the daily task of the news reporter would essentially bring the industry to a halt.” Josh: Woodward raises a few additional grounds in his motion to dismiss. One other ground is that Trump has failed to register a copyright in the work alleged to be infringed prior to filing suit. Section 411(a) of the Copyright Act says, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Woodward contends that couching claims as “Declaratory Relief Regarding Ownership of Copyrights” and “Accounting” under “the Copyright Laws of the United States does not get Trump out from under the registration requirement. Scott: That’s right. I don’t know how challenging this issue will be to overcome. One additional challenge to Trump’s copyright ownership is that his responses are government works. Section 105 of the Copyright Act provides .that “copyright protection…is not available for any work of the United States Government,” which is defined as any “work prepared by an officer or employee of the United States Government as part of that person’s official duties” Trump, as president, was an employee of the federal government and Woodward contends that speaking with reporters is clearly conduct ‘of the kind [a President] is employed to perform.'” Josh: Here

The Supreme Court has finally heard arguments in the VIP Products v. Jack Daniels case, in which the whiskey company accused the dog toy maker of infringing its trademark with its whiskey bottle chew toy. Scott Hervey and Josh Escovedo discuss this dispute in the episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: and I’m Josh Escovedo with Weintraub Tobin. The Supreme Court has finally heard arguments in the much talked about VIP Products v. Jack Daniels matter concerning the balancing of free speech under the First Amendment and trademark rights under the Lanham Act. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: As many of you know, Jack Daniel’s is claiming that the “Bad Spaniels” dog toy made by VIP Products infringes JD’s trademark, as it replaces key elements of their whiskey bottle with dog and poop references. Perhaps what is most interesting about this case is that it requires The Supreme Court to try to figure out what test is needed to balance trademark rights under the Lanham Act and Free Speech under the First Amendment. Scott, let’s tell the readers about the arguments. Scott: Sure. Jack Daniel’s argues that VIP’s dog toy is trademark infringement that needs to be reined in so customers don’t presume the liquor company is associated with the product. So, the main question is whether the so-called Rogers test should apply. The Rogers test provides First Amendment protections to works with others’ trademarks on them, so long as the work is considered “artistically expressive” and does not “explicitly mislead” consumers. As you know, the Ninth Circuit had said VIP’s toy met the test. Josh, can you tell our listeners about the government’s stance on the Rogers test? Josh: The federal government wants to get rid of the Rogers test, calling it “inconsistent” with the Lanham Act. Plain and simple. But what wasn’t so plain was the fact that the justices ran through various colorful scenarios with attorneys for Jack Daniel’s, VIP Products, and the government trying to figure out what test is needed to decide whether a work is protected by free speech or infringes trademarks, leading to a lot of laughter and some odd exchanges. They even discussed bad advertising, drunken animals, urine sales, and dog ownership. Scott: It was definitely a lively exchange. Josh: Definitely. Justice Samuel Alito called it unlikely that “any reasonable person” would look at the dog toy and assume Jack Daniel’s had approved it, leading to a long back-and-forth encapsulating much of Wednesday’s oddness. They even discussed the controversial Nationwide Insurance commercial that featured a child who was revealed to be dead. Scott: It’s fascinating to see the Supreme Court justices discussing such odd scenarios. I can’t wait to see the outcome of the case and how the Court will deal with the conflicting interests. Thanks for sharing, Josh. Josh: Of course. Thanks, Scott.  

The Anne of Green Gables Licensing Authority is accusing a New York theater production company of trademark infringement for producing a show titled ‘Anne of Green Gables – The Musical.’ Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Anne With An E, Limited Liability Company v. Anne of Green Gables Licensing Authority Inc. Hermes v. Rothschild Show Notes: Scott: Copyrights have a finite lifespan and after the copyright term expires the works fall into the public domain. That’s not the case with trademarks which can last indefinitely. Anne of Green Gables was a children’s book originally published in 1908. This means that the work is now in the public domain. However, Anne of Green Gables Licensing Authority owns various trademarks for Anne of Green Gables. What happens when the right to create a musical interpretation of the public domain work and use Anne of Green Gables in the title runs headlong into the trademarks owned by the Licensing Authority. Are the producers who created a new musical interpretation of Anne of Green Gables, actually prohibited from using the name of the work in the title of the musical. We are going to talk about this on the next installment of the briefing by the IP law blog Scott: Anne With An E, LLC is a New York theatrical production company that is developing the musical, ‘Anne of Green Gables: A New Musical,’ based on the Public Domain Novel, ‘Anne of Green Gables’ by L.M. Montgomery. The musical features new original dialogue or book and music. Anne of Green Gables Licensing Authority is a Canadian corporation, jointly owned by the Province of Prince Edward Island (the location where the original novel took place) and the Heirs of the books author. Apparently, this entity claims to be the sole licensing agent for the trademark ANNE OF GREEN GABLES in the United States and abroad and claim to have licensed the use of the ANNE OF GREEN GABLES trademark in connection with a musical production, titled, ‘Anne of Green Gables: The Musical’ which has been continuously produced since 1965. Apparently, Anne of Green Gables Licensing Authority has been threatening Anne with an E with a potential trademark infringement claim ever since Anne with an E mounted its first production in 2018 and apparently in December 2022, escalated the situation by also sending a draft copy of a complaint. Anne with an E filed a complaint for declaratory relief with the Southern District of NY in February of this year, Josh: I can understand Anne of Green Gables Licensing Authority obtaining a trademark registration for ancillary merch but how did they get a trademark registration for the musical. That would be the title of a single artistic work which is not protectable as a trademark. Scott: That’s correct. The trademark examiner assigned to the trademark application refused to register the mark on that basis many, many times. The applicant tried to argue that the mark is used in association with a number of different productions, all of which are based upon the same general of the public domain work, but, all of which are different. The examiner cited to the TTAB decision in In re Posthuma, provides that where the mark identifies the title of a live theater production, such a theatrical production is a single creative work even if individual performances may have some variations. Eventually the applicant pointed to various different productions, produced by different production companies, each with a book and different lyrics and arguing that this makes them more like a series then a single work. Josh: And apparently the trademark examiner accepted this argument because the mark because registered. Scott: That’s right. I see a problem with this. The Licensing Authority didn’t claim that the other productions using the title ‘Anne of Green Gables: The Musical’ made use of the title was under their authority, thus failing to meet the use in commerce requirement that it be the applicant who uses the mark Josh: And if the registration is revoked, then the basis of its trademark suit goes away. Scott: That’s right. But still. I think this goes back to one of the reasons why trademark rights are not recognized in a single work of authorship. When a work falls into the public domain, others would have the right to reproduce the literary work. However, if the title to the work enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published only under a different title. Josh: And I can see that applying the Rogers test might not provide immediate relief. While the first prong, artistic relevance, is satisfied, but the second prong… whether the use explicitly misleads as to the source or the content of the work might not be so easy to overcome, especially in the

The NFL and Las Vegas Raiders threatened to sue a local law firm for trademark infringement, after the firm hired one of its athletes to appear in an advertisement with black and silver branding. Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: I’m Josh Escovedo with Weintraub Tobin. A dispute has arisen between the owner of the Dimopoulos Law Firm and the NFL over the NFL threatening to sue the firm for trademark infringement. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh: In a recently filed complaint in federal court, the Dimopoulos Law Firm, a personal injury firm based in Las Vegas, Nevada, alleges that it has been using a black and silver color scheme to promote its services since its inception in 2012. However, they recently hired three professional athletes, including Jon Bones Jones of the UFC, William Karlsson of the Vegas Golden Knights, and most importantly for this case, Maxx Crosby of the Las Vegas Raiders, to appear in a new advertisement. According to the firm, the advertisement did not feature any logos or trademarks of the NFL, the Raiders, or any other sports teams. Despite this, the complaint states, the NFL sent Dimopoulos a cease-and-desist letter accusing the firm of unauthorized use of the Raiders’ marks. Scott: That’s quite interesting. So, what are the grounds for this dispute? Josh: Well, according to the cease-and-desist letter, the NFL claims that Dimopoulos used hashtags including the Raiders’ marks and engaged in unauthorized use of their marks. However, it’s worth noting that the Complaint alleges that the advertisement did not feature any NFL logos or names, and the disclaimer on the Dimopoulos Law Firm website and YouTube page make it clear that the firm is not affiliated with the NFL. Scott, based on what know so far, do you think the NFL has a strong case? Scott: Personally, I don’t think so, but all we’ve heard so far are the allegations of the Complaint and the cease-and-desist letter. I may feel differently once more facts are discovered. However, with the limited information we have so far, it seems that the advertisement didn’t feature any NFL logos or word marks. In fact, according to the law firm, the only logo that shown was the Dimopoulos Law Firm logo. Furthermore, we’re informed that the disclaimer on the website and YouTube page clearly state that the firm is not affiliated with the NFL. So, it’s hard to see how a reasonable consumer could be confused into thinking that the firm is affiliated with the NFL. Josh: I certainly understand that position, and I’m not saying I disagree, but what do you think about the point that the firm raises in the Complaint concerning the fact that multiple professional sports teams, including the Los Angeles Kings, the San Antonio Spurs, and the Chicago White Sox use a silver and black color scheme. Scott: Well, it’s a reasonable point to make, but it’s also fair to say that none of those teams play football like Crosby does in the advertisement, and none of those teams are in Las Vegas, where the law firm happens to sit. Josh: True, but according to the Complaint, the Raiders hadn’t even relocated to Las Vegas from Oakland until four years after the law firm started using the silver and black color scheme. With that said, I suppose it doesn’t matter if the team is in Las Vegas or Oakland, if it has protectible IP in its color scheme and the advertisement infringed that IP, it probably wouldn’t matter that the team wasn’t always in the same city as the firm, although it would likely be considered in the intent factor of the Sleekcraft analysis if a claim were asserted for trademark infringement under 15 U.S.C. section 1114. Scott: That’s right. And even if the Raiders had protectible IP in their color scheme, the Raiders’ claim would really be more of a false designation of association/affiliation claim under 15 U.S.C. section 1125. It’s unlikely that there would be consumer confusion in that the consumer reasonably believes that the Raiders are providing legal services, but it is at least feasible that a consumer could believe that the Raiders are associated, affiliated, or otherwise endorse the law firm as a result of the advertise. It really comes down to whether the Raiders and the NFL have protectible IP in the color schedule. Josh: How about the hashtag claim? The law firm alleges that it did not use the hashtags as a source identifier, but it seems to me that given the ability of consumers to search hashtags on social media and discover posts or advertisements tagged with those hashtags, there is a reasonable argument that they should be entitled to protection similar to AdWords, whereby a competitor cannot use another party’s trademarks as AdWords to drive traffic to t

