The Briefing by the IP Law Blog

Kim Kardashian faces a lawsuit from the Donald Judd Foundation for allegedly using and promoting knockoff furniture in her office tour video. While Kardashian's counsel denies liability, the case underscores the importance of due diligence in endorsements. Scott Hervey and Jamie Lincenberg from Weintraub Tobin dissect the legal drama in this installment of “The Briefing.”
 
Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.  







Show Notes:
Jamie Last week, the art world was buzzing with yet another dupe scandal. Kim Kardashian has been sued by the Donald Judd Foundation for using and promoting knockoffs of the late designer's furniture. We will dive into the details of this case on today's episode of "The Briefing." I'm Jamie Lincenberg of Weintraub Tobin, and I'm joining my colleague, Scott Hervey, on today's episode of "The Briefing."
Scott Thank you for joining me today, Jamie. Can you provide us with a recap of how this case came about?
Jamie Of course. Yeah. In a lawsuit filed just two weeks ago on March 27th in California's district Court, the foundation of artist Donald Judd, who passed in 1994, known famously for his minimalist designs, is suing reality television star and entrepreneur Kim Kardashian and the Los Angeles-based interior design firm, Clements Design, the company who's been faulted for fabricating and selling allegedly infringing tables and chairs to Kardashian. The lawsuit asserts that the firm sold Kardashian fakes of Judd's tables and chairs for the offices of Skin by Kim, which is Kardashian's skincare company, and accuses Kardashian of false endorsement and Clements Design of trademark and copyright infringement, false advertising, and unfair competition.
Scott So this dispute stems originally from a video Kardashian posted on her personal YouTube account. Where she gave a tour to her followers of the Los Angeles office of her skincare brand, Skin by Kim. It's just a typical house tour, office tour-type video that influencers do. In this video, while showing a large communal kitchen and dining room, Kardashian said, "If you guys are furniture people, I've really gotten into furniture lately. These Donald Judd tables are really amazing, and they totally blend in with the seats." As of late January of this year, the video had been viewed more than 3.6 million times, and this video was then subsequently removed from YouTube a few days after the lawsuit was filed.
Jamie That's right. So shortly after the video was posted, the Judd Foundation contacted Kim Kardashian and Clements Design, demanding that those furnishings in question be destroyed or recycled and that Kardashian issue a public statement. Kardashian ultimately declined to replace the furniture, retract the video, or issue a corrective statement. Her reps instead offered to update the caption information in the video and to create a separate social media post in which she would promote the Judd Foundation. The foundation rejected that as that would, of course, still allow the knockoff furniture to remain in the video online.
Scott When the foundation learned that Clements Design, which is a well-known celebrity design firm, and apparently, they also custom-make furniture pieces. When they learned that Clements Design had made the knockoff furniture, it asked for an agreement that the design company would never make and sell fake Donald Judd furniture again and that it would return and recycle Kardashian's furniture, according to the complaint. But the design company rejected both requests and denied the foundation's rights to the furniture design.
Jamie So,

Delve into the complexities of vicarious infringement and DMCA violations in AI training. Scott Hervey and James Kachmar from Weintraub Tobin dissect the recent district court ruling on OpenAI's copyright infringement allegations on this installment of “The Briefing.” Watch this episode on the
Weintraub YouTube channel here or listen to this podcast episode here.