The US Copyright Office issued a policy statement regarding the registration of works that contain material generated by AI technology. Scott Hervey and Josh Escovedo talk about this clarification on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: With the buzz still fresh from the copyright office’s partial revocation of the registration issued to Kristina Kashtanova for the graphic novel, Zarya of the Dawn. On March 16 the Copyright office issued a rule concerning the registration of works containing material generated by Artificial Intelligence. We are going to talk about this on the next installment of the Briefing by the IP Law Blog Scott: On March 16, the Copyright office issued a rule concerning the registration of works containing material generated by Artificial Intelligence. The purpose of the rule, which really is a policy statement, is to clarify the Copyright Office’s practices for examining and registering works that contain material generated through the use of artificial intelligence technology. First, a little background on why the Copyright Office had to issue this rule in the first place. Scott: Generative artificial intelligence technologies are capable of producing a variety of expressive material, including text and images, in response to text provided by a user. Most generative AI technologies operate through “prompts,” which are text commands and contain text describing what the AI should generate. The output can be text, graphics or audio and are based on the input material the AI has been trained on. Josh: Generative AI technologies have raised questions about whether the material produced is protected by copyright, and if not, to what extent a work consisting of both human-authored and AI-generated material may be registered. These questions are not hypothetical; the Copyright office has received and is receiving applications to register AI generated work, with the first dating back to 2018. That application was for a visual work called “A recent entrance to paradise” We previously covered the decision by the Copyright Office Review Boards’ refusal to register the work based on fact that the work was made without any creative contribution from a human actor. And recently, the office reviewed and partially revoked an application for the graphic novel Zarya of the Dawn where the graphics were created using the AI tool, Midjourney. We recently covered that story as well. Scott: And while the Copyright office’s decision in Kashtanova did provide some understanding as to the Office’s position, this rule provides guidance for persons attempting to register works that incorporate AI generated material. Scott: First, it’s imperative to understand that the Copyright office will not recognize a copyright in AI generated work and due to pre-emption, there is no way that state law could provide any similar type of protection. This means that any work generated by an AI technology is in the public domain, free for all to use. Josh: So, does this mean that all work generated by an AI technology is not copyrightable. Scott: Not necessarily. It’s about who is ultimately responsible for the creation of a work’s traditional elements of authorship. If they are produced by a machine solely in response to a text prompt, then the “traditional elements of authorship” are determined and executed by the technology—not the human user. However, if a human exercised the ultimate creative control over how a generative AI technology interprets prompts and generates material, or if a human selects or arranges AI generated material in a sufficiently creative way or if a human modifies the AI generated material to such a degree that the modifications meet the standard for copyright protection, that the portion of the work representing the human authored aspect of the work would be protectable. Josh: But copyright protection would not extend to the work in its entirety, only that portion of the work over which a human exercised ultimate creative control. Scott: That’s right. Putting aside manual human manipulation of the AI generated material, the copyright office stated users do not exercise ultimate creative control over how current generative AI technologies interpret prompts and generate material. But, if they did…. if the user exercised ultimate creative control over the output, would the technology still be AI. Scott: The rule ends with guidance for applicants seeking to register works incorporating AI generated material, however on the application an applicant must describe the authorship that was contributed by a human. Applicants should not list an AI technology or the company that owns such AI technology as a co-author because the applicant used it when creating the work. Also, an applicant must explicitly exclude AI generated content from the copyright claim. Josh: I am sure this is not the last of this issue Scott: It certain

The United States Patent and Trademark office has suspended action on trademark applications targeting the names of public figures. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: I’m Josh Escovedo with Weintraub Tobin. The USPTO has suspended action on trademark application trying to take advantage of a new appellate decision that would let people license trademarks that poke fun at the names of living people. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh: Scott, have you heard about the recent guidance issued by the US Patent and Trademark Office on trademarks that make fun of living public figures? Scott: I have, but why don’t you tell our listeners what’s going on. Josh: Well, the USPTO has announced that its suspending action on any trademark applications that try to take advantage of a new appeals court ruling that potentially allows people to license trademarks that make fun of the names of living figures like former President Donald Trump. The Trademark Office has indicated that it will continue to do so while it waits for the US Supreme Court to weigh in. Scott: Right, and according to the one-page document issued by the Trademark Office, its examiners will not look at trademarks that cover phrases “that are critical of government officials or public figures,” in line with the agency’s longstanding rules. This is because of Section 2(c) of the Lanham Act, which bans the issuance of trademarks that include names “identifying a particular individual” without their consent. Josh: You might be wondering what led to the issuance of this guidance. Well, last year, lawyer Steve Elster was trying to land a trademark protecting his use of the phrase “Trump Too Small” for use on T-shirts. Both the office and its own appeals body, the Trademark Trial and Appeal Board, had refused to register the mark, citing the Office’s long-standing rules. But Elster then appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that “the government has no legitimate interest in protecting the privacy of President Trump.” Scott: Right, I remember hearing about that last February. Josh: Yes, Elster argued that the phrase was “political criticism,” and accordingly to Judge Dyk, it is therefore protected by the First Amendment. The USPTO appealed to matter to the Supreme Court. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided. Scott: The Trademark Offices argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent’s — not the refusal to register them — that would ‘chill’ such speech.” Josh: So, for now, the Trademark Office has said that it won’t take any action on trademark applications that are trying to take advantage of Judge Dyk’s decision until the Supreme Court weighs in. It’s unclear how many applications this will impact, as the Office has declined to comment on its decision. One has to wonder, what the Trademark Office will do if the Supreme Court refuses to grant cert like it often does. Scott: That is an interesting question, Josh, and even if the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, wouldn’t such a decision mean that the trademark examiners will have to make decision about a particular trademark expresses protectible speech under the First Amendment? That isn’t the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue. Thanks for breaking it down for us, Josh. Josh: No problem, Scott. Thank you to everyone who joined us.

The U.S. Copyright Office instituted an inquiry into a registration relating to a graphic novel that uses AI-generated artwork. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Kristina Kashtanova is the author of the graphic novel, Zarya of the Dawn. Ms. Kashtanova had previously applied for and obtained a copyright registration for the graphic novel. Sometime after the novel was registered, the Copyright office, on its own accord, instituted an inquiry into registration with a specific focus on the artwork in the novel which was generated through the use of Midjourney AI technology. After the inquiry, the Copyright office revised the registration and excluded from protection the images created by the use of the AI technology. We are going to talk about this on the next installment of the Briefing by the IP law blog Scott: Here is the brief history of the matter. In September, 2022 Kashtanova submitted a copyright application for her graphic novel. Her application did not disclose that she used an AI application to create any part of the novel nor did she disclaim any portion of the work. After the application was registered, apparently the Copyright office became aware of statements made by Kashtanova in social media that she had created the graphic novel using Midjourney’s AI tool. Josh: Don’t you find it a bit odd that the Copyright office was watching or reviewing Kashtanova’s social media. The examiner must have had some belief that AI was somehow involved in the creation of the graphic novel. Scott: I never thought that the registration process at the copyright office was that in depth. I always thought it was more pro-forma, but it seems I was mistaken. In any event, based on this new information, the Copyright office determined that the original application was incorrect or substantively incorrect. The office then notified Kashtanova that it intended to cancel the registration unless she provided additional information in writing showing why the registration should not be canceled. Josh: As we have previously covered, the basis for the Copyright office’s refusal to register AI generate work comes from how the Copyright Act defines the scope of copyright protection. Under the Act, a work may be registered if it qualifies as an “original work[] of authorship fixed in any tangible medium of expression. Courts interpreting the phrase “works of authorship” have uniformly limited it to the creations of human authors. Scott: According to the internal Copyright Offices practices, as codified in Rule 503.03, In order to be entitled to copyright registration, a work must be the product of human authorship. Works produced by mechanical processes or random selection without any contribution by a human author are not registrable. Josh: In responding to the Copyright office, Kashtanova’s lawyers argued that both the novel’s text and the selection and arrangement of the text and images are copyrightable since the text was written solely by Kashtanova and the text and images were arranged solely by Kashtanova. The copyright office accepted these arguments and held the text to be copyrightable as well as the arrangement of the text and images. With regard to the images, Kashtanova’s counsel argued that she used the AI platform as a creative tool, similar to how a photographer may use Adobe Photoshop. Scott: The decision rendered by the Copyright office goes into great detail about how Midjourney works and how Kashtanova used Midjourney. This is important to understand why the copyright office found the way it did. I am going to simplify the description a bit. Midjourney offers an artificial intelligence technology capable of generating images in response to text provided by a user. Users operate Midjourney through “prompts,” which are text commands. Prompts must start with the text “/imagine” and contain text describing what Midjourney should generate. Users also have the option to include a URL of one or more images to influence the generated output, or parameters directing Midjourney to generate an image in a particular aspect ratio or providing other functional directions. Josh: After a user provides Midjourney with a prompt, the technology will generate four images in response. The images are provided in a grid, and buttons underneath the grid allow users to request that Midjourney provide a higher-resolution version of an image, create new variations of an image Midjourney generate, or to generate four new images from scratch. Scott: Kashtanova’s counsel argued that the artist and not the machine guided the structure and content of each image. Her counsel argued “all the images in the Work were designed by Kashtanova. The visual structure of each image, the selection of the poses and points of view, and the juxtaposition of the various visual elements within each picture we

Singer Rick Astley is suing rapper Yung Gravy for vocal imitation in his smash hit, Betty (Get Money). Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases discussed: Richard “Rick” Paul Astley vs. Matthew Hauri PKA Yung Gravy; Nick Seeley PKA Popnick; Dillon Francis; David Wilson PKA dwilly; Republic Records Midler v. Ford Motor Co. Waits vs Frito Lay Show notes: Scott Hervey: I’m Scott Hervey with Weintraub Tobin. Josh Escovedo: And I’m Josh Escovedo with Weintraub Tobin. Rick Astley has sued Yung Gravy for use of an imitation voice in his smash hit, Betty (Get Money). That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh Escovedo: Rick Astley, artist of the hit song Never Going to Give You Up from 1987, has filed suit against rapper Yung Gravy for impersonating his voice on Yung Gravy’s breakout hit, Betty (Get Money). Astley claims that Gravy imitated his voice without legal authorization and has therefore filed suit in Los Angeles County Superior Court, alleging violation of his right of publicity under California law. Josh Escovedo: According to Astley’s complaint, Gravy seeks to capitalize off of the immense popularity and goodwill of Mr. Astley by creating a nearly indistinguishable imitation of Mr. Astley’s voice throughout the song. For reasons that we’ll be discussing, Astley did not file a claim for copyright infringement. But while copyright law may not be at issue in the complaint, it is likely to be at issue in the dispute itself. Scott, can you explain to our listeners why Astley did not file a claim for copyright infringement? Scott Hervey: Sure. In order to understand why Astley didn’t file a claim for copyright infringement, it’s important to understand that music has two different copyright elements. First, there’s a copyright element in the composition or publishing elements which protects the lyrics and musical arrangement. And then there is a copyright interest in the actual sound recording, which protects the song as performed by an artist as captured on a master recording. Scott Hervey: Astley’s complaint concedes that he does not have the rights in the composition. Oh, all that publishing money that he’s missing. But it also indicates that he has a partial interest in the copyright in the recording. So apparently, Gravy obtained what’s called a synchronization license to use the copyright in the composition. But he didn’t obtain a copyright to use the master recording. But he didn’t need to do that because he recorded his own performance of the composition. Scott Hervey: A copyright in the recording would only have been necessary if Gravy had actually used part of the existing master recording in his track as a sample, but he didn’t do that, and thus he did not need to get a master use license. For the same reason, Astley’s partial ownership in the copyright of the master recording of Never Going to Give You Up was not infringed because Gravy did not sample the master recording in his song. Apparently, Gravy had, I believe it was, his producer sings that part of the track. But as Josh said, that doesn’t mean that copyright won’t be an issue in this dispute. Josh Escovedo: That’s right, Scott. In fact, the Copyright Act is one of the two key reasons why Yung Gravy is likely to walk away from this lawsuit relatively unscathed. The Copyright Act expressly provides that a state cause of action is preempted if it creates rights that are equivalent to any of the exclusive rights within the general scope of copyright in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright. Josh Escovedo: Of course, express preemption is not necessary for a law to be preempted, as the law also provides for implied conflict preemption, which occurs when a state law poses an obstacle to the accomplishment and execution of the full purpose and objectives of Congress. Here, there’s a strong argument that the Copyright Act was intended to address this exact situation. Josh Escovedo: Section 114(b) of the Copyright Act provides that the rights of an owner of a copyright and a sound recording are limited to the right to duplicate the actual sounds in the recording and the right to prepare derivative works in which those actual sounds are rearranged, remixed, or otherwise altered in sequence or quality. In other words, as the copyright office has published, permission from the copyright owner of a preexisting sound recording is not necessary when interpreting a musical work, regardless of how similar the new record may be to an old recording. Josh Escovedo: This is because under United States copyright law, the exclusive rights in sound recordings do not extend to makin