Show Notes:
Scott As we have previously reported, in 2023, several authors, including the comedian Sarah Silverman, filed putative class action lawsuits against OpenAI's ChatGPT, alleging various copyright infringement claims. On February 12th, 2024, a district court in the Northern District of California issued its order and ruled on the OpenAI defendants' motion to dismiss various claims in the two pending putative class action lawsuits. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by my partner, James Kachmar, and we're going to discuss the Court's order on this installment of "The Briefing by Weintraub Tobin. James, welcome back to "The Briefing."
James Thanks, Scott. It's good to be back.
Scott So, James, could you give us some background on these cases?
James Sure, Scott. The author plaintiffs alleged that OpenAI infringed on their published works by using these works to help train its Large Language Model or LLM. Basically, OpenAI is alleged to have scanned the books into their system to help train the language models. The authors claim that because these books are protected by copyright law, using them in this training and the output generated by OpenAI, which the app is known ChatGPT, by summarizing their books, constituted an infringement of their copyright protections in their works. The plaintiffs in the two separate lawsuits alleged similar claims against OpenAI for both direct and vicarious copyright infringement under the Copyright Act, as well as violation of Section 1202(b) of the Digital Millennium Copyright Act or DMCA, which is removal of copyright management information. The OpenAI defendants moved to dismiss all the claims alleged by the author plaintiffs, with the exception of the first cause of action for direct copyright infringement. It's a bit unclear from the Court's order as to why the defendants did not move to dismiss that claim as well.
Scott Yeah, I found that to be interesting. The Court began by recognizing the general rules that govern motions to dismiss in federal actions. In essence, to survive such a motion, a plaintiff must plead enough facts to state a claim to relief that is plausible on its face. In essence, the plaintiff must allege sufficient factual content that allows the Court to draw the reasonable inference that the defendant is liable for the misconduct alleged.
James That's correct, Scott. Let's first look at the vicarious copyright infringement claim. The Court noted that the Copyright Act grants the copyright holder exclusive rights to reproduce the copyrighted work and any copies thereof, to prepare derivative works, and distribute copies of the copyrighted work to the public. However, the Court noted that the mere fact that a work is copyrighted does not mean that every element of the work may be protected.
Scott That's right. To allege a valid copyright infringement claim, the plaintiff must show that one, he or she owns a valid copyright in the work alleged to be infringed, and two, that the defendant copied aspects of protectable aspects of his or her work.
James That's right, Scott. The Court was really focused on this second prong, which really contains two separate components: copying and unlawful appropriation of a copyrighted work. Generally,

Delve into the legal terrain of influencer marketing from IP infringement risks to FTC guidelines compliance. Scott Hervey and Jessica Marlow from Weintraub Tobin navigate the complexities of brand deals with expert insights on safeguarding your brand partnerships on this episode of “The Briefing.”

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
Influencer social media marketing is big business, whether it's a brand integration on Instagram by an influencer or a long-term brand endorsement deal by an A-list movie star. Each deal is different, but there are similar issues that are apparent in all brand deals. I'm Scott Hervey with Weintraub Tobin, and I'm joined today by my partner, Jessica Marlow. Today is part one of our profile on understanding and navigating risks in brand marketing deals on today's installment of "The Briefing" by Weintraub Tobin.

Jessica, welcome back to "The Briefing."

Jessica:
Thank you. Happy to be back.

Scott:
This is something we both deal with frequently from both the brand and the talent side. There are certain risks that celebrities and brands have to navigate in these types of deals. Making these risks more prevalent is the fact that we're talking about digital marketing, where things tend to move quicker. And for whatever reason, people, even marketing professionals, may sometimes believe that the laws applicable to terrestrial or regular advertising don't apply to the Internet. Let's talk about our top general risks from a talent perspective and how to deal with them. Now, we have a bunch of lawyers that listen to our podcast, and you might have a different list, and we would love to hear from you if you think we should have covered something that we didn't. But this is what we think are the top legal issues in a talent brand deal.

Jessica:
One of the major risks is IP infringement. Now, this is multifaceted, and the risk of infringement comes from a few different places. First, there is infringement risks that the celebrity or influencer imposes on themselves, which can happen in a few ways. The first way is by using content where the copyright is owned by a third party, for example, where a celebrity or influencer posts an image that they don't own. You've covered a few cases on "The Briefing" about this.

Scott:
That's right. One of the more well-known case is what is O'Neill versus Ratajkowski. While that case didn't necessarily involve brand marketing, it's a perfect example of this type of risk. In 2009, O'Neill, who was a professional paparazzi, took a photo of Ratajkowski outside of a flower shop in downtown Manhattan. Now, the photo showed Ratajkowski with her face covered by this bouquet of flowers. O'Neill subsequently registered his photograph with the Copyright Office. Now, shortly after O'Neill posted the photo online, Ratajkowski posted the photo on her own Instagram account. The photo she posted was the same, except that she added the words "Mood Forever" to the bottom of the Instagram post. Now, O'Neill, of course, sued Ratajkowski and her loan-out company for copyright infringement.