Getty Images filed a lawsuit against startup tech company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases discussed: Getty Images (US), Inc. v. Stability AI, Inc. Visual Arts v. Goldsmith Show Notes: Josh: Getty Images, a preeminent global visual content creator and leading source for visual content, has filed suit against startup technology company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent or compensation. Getty Images also alleges that Stability removed or altered Getty Images’ copyright management information, such as watermarks, and provided false copyright management information. Accordingly, Getty Images’ complaint includes claims for copyright infringement, providing false copyright management information in violation of 17 U.S.C. section 1202(a), removal or alteration of Copyright Management Information in violation of Section 1202(b), trademark infringement, unfair competition, trademark dilution, and deceptive trade practices under Delaware law. In order to understand the nature of the claim a bit better, it’s important to understand what these parties do. Scott, do you mind providing a brief overview of what the parties do for our listeners? Scott: Sure. Getty Images is a visual media company and a supplier of stock images, editorial photographs, video, and music for businesses and consumers. It has over 477 million assets, and it generates revenue by licensing the right to use these assets to creatives, the media, corporate entities, and general consumers. Many of you have probably seen their images online, complete with the Getty Images watermarks. They’re all over the place. On the other side of the case, we have Stability AI. Stability AI is a startup technology company that has created an image-generating platform called Stable Diffusion that uses AI to generate computer-synthesized images in response to text prompts. There is an open-source version of Stable Diffusion, as well as a revenue-generating version known as DreamStudio. To simplify the description of what Stability AI does, we can refer to the example used by Getty Images in its Complaint. If a user wanted to generate a photo of a cat wearing a scarf, the user would type “cat wearing a scarf” into Stability AI’s platform, and the platform would generate an image of a cat wearing a scarf. Of course, the returned image would not be a real photo of a cat wearing a scarf, it would be a computer-generated version of a cat wearing a scarf. And it is the process of how the AI platform generated that image that is at the heart of this Complaint. Josh: That’s exactly right. In order to generate images in response to prompts submitted to Stability’s platform, the platform relies on various images that Stability utilized to teach its platform what a cat is and what a scarf is. The platform then utilizes those images to generate a synthesized version of what the user has requested, so in the example above, a cat in a scarf. With that understanding, we can discuss the specifics of Getty Images claim. According to Getty Images, Stability copied over 12 million photographs from its portfolio and used those images to train its Stable Diffusion model. Getty also claims that Stability used associated text and metadata, which it contends are also protected as copyrighted expressions to train its model. This, according to Getty Images, constitutes copyright infringement. Scott: Getty explains in its complaint that its assets are highly desirable for use in connection with AI and machine learning because of its high quality and because the assets are accompanied by content-specific, detail captions, and rich metadata. Apparently, Getty Images has licensed millions of digital assets to technology innovators for various purposes related to AI and machine learning. Of course, here, Getty Images alleges that Stability didn’t even attempt to negotiate a license with Getty Images for the content, but instead copied the images without Getty’s consent, in violation of the Getty Images terms of use and allegedly United States Copyright Law. Josh: But according to a variety of AI technology companies, the practice of using copyrighted materials for the purpose of training an artificial intelligence platform constitutes fair use under United States Copyright Law. Whether that’s true or not remains undecided. The rise of technology has created this issue of first impression, so it remains to be seen how the Courts will apply the fair use doctrine in this context, which, as many of you know, permits the use of copyright-protected work, in certain contexts, to promote freedom of expression and for other purposes. In my opinion, this isn’t an issue that will be

The jury hearing Hermes v. Rothschild found the artist’s ‘MetaBirkin’ NFTs constitutes trademark infringement and trademark dilution. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: The jury hearing Hermes v Rothschild found Rothschild liable for trademark infringement and trademark dilution. The matter went to trial after the judge dismissed both Hermes and Rothschild’s motions for summary judgment. Should the court have sent the matter to the jury and what may be the basis for an appeal. We are going to discuss this case on the next installment of the briefing Scott: Mason Rothschild is an artist who has created a series of digital artworks called MetaBirkins. The artist claims that each work comment on Hermès’ “Birkin” handbags. is a unique, fanciful interpretation of a Birkin bag. Rothschild claims that the depiction of each bag as fur covered, Comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags. He has over 100 pieces as part of the collection and has sold over 1.1 million. Josh: Hermes filed suit in January 2022 alleging trademark infringement and trademark dilution. Rothschild moved to dismiss, relying heavily on Rogers v Grimaldi. The court dismissed Rothschild’s motion because the amended complaint included sufficient allegations that Rothschild entirely intended to associate the MetaBirkins mark with the popularity and goodwill of the Hermes Birkin mark rather than intending an artistic association Scott: Shortly thereafter both parties moved for summary judgment. Although the court found that the Hermes’ claims should be analyzed under the Rogers test, the court found that a genuine issue of material fact remained as to whether under the Rogers test Rothchild’s NTFs infringe and/or dilute Hermes’ trademarks. Josh: The Rogers court held that where the defendant’s product is artistic or expressive, the Lanham Act must be interpreted “narrowly in order to avoid suppressing protected speech under the First Amendment.” The two parts of the Rogers test are artistic relevancy and whether the use of the mark is explicitly misleading. Scott: Citing to a 2012 Southern District of NY case, Louis Vuitton Mallatier S.A. v. Warner Bros. Entm’t Inc., The artistic relevance prong of the Rogers test “ensures that the defendant intended an artistic – i.e., non-commercial association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark’s popularity and good will. . Josh: Under Rogers, however, a showing of artistic relevance is easily satisfied: it is met “unless the [use of the mark] has no artistic relevance to the underlying work whatsoever,” and was instead chosen merely “to exploit the publicity value of [the plaintiff’s mark or brand].” Scott: This court, in denying the cross motions for summary judgment said that “there is a genuine factual dispute as to whether Rothschild’s decision to center his work around the Birkin bag stemmed from genuine artistic expression or, rather, from an unlawful intent to cash in on a highly exclusive and uniquely valuable brand name” Josh: In the courts order it cited to Rothschild’s comments to investors that “he doesn’t think people realize how much you can get away with in art by saying ‘in the style of'” and that he was “in the rare position to bully a multi-billion-dollar corporation” as being probative of an intent to exploit. Scott: Right, and this was despite the fact that the court recognized the existence of evidence which suggested that Rothschild viewed the project as a vehicle to comment on the Birkin bag’s influence on modern society. To me it seems that the court may have evaluated the weight or veracity of the artistic relevance proffered by Rothschild. Yes, Hermes offered evidence tending to show that Rothschild true intent was to make money and “capitalize on the hype”. I don’t think the court can do that. In Dillinger, LLC v. Electronic Arts, Inc the 9th circuit said ““not the role of the Court to determine how meaningful the relationship between a trademark and the content of a literary work must be; consistent with Rogers, any connection whatsoever is enough for the Court to determine that the mark’s use meets ‘the appropriately low threshold of minimal artistic relevance.’” Scott: Even where the use of a trademark bears “some artistic relevance” to an underlying artistic work, the First Amendment does not protect such use if it “explicitly misleads as to the source or the content of the work. A work is “explicitly misleading” if it “induces members of the public to believe” that it was created or otherwise authorized by the plaintiff.

Journalist Bob Woodward conducted an audio interview with former President Donald Trump for his book ‘Rage’ and later released the tapes as its own audiobook. Now, Trump is suing for copyright infringement. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.   Cases discussed: TRUMP v. SIMON & SCHUSTER INC et al Falwell v. Penthouse Community for Creative Non-Violence v. Reid Read Scott’s article about this dispute on the IP Law Blog here. Watch this episode on the Weintraub YouTube channel here. Show notes: Scott:Veteran investigative reporter Bob Woodward conducted an audio interview of former President Donald Trump for Woodward’s book, Rage. Woodward later released these recordings as a separate audiobook, Trump claims that Woodward did not have his permission to release these audiotapes as a separate audiobook and sued Woodard and his publisher for, among other claims, copyright infringement. Does Trump have a claim or is his copyright claim “trumped up”. We are going to talk about this. Scott:These are the facts according to Trump’s complaint against Woodward and his publisher, Simon and Schuster. Woodward sought and obtained President Trump’s consent to be recorded for a series of interviews with President Trump and repeatedly informed him that such interviews were for the sole purpose of a book. Woodward interviewed Trump, both in person and over the phone, on numerous occasions during 2019 and 2020. The audiobook, The Trump Tapes, is comprised of 20 audio interviews, one with Trump during his presidential campaign in 2016 and the remaining 20 from the interviews conducted during his term as president. In his complaint, trump states that during the Interviews, he repeatedly stated to Woodward, in the presence of others, that he was agreeing to be recorded for the sole purpose of Woodward being able to write a single book. Josh:The complaint notes a December 30, 2019 interview which, according to Trump, exemplifies that the rights granted were limited. Woodward: On the record for the book, unless you— Trump: For the book only, right? Only for the book. Woodward: The book only, yeah, I’m not— Trump: For the book only, right? So, there’s no— Hogan Gidley, the former White House deputy press secretary then says Right. So, there’s no stories coming out, okay. Trump contends that Woodward did not request to expand the scope of release or furnish a release to use the Interview Sound Recordings for an audiobook or any other derivative work, as is customary in the book publishing and recording industries. Trump alleges that he told Woodward numerous times that the Interviews were to be used by Woodward—and Woodward only—for the sole purpose of accurately quoting President Trump for his forthcoming book “Rage”, and not for any other purpose, including providing, marketing, or selling the Interviews to the public, press, or the media, in any way, shape, or form. Scott:So best practices would have been for Woodward to get a written release from Trump assigning over any rights Trump may have had in the interview. According to the complaint that didn’t happen and according a press release by Woodward responding to the complaint, that seems to be the case. Josh:Based on this Trump claims that he owns the copyright in the entire sound recording or at least Trump’s response to the interview questions. But the failure of Woodward to obtain a written release doesn’t mean that Trump owns the copyright in the recording. Scott:True. The audiobook may likely be considered a joint work. According to the Copyright Office compendium, The Copyright Act defines a joint work as a work “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” A work of authorship is considered a joint work “if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as ‘inseparable or interdependent parts of a unitary whole.’” The key requirement “is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit. Josh:If the audiobook is a joint work, then Trump would own AN INTEREST in the audiobook. According to the Copyright compendium, the authors of a joint work jointly own the copyright in each other’s contribution. In other words, all the authors are “treated generally as tenants in common, with each co-owner having an independent right to use or license the use of a work, subject to a duty of accounting to the other co-owners for any profits. Scott:Interestingly, there is precedent that an interviewee does not hold any copyright in an interview. In the 1981 case of Falwell v. Penthouse Reverend Jerry Falwell gave an interview to two journalists who sold the interview to Penthouse magazi

A Florida bankruptcy court has terminated FTX’s naming rights agreement for an NBA arena. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel, here.  

The recent Reilly v. Wozniak 9th Circuit decision upheld a 1950s ruling that requires a promise to pay to be present for an implied contract to exist. Scott Hervey and Josh Escovedo discuss this case and how the Desny decision applies to idea theft cases in California in this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: S: In a previous episode we discussed recent applications of the 1950 case, Desny v Wilder, which set the ground rules for an idea theft case in California. A recent non-citable 9th Circuit opinion on an idea theft looks at the promise to pay element. We are going to talk about this on the next installment of The Briefing by the IP Law Blog. In California, an idea theft claim is based in large part on the California supreme court case of Desny v Wilder. In Desny, the plaintiff Victor Desny wrote a script depicting the real-life story of Floyd Collins, a boy who made headlines after he was trapped in a cave eighty feet underground. In an effort to market his script, Desny called Billy Wilder, a writer, producer and director at Paramount Pictures. Desny could not get through to Wilder and subsequently stripped his scrip to the bare facts so that Wilder’s secretary could copy it in short-hand over the phone. After reading his synopsis, Desny told Wilder’s secretary that Wilder and Paramount could use the script only if they paid him a reasonable amount for doing so. Shortly thereafter, Wilder created his own movie script mirroring Densy’s. Because Densy’s script was based on historical facts, and because Desny only conveyed the bare minimum of those facts to Wilder’s secretary, both parties conceded for the purpose of the appeal that the synopsis was not sufficiently original to form the basis of a federal copyright claim. The Court, however, held that Densy stated sufficient facts to establish the existence of an implied-in-fact contract between the parties. The California Supreme Court explained that where an idea is furnished by one party to another, a contract sometimes may be implied even in the absence of an express promise to pay; a contract exists where “the circumstances preceding and attending disclosure, together with the conduct of the offeree acting with knowledge of the circumstances, show a promise to pay.” J: In the recent case of Ralph Reilly v. Steve Wozniak, et al, Reilly, an IT professor, claimed that he had a verbal agreement with Wozniak to create a new high-tech online university based on a course design and outline developed by Reilly. Apparently, at least accordingly to Reilly, the two shook hands on a deal, and Reilly developed the course outline. Later Reilly learned that Wozniak had partnered with Southern Career Institute Inc. to create “Woz U.” Reilly claims that he went to two pitch meetings with Wozniak. Wozniak claimed that he never agreed to compensate Reilly and further that he never made any money off of Reilly’s idea because Southern Career Institute reached out to Wozniak to license his name and likeness. S: In an appeal from the district court’s dismissal of Reilly’s contract claim, Reilly argued that a party claiming breach of a contract for conveyance and use of an idea does not need to show that the claimant offered the idea to the defendant for sale, because California law provides a broad equitable basis to find implied-in-fact contracts for the use of ideas. Reilly alleged that it was understood that he and Wozniak would “jointly market,” and be his “partner in exploiting,” Reilly’s idea. The court said that these facts, as alleged by Reilly, do not show an offer for sale but rather the intent to enter into future business relationships. According to the 1987 9th Circuit case of Aliotti v R. Dakin and Co., “no contract may be implied where an idea has been disclosed not to gain compensation for that idea but for the sole purpose of inducing the defendant to enter a future business relationship.” It was in this precise context, the contemplation of a partnership, that Aliotti and Faris held that an idea must be disclosed for sale for an implied-in-fact contract to exist. As such, the 9th Circuit said that the district court did not err in granting summary judgment because there was no genuine dispute of fact as to whether Reilly offered his idea to Wozniak for sale. J: What about the 9th Circuit’s 2011 holding in Montz v Pilgrim, in which the court said that it sees “no meaningful difference between the conditioning of use on payment … and conditioning use on the granting of a partnership interest in the proceeds of the production.” This ruling seems contrary to that. S: The 9th Circuit did say that in Montz, and I can see how readers of the short ruling could be confused. To understand what the 9th Circuit is saying here, you have to go back to the district court’s ruling on the motion for summary judgment. There the district court drilled down on what Reilly was pitching to W

The Supreme Court will bring finality to several IP disputes this year. Scott Hervey and Josh Escovedo provide an overview of the trademark and copyright cases to watch on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Josh: It’s always good to start off the year with an overview of the trademark and copyright cases to watch for the year. This year, we have a couple of cases that we’ve previously discussed on The Briefing when they were on appeal with the circuit courts, but we will now see the Supreme Court bring finality to the issues. Scott: This sounds like great information to me, Josh. Let’s get into it. Josh: We’ll start with Andy Warhol Foundation v. Goldsmith, which we’ve discussed at length on this show. In that case, the Supreme court will decide whether the Andy Warhol Foundation made fair use of a photo of the late artist Prince. In short, the matter at issue will address when a work is sufficiently transformative to qualify for fair use protection under the Copyright Act. In the matter below, the Second Circuit reversed the decision of the District Court and held that the Warhol work was not transformative because it maintained the “essential elements of its source material” and was not “fundamentally different and new.” This is the first time since 1994 that the Supreme Court has addressed fair use in the context of an artistic work. This is one I’ll be looking forward to. Scott: Next, we have Abitron Austria GmbH v. Hetronic International. In that case, US-based remote-control maker Hetronic International sued its former European partners Abitron Austria for trademark infringement. The Defendants in that action argued that since 97% of the sales related to the verdict were “purely foreign” and no one affiliated with the companies was based in the United States, Hetronic International needed to pursue the action abroad. Of course, Hetronic disagrees and contends that trademark law under the Lanham Act extends beyond U.S. Boards. This case should bring clarity to an issue that is constantly disputed in sizable Lanham Act cases—the materiality of foreign sales. For that reason, TM practitioners will certainly be keeping an eye on this one. Josh: Next up is my favorite case of the year. Jack Daniel’s v. VIP Products. As many of you know, this is the Ninth Circuit dispute arising out of VIP Products creation of a parodic dog toy styled like a Jack Daniel’s bottle but called Bad Spaniels. The toy is filled with comedic references related to dogs, but it’s no laughing matter to Jack Daniel’s. The case will determine the proper balance between trademark rights and free speech. The district court and the Ninth Circuit found that VIP’s use was protected by the First Amendment. Now, the Supreme Court will determine whether the Ninth Circuit made the right decision, and will provide some guidance and hopefully clarity on how these competing interests must be balanced. As we’ve discussed in the past, there is a difference in opinion on how these matters should be addressed and given the low bar for artistic relevance, it is imperative that the Court provide guidance, as these disputes will continue to arise. Scott: We’re definitely looking forward to that one. Next up, we have Genius v. Google. This action is present before the Supreme Court, but the Court has not yet granted cert. In this case, Genius sued Google for breach of contract over music transcriptions. In the petition for cert, Genius argued that the Second Circuit and the District Court wrongfully found that a preemption clause in the Copyright Act precluded its breach claim against Google and LyricFind for allegedly stealing song lyrics from its site for Google’s search result. The Second Circuit’s decision, affirming the decision below, held that Genius hadn’t shown that its claims are “qualitatively different” from a copyright claim on lyrics, which notably it didn’t hold the copyright to. The petition states that the Court must clarify whether the Copyright Act’s preemption clause permits a plaintiff to use “state-law contract remedies to enforce a promise not to copy and use its content.” The Supreme Court has requested the Solicitor General’s opinion on whether copyright law preempts the breach of contract claim. All in all, this sounds like pretty interesting case as well. Josh: It sure does. And finally, we have Green v. DOJ. In that case, two computer scientists have challenged the Digital Millennium Copyright Act’s ban on circumventing digital locks on copyrighted works. The engineers filed suit against the federal government seeking to enjoin enforcement of the DMCA’s anti-trafficking and anti-circumvention provisions. The district court refused and the DC Circuit affirmed the decision below. Apparently, the DC Circuit also commented that it lacks jurisdiction over claims of facial unconstitutionality on First Amendment grounds because the District Court

The start of a new year is a good opportunity for companies to review and take stock of their intellectual property assets. Scott Hervey and Josh Escovedo talk about the importance of this review on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: As 2023 commences, it’s time for companies to take review and take stock of their intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property, and those companies that understand the value of intellectual property and take active steps to secure and protect those assets. We are going to talk about this on this next installment of the Briefing by the IP Law Blog Scott: Intellectual property is a company asset, just like inventory. No CEO or CFO would think of running a company where they didn’t know the extent of company inventory. Likewise, it makes no sense for a company not to have a firm understanding of all of its potential intellectual property assets. Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks, or registering copyrights, a yearly review can prove beneficial. Josh: Understanding the extent of a company’s IP holdings usually start with what’s known to the company, such as all registered copyrights, trademarks or patents, domestic and foreign. After compiling a list of those IP assets, the next step would be to review what the company is using and compare that to the list of registered or pending IP. For trademarks, a good place to start is the company’s marketing and promotional materials, website, mobile app, and social media. If these materials show use of trademarks, logos, or slogans that are not already the subject of a trademark registration or application, then these marks should be cleared for use to prevent unintended liabilities, and they should be considered for possible registration. Scott: Don’t overlook company social media accounts, domain names, and toll-free numbers, which may also serve as potential trademarks. And be sure to confirm that all domain names and social media accounts are registered to the company; you would be surprised at how many times a domain name or social media account is registered to an individual company employee and not the company itself. Also, if the company has changed the graphic user interface to any of its technology products or has changed product packaging, point of sale displays, or product design, these may also be protectable trade dress. Josh: When looking into company assets protectable under the federal copyright laws, one should check the company’s website, marketing materials, manuals, YouTube videos, podcasts, posted content on Instagram, TikTok and the like, photos, software, blog posts, articles, white papers, etc. Although the cost benefit analysis of securing protection may result in a conclusion that registration does not economically make sense for every single piece of content, the company should at least maintain inventory of its copyrightable works. Scott: A company should always be aware of any new inventions under development, and its good practice to investigate the status of any inventions developed by company employees during the past year. Such inventions may be protectable under federal patent laws. An inventor must secure a patent application within a very short period of time in order to prevent the work from falling into the public domain. Companies that routinely produce new inventions should put into place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public. Josh: In addition, a company should take stock of those items that it considers proprietary trade secrets. Trade secrets are items not generally known by the public but have economical value and are the subject of reasonable precautions to maintain their secrecy. In general, trade secrets have no duration of protectability and there is not a method for registering a trade secret in the United States. Scott: Items that may be protected by state trade secret laws include software source code and related documentation; customer lists, employee knowledge, training and experience; proprietary terminologies, definitions and formulas; specially developed customer information; sales practices; negative information such as negative results from research and development projects; and customer and consumer surveys. Each of the above could constitute proprietary trade secrets depending upon whether its owner took reasonable steps to maintain its trade secret status. Scott: A special note about customer data. In addition to regularly reviewing IP assets, a company should regularly make sure that its privacy and data use policies comport with the manner in which it collects and uses customer and employee data. In the US,

Trademarks perform a number of important functions. Scott Hervey and Josh Escovedo discuss the spectrum of trademark strength in this episode of The Briefing by the IP Law Blog. Watch this episode here.   Show Notes: Scott: Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog Scott: Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001. Josh: In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share. Scott: Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse. Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo. A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell. As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark. Scott: And while it’s true that a trademark can be anything, not everything can and should be a trademark. Josh: That’s right Scott. There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable. Scott: Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individuals consent Also, marks which consist or comprise of a portrait of a deceased president of the United States are not registrable during the life of the president’s widow except by written consent of the widow In addition, certain organizations, by acts of Congress, have been granted exclusive rights to use certain marks. For example, the United States Olympic Committee has been granted exclusive right to use a number of “Olympic” symbols, marks and terms Josh: Marks which describe the intended purpose, function or use of the goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are really not the best choice for a trademark. This type of mark is considered merely descriptive and is not registerable on the principal register absent establishing secondary meaning. Scott: Its iron Josh how often companies gravitate toward a descriptive mark. The penchant for a descriptive mark was explained to me by a client – they work because the consumer knows exactly what they are getting. That’s useful in the short term but does nothing for brand building. Josh: Here is a few examples of descriptive marks – NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks. The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive. Scott: The major reasons for not protecting marks that are merely descriptive is to