Jessica:
Right. And Ratajkowski tried to get out of the case on a fair use defense on a motion to dismiss, but she was unsuccessful. And this case was before the Supreme Court ruling in Warhol versus Goldsmith. Under the new fair use analysis, it's almost certain that Ratajkowski would not have had a fair use defense.

Scott:
Yeah, that's true. And this type of liability isn't just limited to cases where the photo ...

Delve into the new WGA and SAG contract provisions relating to AI.Scott Hervey andJamie Lincenberg tackle the terms and changes in this installment of "The Briefing" by Weintraub Tobin.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott
AI ended up being a bigger than expected part in the writers' and actors' strikes. What exactly are the new WGA and SAG contract provisions relating to AI? I'm Scott Hervey from Weintraub Tobin, and today, I'm joined by my colleague Jamie Lincenberg. We are going to talk about the AI terms and the 2023 changes to the WGA and SAG MBA on this installment of "The Briefing" by Weintraub Tobin.

Jamie, welcome back to "The Briefing."

Jamie
Thanks. It's good to be back. Looking forward to getting into this topic with you.

Scott
Yeah. So, let's dive right in. So, let's first talk about the changes to the Writers Guild MBA related to AI. I think the most logical place to start is with how the WJ defines AI. So the term generative artificial intelligence, or let's call it GAI, because we don't have enough acronyms, let's call it GAI. And that generally refers to a subset of AI that produces content based upon learned patterns like Chat GPT, DALL-E, and Llama, and it does not include traditional AI technologies such as those used in computer-generated imagery like CGI and visual effects.

Jamie
Scott, the WGA terms say that GAI cannot be a writer or professional writer as defined in the MBA because it's not a person, and therefore, materials produced by GAI should not be considered literary material under any MBA. This is important because the fact that GAI output can't be considered literary material has a direct impact on a writer's credit and compensation.

Scott
Yeah, that's right. While a producer can provide a writer with GAI output and instruct the writer to use it as the basis for writing a story or a script, that GAI output cannot be considered assigned or source material for the purpose of determining compensation or writing credit, and it can't be used to disqualify a writer from that writer's eligibility for separated rights.

Jamie
While writers can use GAI in the process of preparing literary material, for example, a screenplay with consent of the company, a company may not require that a writer do so as a condition of employment. Material created by writers who elect to use GAI should be considered literary material as opposed to material produced by GAI.

Scott
That's right, but given the issues surrounding the protectability of GAI output and the requirements that must be satisfied when registering a work that includes GAI output with a copyright office, it's not clear to me why a producer would want a writer to incorporate GAI output into any literary material. The WGA terms do acknowledge that producers can establish their own policies with respect to the use of GAI that writers will be required to adhere to, and companies can reject the use of GAI, including when that use could threaten the copyrightability or the exploitation of the work.

Jamie
We should also talk about the 2023 changes to the SAG Basic Agreement related to AI. Those revisions seem to be a bit more involved.

Scott
Yeah, they are. I would agree with you there. So, the 2023 changes in the SAG Basic Agreement, they really address three different types of digital replicas. The first is an employment-based digital replica. The second is an independently created digital replica. And then the third is called a synthetic performer.

Graffiti artists Nekst and Bates have filed a lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing. Scott Hervey andJames Kachmar discuss this case in the next installment of "The Briefing."

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
This case is a head-scratcher. Graffiti artists Nekst and Bates have filed the lawsuit against Guess and Macy's for incorporating their tags in various articles of clothing manufactured by Guess and sold by Macy's. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by my partner, James Kachmar. We are going to talk about this lawsuit on the next installment of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.”

James:
Thanks, Scott.

Scott:
So it seems that Guess manufactured various clothing items that incorporated the tags of graffiti artists Nekst and Bates, and those pieces of clothing were then sold by Macy's. Now, a tag, in the parlance of street art, graffiti art, is a design element that reflects, among other things, the artist's elaborately expressed signature or name. The plaintiffs contend that these tags are the primary calling cards and source identifiers of their artwork and, well, themselves.

James:
That's right, Scott. The plaintiffs in this case bring a number of claims in the complaint, including a false endorsement claim under the Lanham Act, a right of publicity claim under California law, and a copyright infringement claim. Let's talk first about the Lanham Act claim.