An 11th Circuit Opinion in the ‘Floribama Shore’ trademark case provides guidance on establishing artistic relevance under the Rogers Test. Scott Hervey and Josh Escovedo talk about this case in this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Scott: Despite challenges to the application of the Rogers test outside of traditional artistic works, the Rogers test remains a valuable defense to TV and movie producers sued for trademark infringement. Establishing that the producer’s use of the allegedly infringing mark has artistic relevance is one of the two factors of Rogers and a recent 11th Circuit opinion cementing MTV’s win over the use of Floribama Shore as the title of a docu-series shows provides guidance on steps producers should take in order to establish the existence of artistic relevance. Scott: MTV FLORIBMA SHORE is the title of an MTV docu-series modeled after the JERSEY SHORE franchise. The series purports to celebrate youth culture, profiling a summer of fun for eight young adults in the Florida panhandle. The Flora-Bama Lounge is a restaurant and marina facility located on the Florida Alabama border that has been in operation since 1964. The owners of the lounge were not happy with MTV’s use of FLORIBAMA as the title of its series, especially after MTV held a few casting sessions at the Flora Bama Lounge, and sued for trademark infringement. Josh: In the district court case MTV moved for summary judgment which was granted. The owners of the Flora-Bama lounge appealed to the 11th circuit. Scott: In the 9th Circuit (as well as the 2nd, 5th, 6th and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e, use of a brand within a movie, TV series, video game, etc., including as part of the title of an expressive work is the 2nd circuit’s test from the 1989 case of Rogers v. Grimaldi. The Rogers test was adopted by the 9th Circuit in Mattel inc v MCA Records (better known as the “Barbie Girl” case). Under the Rogers test, the use of a third-party mark in an expressive work does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Under the Rogers test, the first inquiry is whether the use of the third-party mark has “some artistic relevance”. The threshold for this test is extremely low; basically, if the level of artistic relevance is more than zero, this is satisfactory. If there is greater than zero artistic relevance in the use of the third-party mark, the next analysis is whether the use of the third-party mark explicitly misleads as to the source or content of the work. Josh: In its opinion the court goes into great detail over how MTV eventually chose the title to its series. MTV wanted to build out the Jersey Shore franchise like the Real Housewives, by establishing multiple series in different locations. MTV began to develop a seventh Shore series, this one focused on Southern beach culture Scott: MTV commissioned a survey of 300 young people familiar with the region to measure awareness and perceptions of the culture and nightlife in various beach towns in the “gulf Shore” region spanning from Biloxi, Mississippi, to Panama City Beach, Florida. The report noted the term “Florabama” to describe the region. Of the 300 people surveyed, about 34% had heard of the term “Flora-bama,” with half of the 34% identifying it as the bar and the other half identifying it as the region. The filming location for the series was Panama City Beach, 100 miles from the lounge. An MTV executive testified that the selection of MTV ‘Floribama Shore’ was the title of the series was driven by finding a title, like Jersey Shore, that would “define the subculture” featured in the series, that “Floribama” offered “a very distinct sense of what part of the country and subculture that is.” This executive ALSO testified that because Florida has “multiple subcultures,” a name like “Florida Shore” would not have sufficiently identified the Gulf Coast setting. And “Florida Shore,” of course, would include Miami, which McCarthy noted “has its own sort of codes.” Josh: The court also noted that MTV wanted a Jerseyesque type of show and Floribama screamed louder than Gulf Shore. Scott: Even though the bar for artistic relevance is low, I still think it’s a good idea for producers to go through the additional step to actually lay the groundwork for establishing artistic relevance at the time the producer makes its choice to use a potentially infringing mark

The Supreme Court granted Jack Daniel’s petition for certiorari and will hear the trademark infringement case involving a parody dog chew toy that resembles the Jack Daniel’s Whiskey Bottle. Scott Hervey and Josh Escovedo discuss this latest development in this episode of The Briefing by the IP Law Blog. Watch this episode here.  

The heirs of the author who wrote an article upon which “Top Gun” is based, claims the film’s sequel is an infringing derivative work. Paramount has since filed a motion to dismiss the case. Scott Hervey and Josh Escovedo discuss this on The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Scott: We previously reported on the copyright lawsuit filed by the heirs of the author who wrote an article upon which Top Gun is based alleging that “Top Gun Maverick” is an infringing derivative work. Paramount recently filed a motion to dismiss, arguing that the sequel to the 1986 motion picture, Top Gun, does not infringe the copyright in Ehud Yonay’s magazine article. The District Court denied Paramount’s motion to dismiss. We are going to talk about that on this installment of the Briefing…by the IP law blog. Scott: In May 1983, California magazine published the article Top Guns, by Ehud Yonay. This article was an inside look at the real Navy Fighter Weapons School Top Gun based out of Miramar California. When the article was published, it was optioned and in the credits for Top Gun Yonay is credited on the original movie as a writer of the magazine article. On January 23, 2018, the Yonays properly availed themselves of their right to recover the copyright to this article by sending Paramount a statutory notice of termination under Copyright Act, and then filing it with the Copyright Office.as we have discussed previously on this program, subject to the satisfaction of certain conditions, Section 203 of the Copyright Act permits authors or their successors to terminate copyright assignments and licenses that were made on or after January 1, 1978. Upon termination, all rights in the work that were covered by the grant revert to the author, however any derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after it is terminated, but this privilege does not extend to the preparation of other derivative works after termination. Josh: Paramount filed a motion to dismiss, arguing that that the works are not substantially similar because the Yonay article is a work of unprotectable fact. In order to state a claim for infringement a plaintiff must show substantial similarity between the works’ protected elements. Determining whether works are substantially similar involves a two-part analysis consisting of the ‘extrinsic test’ and the ‘intrinsic test.’” The extrinsic test “assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, Scott: In its motion to dismiss Paramount argued that in applying the extrinsic test and by filtering out the elements that are not protected under copyright law – that is facts, ideas, scenes faire (which are situations and incidents that flow necessarily or naturally from a basic plot premise) and stock elements – the two works are not substantially similar. In its motion to dismiss Paramount argues that all elements that are alleged to be similar – the history and operations of the “Top Gun” academy; that the pilots pull off risky aerial maneuvers, that manner of combat training and the tactical discussions the pilots have; descriptions and depictions of fighter jets, including their exorbitant cost; pilots doing push-up exercises; pilots’ use of “call signs” as nicknames and depictions of camaraderie amongst pilots, including bar excursions and games —are reported in the Article as factual. Josh: As we predicted, it seems that Yonay’s counsel were ready for Paramount and had evasive maneuvers ready to go. In reading the district court’s denial of Paramount’s motion to dismiss, the key argument which resonated with the court was, essentially, that it would be contrary to 9th Circuit precedent to dismiss Yonay’s case at such an early stage. Because the analytical dissection required to separate protectable from non-protectable elements…which also generally involves expert testimony…. and thereafter the determination of substantial similarity between protected elements of works are “usually extremely close issues of fact, the Ninth Circuit generally disfavors dismissals on the ground of substantial similarity at the Rule 12(b)(6) stage., Scott: In its opposition to Paramount’s motion to dismiss, the Yonay’s argue that but for Ehud Yonay’s literary efforts and his story’s evocative prose and narrative, Top Gun and its sequel would not exist. The Yonay’s argue that if Paramount was only interested in facts about the Miramar Naval Air Station, it would have drawn inspiration from the Senate Report Paramount equated Yonay’s article to. The Yonays argue that it was the expressive imagery, startling action, character traits, and themes contained within the original article that were the reason why Paramount optioned the article in the first place. The Yonay’s point to a list of more than seventy (70) all

The U.S. Supreme Court will weigh in on the reach of the Lanham Act and whether it can protect against the infringement of a U.S. trademark in a foreign territory. Scott Hervey and Josh Escovedo discuss this case in this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Scott: What’s the reach of the Lanham act? Can it protect against the infringement of a U.S. trademark in a foreign territory? The U.S. Supreme Court is taking up the appeal of a 10th Cir case of Abitron Austria GmbH v. Hetronic International, Inc. to hopefully shed light on the matter. This is what we are talking about on this installment of the Briefing by the IP Law Blog. Scott: Here are the underlying facts of Abitron Austria GmbH v. Hetronic International, Inc. Hetronic International, Inc., a U.S. company, manufactures radio remote controls—used to remotely operate heavy-duty construction equipment. The Defendants distributed Hetronic’s Products in Europe. The distributor relationship deteriorated, and the Defendants began manufacturing their own products—identical to Hetronic’s—and selling them under Hetronic. Brand in Europe. Hetronic sued Abitron in the U.S., and a jury in the Western District of Oklahoma awarded Hetronic over $100 million in damages, most of which related to Defendants’ trademark infringement relating to sales outside of the US. Then on Hetronic’s motion, the district court entered a worldwide injunction barring Defendants from selling their infringing products. On appeal to the 10th Circuit, the defendants insist that the Lanham Act’s reach doesn’t extend to their conduct, which generally involved foreign defendants making sales to foreign consumers. Josh: The Lanham Act governs federal trademark and unfair competition disputes. It subjects to liability 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. The sole Supreme Court case on the exterritorial application of the Lanham Act is the 70-year-old case of Steele v. Bulova Watch Co., That case involved a Lanham Act claim brought by the Bulova Watch Company, against Sidney Steele, a U.S. citizen residing in Texas. Using component parts he had procured from the United States and Switzerland, Steele 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 ‘Bulovas’ which upon inspection often turned out not to be products of that company. The Supreme Court held that Steele’s activities were covered by the Lanham Act. The fact that [Steele] affixed the mark ‘Bulova’ in Mexico City rather than in the US was not determinative..” The Court explained that Steele’s “operations and their effects” were “not confined within the territorial limits of” Mexico. Steele had bought components for his watches in the United States. And Steele’s watches filtered through the Mexican border into the US,” and those “competing goods could well reflect adversely” on Bulova’s “trade reputation in markets cultivated by advertising here as well as abroad.”. The Court further noted that because Steele did not have trademark rights to the “Bulova” mark under Mexican law, applying the Lanham Act to his conduct would not create any conflict with foreign law. Scott: Presently a number of federal circuits have different frameworks for the exterritorial application of the Lanham Act. The 10th circuit ended up adopting the framework from the First Circuit’s McBee v. Delica Co. Under McBee, where the case is about the “foreign activities of foreign defendants,” the Lanham Act applies “only if the complained-of activities have a substantial effect on [U.S.] commerce, viewed in light of the purposes of the Lanham Act.” The 10th Circuit also noted, in adopting this test, that if a plaintiff successfully shows that a foreign defendant’s conduct has had a substantial effect on U.S. commerce, courts should also consider whether the extraterritorial application of the Lanham Act would create a conflict with trademark rights established under the relevant foreign law. Josh: The lower court found that the defendant’s conduct had a substantial effect on U.S. commerce. Scott: Right. The district court noted that Hetronic presented more than enough evidence to show that the defendants’ foreign infringing conduct had a substantial effect on U.S. commerce,” The district court that “Besides the millions of euros worth of infringing products that made their way into the United States after initially being sold abroad, defendants

In this 100th episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo talk about a company founded by Jack Nicklaus that was awarded a preliminary injunction enjoining him from using his name, image, & likeness in commercial endorsement deals. Watch this episode here. Show Notes: Scott: A company founded by Jack Nicklaus, Nicklaus Companies, LLC has been awarded a preliminary injunction which enjoins Jack Nicklaus from using his name, image and likeness in commercial endorsement deals. The judge who entered the ruling called it awkward, but its an interesting look at the interplay between non-compete clauses and the transfer of name, image and likeness rights. We are going to discuss this case on this installment of the briefing by the IP law blog. Scott: In 2007, Jack Nicklaus and GBI Investors, a company owned and controlled by Jack Nicklaus, entered into an agreement with Nicklaus Companies, LLC. a company formed by real estate magnate Howard Milstein, whereby for $145m Nicklaus Companies purchased certain assets of GBI which included substantial portfolio of trademark registrations and applications related to Mr. Nicklaus’ name and signature and “Golden Bear” nickname in the United States and various other countries around the world – more than 600 in the US and 50 other countries. Also included in the purchase was the exclusive right to the golf course design services rendered by GBI and marketing, promotional and branding businesses of GBI, which included the right to use Nicklaus’s name, image and likeness. The complaint alleges that Nicklaus Companies because the sole owner of and the rights to use all of the intellectual property related to Jack Nicklaus. GBI and Mr. Nicklaus became members of the Company, and Mr. Nicklaus became a manager. Josh: In 2017 Jack Nicklaus retired from his day to day involvement with Nicklaus Companies but, according to the complaint, he still provided services on Nicklaus Companies or its subsidiaries when required. However, the complaint alleges that after Jack Nicklaus retired he repeatedly participated in deals for the use of his name, likeness and trademarks, including personal endorsements outside of the Nicklaus Companies which included Jack Nicklaus being paid to promote a European Tour golf tournament, which included the tournament’s right to use certain Nicklaus IP. The complaint also alleges that Jack Nicklaus attempted to steer a Nicklaus company opportunity for a marketing and endorsement relationship to a one-off personal appearance deal for his own personal benefit to the detriment of the Nicklaus Companies. The complaint also alleges that Nicklaus is directly competing with the Nicklaus Companies for golf course design projects and he is personally negotiating to renew his endorsement deal with Rolex. Scott: In the plaintiff’s motion for the temporary restraining order, the plaintiff argues that the 2007 transaction resulted in the purchase of all golf course design services branded and identified under the Nicklaus, Jack Nicklaus and Jack Nicklaus Signature brands, the various marketing, promotional, and branding activities involving the use and licensing of Jack Nicklaus’ persona endorsements, other commercial rights to publicity, and intellectual property related to his identity and history as a recognizable public figure. The transaction documents included a purchase agreement whereby GBI transferred the assets, rights and business interests to Nicklaus Companies, a non-compete agreement that Jack Nicklaus signed personally which restricted him from competing with the plaintiff, including providing his personal services as a spokesman or authorize the promotional use of his name or likeness for the business, products or services in competition with Nicklaus Companies for as long as GBI retains an ownership interest in the company, sufficient to elect at least two (2} members of the Board of Managers, but in no event for a period of less than ten (10) years after the date of the Closing” Josh: In opposition to the TRO, Jack Nicklaus argued that he is free to conduct his own business because the non-compete agreement he signed in connection with the 2007 transaction expired when he left Nicklaus Companies in 2017 and most certainly when GBI transferred all of its interests to in Nicklaus Companies back to the company in August 2022…which transfer the company contends is not valid. Nicklaus argued that it was GBI that sold assets and businesses to the Plaintiffs, not him personally and that he was only bound by the non-compete. Scott: The crux of Jack Nicklaus’ argument was laid out by his counsel in the oral arguments on the TRO motion…that Jack Nicklaus personally never transferred any rights to the Nicklaus Companies personally, that GBI transferred whatever rights it had to the Nicklaus Companies and there was no transfer of Mr. Nicklaus’ name, image, and likeness to GBI before GBI made the transfer to the Nicklaus

Adidas, which manufactures and sells the wildly popular “Yeezy” line of shoes in partnership with rapper Kanye West, recently terminated the relationship after anti-Semitic statements by the star. In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the trademark and contract issues that Adidas is navigating with shoe designs and future related designs. Watch the video here. Read the Adidas press release here. Show notes: Josh: Following its split from rapper Kanye West, Adidas has announced that it owns the designs formerly associated with the Yeezy mark. We will be discussing how and why that is possible on this installment of the Briefing by the IP Law Blog. Following a personal meltdown that included various antisemitic statements, Kanye West has been abandoned by a variety of his partners and representatives. Among those partners is Adidas, the company that makes and distributes his highly sought after Yeezy shoes. And when I say highly sought after, I mean that these shoes are nearly impossible to get for retail price. If you want a pair, unless you have a connection, you probably have to buy them on the aftermarket. Nonetheless, while the shoe represents a golden ticket for Adidas, Kanye West’s behavior left the company with no choice but to cut ties and move on. But this left a lot of people wondering, would Adidas continue to sell its holy grail of shoes? And more importantly, could Adidas continue to sell the shoes? Scott: That really comes down to a couple of issues. First, can Adidas continue to market shoes in connection with the Yeezy trademark, assuming that it wanted to? The answer to that question is no. That trademark is owned by Kanye West, and presumably, when Adidas terminated its relationship with West, it consequently terminated its license to utilize West’s intellectual property. Josh: That’s right. And the second issue is whether Adidas can continue to use past shoe designs, shoe designs that have been created but not yet released, or shoe designs similar to those that consumers have come to expect from the Yeezy brand. Now that would generally depend on a couple of things. First, it would depend on who is actually coming up with the designs. If Kanye West were the party who came up with the designs and he had licensed the right to use those designs to Adidas, it is possible that Adidas would no longer be able to exploit the intellectual property. In fact, Kanye West was responsible for many, if not all, of the designs. But, that’s where the second thing comes into play. Irrespective of who created the designs, if the contract between Kanye West and Adidas clearly stated that Adidas is the owner of the designs, that would be dispositive. Scott: And it turns out that’s the case. Adidas has come out and said that its contract with West provides that Adidas is the owner of the shoe designs. Accordingly, while Adidas cannot use the Yeezy trademark, and it probably wouldn’t want to as the mark has been significantly tarnished over the last few weeks, Adidas is free to continue selling prior designs and releasing new designs of a similar spirit, the latter of which it would probably free to do anyway. Josh: I suppose this is a prime example of one of the reasons why a company responsible for distribution of a product would want to maintain rights to the designs. It is an extreme example, but it is an example nonetheless. If Adidas had not reserved the rights to the design, and it were not the creator, it would be in a position where it would be unable to continue marketing its wildly successful product. Instead, because of prudent contracting, Adidas is able to do so. Scott: That’s right. Still, Adidas has said that it will cease production of all Yeezy-related products for the time being. To borrow a term from Disney, I suspect they’ll be putting these back in the Vault and bringing them out at an opportune moment. If these shoes were hard to get when they were being released on a regular basis, I would imagine they are going to be even harder to get when they are resurrected. This has been very interesting, Josh. Thanks for sharing. Josh: Thanks, Scott.

Vogue Magazine is suing 21 Savage and Drake after they created mock Vogue Magazines to market their new album. Scott Hervey and Josh Escovedo discuss the dispute on this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Josh: Conde Nast, the publisher of Vogue magazine, filed a Complaint against Drake and 21 Savage in the United States District Court for the Southern District of New York, alleging claims under the Lanham Act concerning Drake and 21 Savage’s promotion of their recent collaboration album Her Loss, which was released on November 4. In the Complaint, Conde Nast alleges that Drake and 21 Savage ran a deceptive campaign and utilized Vogue’s reputation by creating fake Vogue magazine covers to promote the album. According to the Complaint, they even thank editor-in-chief Anna Wintour for her support. Scott: The complaint also includes allegations that Drake and 21 Savage misled the public into thinking the fictitious Vogue covers were from a real issue that would have been released on October 31. Conde Nast has been clear that none of this promotion was authorized by the company, especially not the alleged distribution of copies throughout North America, or the placement of so-called counterfeit covers along streets and buildings in various cities. The Complaint also takes issues with the fact that Drake and 21 Savage have posted similar content to more than 135 million social media followers. Josh: One of Drake’s posts featuring the faux Vogue ad included a caption that states, “Me and my brother on newsstands tomorrow!! Thanks, @voguemagazine and Anna Wintour for the love and support on this historic moment. ‘Her Loss’ Nov. 4th.” Conde Nast was obviously displeased since it has been using the mark in commerce since at least 1892, and in connection with digital advertising since 1998. It is, without question, one of the most well-known fashion publications in the world. Surely it is that reputation that led to Drake and 21 Savage using this idea for promotion. Scott: According to Conde Nast, the campaign has created significant confusion among the public, as well as the media, with several media companies actually believing that the cover feature was real. As a result, they even ran stories about the artists landing the cover of Vogue for the album. Josh: Making matters even more significant, Drake and 21 Savage’s public relations team sent emails announcing that copies of the putative Vogue magazine would be handed out in specific countries, and then, according to the Complaint, they proceeded to distribute a near-exact reproduction of the October Vogue magazine, including Vogue’s copyrighted content, with a Drake and 21 Savage cover in those areas. There were, of course, some pages that had been changed to include superimposed promotions for Her Loss on the pages or to include photos of Drake. Scott: According to Conde Nast, its attorneys reached out to the Defendants and sent cease-and-desist demands prior to filing suit, but its warnings were not heeded. The Complaint includes claims for trademark infringement, counterfeiting, false designation of origin, unfair competition, trademark dilution, false advertisement, and other violations of NY law. Josh: Most recently, Conde Nast moved for and obtained a temporary restraining order precluding Drake and 21 Savage from using fake Vogue maagzines and covers or using the likeness of its editor-in-chief to promote Her Loss, with the Court expressly finding Conde Nast has a likelihood of success on the merits of its claims. The order stated that the rappers are “Confusing consumers about the origin, sponsorship, and approval of the bogus Vogue cover.” The Court also directed Drake and 21 Savage to appear before the Court on November 22, 2022 to show cause as to why the restraining order should not convert to a preliminary injunction for the duration of the case. That will be Drake and 21 Savage’s opportunity to respond to Conde Nast’s contention. We will certainly want to keep an eye on that, but before we wrap up, do you think the Court is headed the right direction with this Scott?

A law firm has filed a trademark infringement lawsuit against its namesake. Scott Hervey and Josh Escovedo discuss this case in this installment of The Briefing by the IP Law Blog. Watch this episode here.   Show Notes: Scott: Lewis Brisbois Bisgaard & Smith, LLP is suing Lewis Brisbois Bisgaard & Smith, LLP in a Texas federal court for trademark infringement. No, this is not law firm schizophrenia. But it is a weird case that may exemplify the strength of common law trademark rights. Scott: Lewis Brisbois Bisgaard & Smith is a well-regarded national law firm with 1,600 lawyers across many states, including Texas. Since 2002 Lewis Brisbois has operated under the business name Lewis Brisbois Bisgaard & Smith, and since 2009 the law firm has operated an office in Texas. The firm also owned a registered trademark for Lewis Brisbois Bisgaard & Smith, but apparently, that trademark registration went abandoned in 2020. This fact is a plot point later on in our story. Josh: So who is this other Lewis Brisbois Bisgaard & Smith. Scott: Yes, it’s time for this weird twist. Michael Bitgood and Richard JonesMay 26, 2022, Bitgood filed a registration for a domestic limited liability partnership, “Lewis Brisbois Bisgaard & Smith, LLP” in the Office of the Secretary of State of Texas. Bitgood listed the services as mediation and related services. They then filed an assumed name certificate in the Office of the Secretary of State identifying the Bitgood Entity’s assumed name as “Lewis Brisbois Bisgaard & Smith.” I am sure you are asking why would Bigtood and Jones do this. Well, it seems that the law firm represented some third parties to defend an unrelated case where the plaintiffs were Bitgood and Jones. After Bitgood and Jones formed their entity, they amended the complaint and added their new entity, Lewis Brisbois Bisgaard & Smith, as a plaintiff and then added the law firm and the law firm’s lawyer handling this other case as defendants. Against the law firm and its lawyer, Bitgood, Jones and the Bitgood entity…the other Lewis Brisbois Bisgaard & Smith…allege that they are using the Bitgood Entities name in an illegal and unauthorized manner reasonably calculated to create mass confusion and damage. Josh: I think my head is about to explode. Let me see if I get this right. Bitgood and Jones sued some third parties. Lewis Brisbois Bisgaard & Smith represent these third parties in the lawsuit. Bitgood and Jones, then…I assume thinking it provides them with some type of strategic leverage in their underlying lawsuit, form an entity in Texas, Lewis Brisbois Bisgaard & Smith, LLP, they then add that entity as a plaintiff in their first lawsuit and add the law firm and lawyer as defendants claiming, essentially, trademark infringement.   Scott: You have it correct. I am sure you are asking yourself, why would they do that? Well, there was a clue to that in Bitgood and Jones’ amended complaint. They claimed that the law firm failed to renew their filing with the Texas Secretary of State, which is why they were able to file their incorporation. This seems to be part of some plan to cause the law firm to be unable to represent the defendants in the underlying lawsuit. Josh: So going back to your lead-in for this story, I assume the law firm filed a trademark infringement lawsuit. Scott: That’s right, they did. And Bitgood and Jones filed a motion to dismiss. Apparently Bitgood and Jones thought they hit the pot of gold at the end of the rainbow when they discovered that the law firm’s federal trademark registration went abandoned on July 10, 2020. But, as you know, Josh, that’s not the end of the story. Josh: No, it isn’t. Bitgood and Jones failed to consider the common law trademark rights the law firm has in its name. Scott: Trademark rights stem not from the registration of a mark but from actual use in commerce. While some civil law nations follow the “first to file” rule, which grants senior rights to the first party to win the race to the trademark office, the United States follows the rule that ownership and priority go to the party who was first to use. Common law rights are defined by the scope of actual use and the geographical territory in which the mark was used. While a merchant may acquire common law trademark rights in the name of a brick-and-mortar business, that interest is limited to the geographic area in which the merchant actually does business. As such, another merchant in another town can use the exact same name for a similar business and not infringe the common law rights of the first merchant if the first merchant does not advertise or do business in that town. Josh: This case raises two great takeaways as I see it. The first is that the Lewis Brisbois federal trademark – which is a composite mark- probably should not have gone abandoned without a substitute application… preferably a plain word mark. Being filed prior. The composite mark

Cardi B was cleared of liability in an action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. Scott Hervey and Josh Escovedo discuss this in this installment of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Josh: Rap star Cardi B has been cleared of liability by a California jury in the Central District in the action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: On October 21, 2022, a federal court jury found Cardi B was not liable for misappropriation of a man’s likeness by using his back tattoo on the cover of her 2016 Gangsta Bitch Music Vol. 1 mixtape to make it look as if he were performing a sex act on Cardi. This all began in 2017, when Kevin Michael Brophy, a tattoo model and marketing manager for surf and skate company RVCA, filed suit against Cardi over the aforementioned mixtape cover after sending a cease-and-desist letter that went unanswered. According to Brophy, the tiger and serpent tattoo on the model on the cover resembles his own and constitutes a misappropriation of his likeness under Civil Code section 3344 and false light invasion of privacy. Brophy claims that he was angry because “It looks like I’m giving oral sex to somebody that’s not my wife, or somebody that’s not my partner, and an image that I never signed off on, ever. Being a father of two and a devoted husband and a man of faith as well, this goes against everything that I stand ford, and I would never ever sign off on something like this.” Scott: Brophy claims that he suffered shame, embarrassment, and humiliation after learning that portions of his tiger back tattoo had been overlaid onto the back of the black model featured on the cover of Cardi’s 2016 mixtape. For those reasons, he sought compensatory, punitive, and disgorgement of profits from the mixtape. Josh: But irrespective of the claimed damages, the jury ultimately concluded that Cardi B was not liable to Brophy. This came after hearing testimony from Brophy and his wife and his alleged humiliation and concerns, as well as testimony from Cardi and her former manager who stated that the model on the mixtape cover was not Brophy and that the image had been substantially altered, giving rise to First Amendment protection under the transformative use doctrine. The jury also hear from the graphic designer who edited the image. He said that he found the back tattoo somewhere on the internet after searching for a backpiece tattoo.” He also claimed that he made several changes to it, removing certain pieces, color correcting, and rearranging other parts of the tattoo before overlaying the image onto the model’s back. Scott: During closing argument, Plaintiff’s counsel argued that the defense was continuously trying to explain how the tattoo was transformed, yet they denied using Brophy’s likeness. According to Plaintiff’ counsel, if they weren’t using Brophy’s likeness, then they wouldn’t have had to argue about how they had changed it. Plaintiff’s counsel argued that Brophy’s likeness was material to the vision for the mixtape and that Brophy’s back tattoo is what makes Cardi look strong and in control. Of course, the jury obviously rejected these arguments, ultimately finding in favor of Cardi. Josh: That’s right. But here’s a question for you Scott, even though this is taking place in the Ninth Circuit, if the law from the recent Illinois District Court case involving Randy Orton applied, would the tattoo artist have a claim against Cardi for copyright infringement? I know we would have to evaluate the merits of Cardi’s fair-use defense in greater detail, but let’s assume for the sake of the discussion that it were not fair use. Would Brophy’s tattoo artist have a claim even though it seems Brophy himself would not? Josh: I don’t think the Court’s decision in the Orton matter was correct, and I think it will be reversed and remanded by the Seventh Circuit, but IF it applied, I think Brophy’s tattoo artist would have potentially had a claim against Cardi. Luckily for Cardi, it was Brophy bringing the claim.

Hermès is suing an artist for trademark infringement over his series of digital artworks called MetaBirkins. Scott Hervey and Josh Escovedo discuss the case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss developments in the trademark dispute between NBA star Luka Doncic and his mother. Watch this episode here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark dispute between NBA Star Luka Doncic and his mother. Watch this episode here.

As Scott Hervey previously wrote on the IP Law Blog, a tattoo artist won a copyright lawsuit against a video game publisher for showcasing an athlete with their tattoo design in a game. Scott and Josh Escovedo discuss the case on this episode of The Briefing. Watch this episode here. Read Scott’s article here. Show Notes: Scott: A jury in the district court for the southern district of Illinois in the case of Alexander v. Take-Two Interactive Software found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take Two Interactive infringed the tattoo artist’s copyright in the tattoos. I think the trial court, and the court of appeals that rejected Take Two’s defenses- defenses that won the day in the US District Court for the Southern District of NY in Solid Oak Sketches v 2k Games-got it all wrong and this decision could have wide-ranging implications. We are going to talk about this on the next installment of the briefing by the IP law blog. Scott: So here is the history of this case. Tattoo artist Catherine Alexander sued Take-Two and 2K Games in the U.S. District Court for the Southern District of Illinois for depicting World Wrestling Entertainment wrestler Randy Orton in the video game WWE 2K. On a motion for summary judgment, Take 2 made the same arguments that garnered it a win previously Solid Oak Sketches v 2k Games – (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of WWE 2K Josh: Alexander testified in 2009, Alexander contacted WWE’s legal department to negotiate about a possible faux sleeve product depicting her tattoo works. A WWE representative laughed at her and stated she had no grounds and that they could do what they wanted with Orton’s images because he was their wrestler. WWE then offered Alexander $450 for extensive rights to use and produce the tattoo designs on WWE products. Alexander declined the offer and advised WWE that she did not grant it any permission to copy, duplicate, or otherwise reproduce any of her designs. Defendants have released and promoted wrestling video games titled “WWE 2K16”, “WWE 2K17”, and “WWE 2K18” which feature Ortons Scott: In the Solid Oaks case, as to the implied license defense, the court found that the NBA players featured in the video game had implied licenses to use the tattoos as elements of their likenesses and the video game publisher’s right to use the tattoos in depicting the players derives from these implied licenses. A crucial element of the court’s finding – the tattoo artist knew their subject was likely to appear “in public, on television, in commercials, or in other forms of media. Alexander testified that she has never given permission to any of her clients to use copies of her tattoo works in videogames and argued that the WWE and Take 2 are conflating Orton’s rights to his own likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as in video games Josh: In the ruling on the motion for summary judgment, the Alexander court found that it wasn’t’ clear whether Alexander or Orton actually every discussed whether and to what extent Orton had permission to copy and distribute the tattoos, and whether any implied license would include sublicensing rights, and denied summary judgment on this affirmative defense. Scott: The court also found that the use was not fair use. The key to a finding of fair use is whether the new use is transformative. Does the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Take Two argued that its use of the copyrighted tattoos was “transformative; that Alexander inked the tattoos at Orton’s request to reflect his personal expression, whereas Defendants depicted the tattoos in WWE 2K to depict Orton realistically. The court found a factual dispute in this case as to Defendants’ purpose in using the tattoo works. Alexander contends she created the tattoos to display them on Orton’s body and that Defendants used the tattoos for the same purpose; to display them on Orton’s body in the videogames. The court bought this. Josh: So after the court’s ruling on the motions for summary judgment, the matter proceeded to trial. Apparently, shortly before trial the court held that the de minimis use defense was not applicable. Then, it appears that the court refused to allow the jury to hear instructions on the implied license affirmative defense, even though neither party objected to the jury getting this instruction. Similarly,

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a recent episode of Marvel’s “She-Hulk: Attorney at Law” and the accuracy of a trademark infringement case featured on the show. Watch this video here.   Show Notes: Josh: The last few weeks, every Thursday night in my household, we sit down to watch the latest episode of She-Hulk on Disney+. Full disclosure, we consume every bit of content that the Marvel cinematic universe puts out. I have been waiting a few months for the release of She-Hulk though, since the main character Jennifer Walters is an attorney and a graduate of UCLA School of Law, not unlike myself. But what I didn’t expect was for the content of a particular episode to become my choice of topic for this program. A few weeks ago, at the end of that week’s episode of She-Hulk, Jennifer Walters was served with a complaint by a process server at her home, and when she removed the pleading from its folder, Walters learns that she had been sued by an influencer from an earlier episode for trademark infringement. As you can imagine, at that point, I could not wait for the next episode of the show. Scott: Although we are obviously big fans of intellectual property, it isn’t often that a trademark dispute is at the center of a movie or television shows or plot. This instance in particular was unique because it constituted the focal point of the entire episode and walked the viewers through an abridged version of the process. Josh: The next episode picked up exactly where the prior episode had left off, with Walters being in possession of the recently served complaint. She went to her full-service law firm and retained an attorney who specialized in trademark litigation. At first, I was little put off by a comment made by another one of the characters about how Walters should have already registered She-Hulk as a trademark because she should know that whoever files first gets the mark. Many of you probably already know why this irked me But if you don’t, it is because the United States is not a first to file country. Some countries are, but the United States focuses on first use, not first to file. Scott: These are the kind of things that would only bother an intellectual property aficionado. That said, it isn’t uncommon for television shows or movies to take certain liberties with things in the interest of creating a more interesting final product. Josh: That’s true, and while something like that wouldn’t necessarily bother me in most instances, when it’s something that you specialize in, I feel like it is a little harder to accept. That’s probably how many medical professionals feel when they watch shows like Grey’s Anatomy I’m sure. Anyway, my disappointment didn’t last long, because Walters subsequently filed a counter claim against Titania, the influencer who appropriated her name, seeking to enjoin her from utilizing She-Hulk in commerce, because Walters used the mark first. On that basis, Walters moved for summary judgment, which was heard the next day, which is at least 365 times faster than any motion for summary judgment I’ve ever filed or opposed. Scott: Although the show reflects an unrealistically streamlined legal process, it did manage to stay reasonably true to the requirements of such a dispute. Specifically, the remainder of the episode focused on Walters proving that she was the first to adopt and use the She-Hulk Mark. Josh: But it did once again stray from true trademark law in that Walters utilized her online dating profile, where she adopted the She-Hulk persona after failing to get any dates as Jennifer Walters, as evidence of her use of the SheHulk mark prior to Titania’s filing of a trademark application. Of course, such use would not suffice in a real trademark proceeding since such use does not constitute use in commerce, unless her dating profile somehow served as marketing collateral for her superhero services, but I do not think that was the case. Frankly, this part made the dispute feel more like a right of publicity case than a trademark case, which is fine, but let’s call it what it is. Scott: I mean, you can’t really expect the most accurate portrayal of a trademark infringement dispute in an MCU legal-comedy on Disney+, can you? Josh: No, I suppose that’s true. I should just be happy that Marvel and Disney chose to combine a few of my favorite things in one piece of content, and honestly, I am. I enjoyed the episode for what it was, but for purposes of the Briefing, I thought it was interesting to contrast trademark law as presented in She-Hulk to trademark law as it exists in the United States. Scott: It definitely made for an interesting episode. Thanks for sharing.

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

In this archive episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo explain the importance of short-form copyright assignment agreements. Read more about this topic here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Paramount’s motion to dismiss a copyright infringement lawsuit relating to ‘Top Gun: Maverick.’ Watch this episode here. Show Notes: Scott: Paramount came into the Top Gun Maverick copyright lawsuit guns hot by filing a motion to dismiss claiming that the sequel to the 1986 motion picture, Top Gun, does not infringe the copyright in Ehud Yonay’s magazine article. We are going to talk about this… Scott: In May 1983, California magazine published the article Top Guns, by EHUD YONAY. This article was an inside look at the real Navy Fighter Weapons School Top Gun based out of Miramar California. The article begins with a vivid description of two Top Gun F14 Tomcat avaitors, Yogi and Possum, on a hop, simulated dog fight training, against Top Gun instructors then continues with a deep dive into what makes Yogi and Possum (and other fighter pilots) tick, a look at the Top Gun training regimen, life on base and the history of Top Gun. When the article was published, it was optioned and in the credits for Top Gun Yonay is credited on the original movie as a writer of the magazine article Josh: On January 23, 2018, the Yonays properly availed themselves of their right to recover the copyright to the Story under the sent Paramount a statutory notice of termination under Copyright Act, and then filed it with the Copyright Office.As we have discussed previously on this program, Section 203 of the Copyright Act permits authors (or, if the authors are not alive, their surviving spouses, children or grandchildren, or executors, administrators, personal representatives or trustees) to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978 when certain conditions have been met. Upon the effective date of termination, all rights in the work that were covered by the terminated grant revert to the author, however any derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant. The Yonays sued Paramount for copyright infringement claiming that the Top Gun Maverick infringes the Yonay’s right in the original article. Scott: When we previously reported on the complaint, we stated our belief that is case is going to be about whether Maverick is actually a derivative of the article, and, more interestingly, would Maverick even infringe the article given that the article is not a work of fiction but rather a factual work. It seems that Paramount agrees. Josh: In its motion to dismiss Paramount correctly argues that in order to state a claim for infringement a plaintiff must show substantial similarity between the works’ protected elements. Determining whether works are substantially similar involves a two-part analysis consisting of the ‘extrinsic test’ and the ‘intrinsic test.’” The extrinsic test “assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, whereas the intrinsic test “examines an ordinary person’s subjective impressions. Although a plaintiff must prove both to establish substantial similarity,a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury. As such, on a motion to dismiss, the court will only consider the extrinsic test and the extrinsic test can end a plaintiff’s infringement case only when the similarities between the works are either wholly due to unprotected elements, or where the amount of similar protected expression is de minimis as a matter of law. Scott: Paramount argues that in applying the extrinsic test and by filtering out the elements that are not protected under copyright law – that is facts, ideas, scenes a faire (which are situations and incidents that flow necessarily or naturally from a basic plot premise) and stock elements – the two works are not substantially similar. In its motion to dismiss Paramount argues that all elements that are alleged to be similar – the history and operations of the “Top Gun” academy; that the pilots pull off risky aerial maneuvers, that manner of combat training and the tactical discussions the pilots have; descriptions and depictions of fighter jets, including their exorbitant cost; pilots doing push-up exercises; pilots’ use of “call signs” as nicknames and depictions of camaraderie amongst pilots, including bar excursions and games —are reported in the Article as factual. Josh: Paramount also argues that the fact that both works are primarily based at the Naval Air Station Miramar also known as Fightertown USA can’t be considered by the court in de

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the IP dispute between the heirs of Evel Knievel and Disney, over claims of similarities between the late daredevil and the “Toy Story 4” character Duke Caboom. Watch this episode here. Show Notes: Josh The Ninth Circuit refused to revive a lawsuit filed by Evel Knievel’s son alleging that Disney infringed his company’s intellectual property and publicity rights associated with Evel Knievel by creating the Canadian stuntman character Duke Caboom in Toy Story 4. That’s what we’ll discussing on this installment of the briefing by the IP law blog. Josh In October 2021, Evel Knievel’s son, through his company K and K Promotions, Inc., filed suit against Disney claiming that Disney’s creation of the Toy Story 4 character Duke Caboom, a Canadian motorcycle stuntman, infringed the company’s IP and publicity rights related to Evel Knievel. The District Court dismissed the matter in response to a motion to dismiss, finding that the challenged product is an expressive work under Rogers v. Grimaldi, and that Duke Caboom clearly has artistic relevance and was not explicitly misleading. Scott But Knievel’s son was obviously displeased with this ruling, and so he appealed to the Ninth Circuit, hoping the appellate court would revive his case. Much to his chagrin, he learned that he does not have a friend in the Ninth Circuit. Josh I think that’s fair statement, Scott. The Ninth Circuit essentially echoed the District Court and found that the Rogers test applied to the case, that Caboom did have artistic relevance, and that K&K did not alleged sufficient facts to show that the character was explicitly misleading as to its source. The Ninth Circuit stated that the “explicitly misleading” test imposes a “high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” In evaluating whether the use of a mark is explicitly misleading, we consider “(1) the degree to which the junior user uses the mark in the same way as the senior user and (2) the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself.” The Ninth Circuit found that neither consideration was met in this instance. Scott For starters, the Ninth Circuit found that, unlike Evel Knievel, Duke Caboom is a fictional character in an animated film about toys that come to life. The Ninth Circuit also found that Disney added significant expressive content to the mark to make it different from Evel Knievel. Josh Right, for example, Disney created a character with a different name, appearance, and backstory than Evel Knievel. Disney never suggested that Evel Knievel was involved in Toy Story 4, and Evel Knievel was never even mentioned in the film. For these reasons, the Court found the dismissal under Rogers was appropriate. Scott The Court also addressed the district court’s dismissal of the right of publicity claim under the transformative use defense. The Ninth Circuit found that K&K did not challenge the applicability of the defense to such a claim under Nevada law. To determine if a use is transformative, courts consider various factors that balance the defendant’s First Amendment rights with the Plaintiff’s claimed right of publicity. Josh The Ninth Circuit found those factors favored Disney. The Ninth Circuit stated that: The Duke Caboom action figure is “more than a mere likeness or literal depiction” of Evel Knievel. Id. at 1275 (quotations omitted). Even if the character may be generically reminiscent of Knievel to some extent, the district court properly concluded that it is “not a literal depiction,” and instead shares general features basic to stuntmen. Moreover, the economic value of the toy action figure does not derive from Evel Knievel’s persona. Id. at 1274. Instead, it reflects the success of Disney’s Toy Story franchise and its popularity among children. Accordingly, the Ninth Circuit affirmed the dismissal of the right of publicity claim as well. Scott I guess we can mark another one in the win column for Disney. Thanks for sharing.      

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a Trademark dispute between toy maker Mattel and Rap Snacks after the snack company launched ‘Barbie-Que Chips’ in collaboration with rapper Nicki Minaj. Watch this episode here. Show Notes: Josh: The toy maker Mattel has filed an action against Rap Snacks in the United States District Court for the Central District of California for trademark infringement. Specifically, Mattel claims that Rap Snacks’ potato chip collaboration with rapper Nicki Minaj infringed its BARBIE trademark. A couple months ago, Rap Snacks announced that it would collaborate with Minaj on a new chip flavor known as “Barbie-Que Honey Truffle Potato Chips,” a play on Minaj’s Barbie nickname. Mattel was not amused. In fact, the Complaint states that “Not only does the name of Rap Snacks’ product packaging wholly incorporate Mattel’s Barbie trademark, but the logo is confusingly similar to the current Barbie logo.” Scott: And Mattel’s frustration with the situation was surely inflamed by Rap Snacks’ extensive marketing campaign, which included NYC billboards, giveaways at music festivals, an article in People magazine, and social media posts on FB, IG, and TikTok. Josh: Mattel is likely bothered because of its efforts to expand its franchise beyond toys. For example, Mattel has created Barbie-branded snack food items, including pasta, candy, cookies, drinks, and other snacks. According to Mattel, this makes Rap Snacks’ alleged infringing use of BARBIE even more confusing. Scott: According to Mattel, its Barbie brand has been one of the world’s most well-known and recognizable brands for decades. For that reason, Mattel claims that Rap Snacks has improperly benefitted from the goodwill associated with its BARBIE brand. Justice Sotomayor has previously stated that “by any measure — the world-known Barbie is a ‘famous’ trademark.” End quote. Josh: and Justice Sotomayor’s conclusion assuming that it holds up, which I think it would, is significant because that then creates the possibility of a trademark dilution claim. Scott, do you want to tell our listeners why or how that is distinct from a trademark infringement claim? Scott: In a Trademark infringement case, you are really looking at the goods and services that are being used by the mark holder. The analysis is the similarity of the mark relatedness of the goods and services. That’s a trademark infringement claim. Here you got toys from Mattel. Here, you got toys and food, and those categories of goods are not really related, so how else would Mattel protect its brand? The only way to protect it is through a dilution claim, where the claim is that the use of your brand by a third party either dilutes or tarnishes the goodwill associated with your brand. One of the elements to establish a dilution claim is your brand has to be famous. Josh: Thanks, Scott. That’s actually really helpful. So, Mattel claims to have made reasonable efforts to resolve the dispute with Rap Snacks. According to the Complaint, Mattel contacted Rap Snacks and asked it to stop using the BARBIE mark in connection with its chips, but Rap Snacks refused. But that isn’t a surprise since Rap Snacks has filed an intent-to-use application for BARBIE-QUE in connection with food products, including chips. To me, this seems to indicate that Rap Snacks believes it has a right to use with mark. What do you think Scott? Do you think Rap Snacks use is legal? Scott: I’m going to have to say i don’t know enough to make that call right now. Look, I do think its interesting that they’re using the exact same spelling. I don’t have a problem with them using ‘Barbie’ for Barbie-Que, but I think they could have changed the spelling.They’re entitled to refer to them as Barbeque chips, but I really don’t think they can call it ‘Barbie’. I don’t think it matters that Nicki Minaj is referred to as Barbie, and I don’t know who calls her Barbie, but I don’t know that it matters and I don’t know that they can do this. Josh: Well, I think there’s an argument that the First Amendment could permit Rap Snacks’ use under the VIP Products authority in the Ninth Circuit, which applied the Rogers v. Grimaldi precedent from the 2nd Circuit. Under that line of cases, if the use has artistic relevance and does not mislead consumers as to the source or the content of the work, then the use is permissible. So Rap Snacks would need to prove two things: (1) that its use has artistic relevance, and (2) that its use was not misleading as to source. Scott: I don’t think that would hold much water. I don’t think the potato chip bag is an expressive work, and that’s what Rodgers applies to. You can make that argument, but I don&#82

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an author’s copyright lawsuit against Fox and the producers of ‘Empire,’ alleging one of the show’s characters was inspired by her biography. Watch this episode here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright infringement dispute between a sports psychologist and Miami Dolphins defensive back coach Gerald Alexander. Watch this episode here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an intellectual property dispute between Netflix and two digital content creators who wrote a musical inspired by the hit Netflix series, Bridgerton. Watch this episode on the Weintraub YouTube channel, here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a Trademark Infringement Lawsuit filed by the clothing brand RHODE NYC against Hailey Beiber’s new skincare line RHODE. Watch this episode, here.

In this episode of The Briefing by the IP Law Blog, Weintraub attorneys Scott Hervey and Josh Escovedo discuss the impact of Alexis Hunley, et al v. Instagram, LLC on copyright law, specifically on the Server Test. Considered one of the top copyright cases to watch, Hunley deals with the practice of “embedding” and its copyright implications. Watch the video of this episode here. Read Scott’s blog post about this case on The IP Law Blog.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark infringement dispute between the Seattle Space Needle and a local coffee shop over the cafe’s use of the Space needle’s image in its logo. Watch this episode on Weintraub’s YouTube channel, here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright dispute between Carroll Shelby Licensing and the widow of the late filmmaker H. B. Halicki regarding copyright protection granted to Eleanor, a car featured in the 1974 film “Gone in 60 Seconds.” Watch this episode on the Weintraub YouTube channel, here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Ohio State University’s trademark registration for the word THE. Watch this episode on the Weintraub YouTube channel here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a dispute between Vans and MSCHF, over MSCHF’s new sneaker line that contains “striking visual similarities” to Vans shoes and packaging. Watch this episode on the Weintraub YouTube channel, here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the copyright dispute between a photographer and the Andy Warhol Foundation over several Warhol paintings that utilize the photographer’s images as source material. Watch this episode on the Weintraub YouTube channel, here.