Scott:
Sure. So that's section 43A of the Lanham Act, and that imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin or false or misleading description of fact or false or misleading representation of fact which is likely to deceive consumers. As to the affiliation, connection, association, sponsorship, or approval of another person's goods or services, courts have held that a person's physical likeness, voice, or other unique or distinguishing characteristic, such as a signature, constitutes a symbol or device as specified in that section.

James:
That's right, Scott. The mere use of a celebrity's image or likeness is not ordinarily actionable. But using the celebrity's image or likeness to suggest sponsorship or approval could constitute false endorsement where the celebrity hasn't, in fact, given their endorsement. A false endorsement claim must also be something that is likely to confuse consumers or must lead them to thinking that the celebrity endorsed a product or brand when, in fact, they actually have not.

Scott:
That's right, James. The complaint alleges that Guess falsely used artwork reflecting artists' names and signatures on apparel, creating the false impression that the artists endorsed Guess and Macy's. Now, we can't show you the pictures of the apparel on the podcast, but it's pretty blatant. The plaintiffs argue that the use of the artist's name and signature is designed to create and does, in fact, create the false and deceptive commercial impression that these artists and their products are somehow associated with or somehow endorse the Guess merchandise.

 

James:
So, Scott, I suppose that Guess may try to argue that a tag is not a symbol device or any of the other enumerated items in section 43A.

As James Kachmar previously wrote on the IP Law Blog, the man who was photographed as a naked baby in 1991 for Nirvana's iconic "Nevermind" album cover is now suing the band for distributing child pornography. Scott Hervey and James discuss the Ninth Circuit's opinion on the case in this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
James:
In 1991, the grunge band Nirvana was one of the most popular musical acts in the United States with its anthem “Smells like Teen Spirit”, which was featured on its album Nevermind. Many will remember the cover of that album, which featured a naked baby swimming underwater and reaching for a dollar bill on a fishing hook. Three months after its release, Nevermind rose to the top of the Billboard 200 rankings and since then has sold over 30 million copies. The picture on the album was licensed for use on other merchandise, such as t-shirts, and was also the subject of various parodies. Now, 30 years later, Nirvana, its surviving members, and its record companies face a civil lawsuit for allegedly distributing child pornography by the now-grown man who was depicted on the album cover as a baby. I am James Kachmar from Weintraub Tobin, and I am joining Scott Hervey from Weintraub Tobin to talk about this case on the next installment of “The Briefing.”

Scott:
James, welcome back to The Briefing. This case, the case of Elden versus Nirvana, has been on my mind since I read your excellent article on the case. Can you give us some background?

James:
Sure. Scott, the baby in that photo, is now a gentleman. His name is Spencer Elden, and he was four months old at the time the photograph was taken. He turned 18 in 2009 12 years later in 2021, at the age of 30, he filed a lawsuit, and after two rounds of amended complaints, filed a second amended complaint in January 2022. Mr. Elden asserts a single claim against the defendants for a violation of 18 USC section 22 55, which allows victims of child pornography to bring a civil cause of action for their injuries.

Scott:
And, James, what is the nature of Mr. Elden's complaint? What's it based on? What is it based on?

James:
Mr. Elden's complaint alleges that the cover of Nevermind depicting him in the nude constitutes child pornography and that the defendants, quote, knowingly possessed, transported, reproduced, advertised, promoted, presented, distributed, provided, and obtained, end quote, this alleged child pornography depicting him. He further alleges that the image has been reproduced and redistributed during the ten years preceding his lawsuit, and since then, pointing out that Nevermind had been rereleased in September 2021, claimed that he had suffered personal injury as a result of the ongoing violations of section 22 55.

Scott:
So initially, the defendants moved to dismiss Mr. Elden's complaint, arguing that it was barred by the applicable tenure statute of limitations for such claims. The district court agreed with the defendants and dismissed the complaint with prejudice. Mr. Elden appealed that dismissal to the 9th Circuit. And what happened on appeal, James?

James:
Well, Scott, just days before Christmas last year, the 9th Circuit issued its opinion in Elden versus Nirvana, LLC, and reversed the dismissal of his claims. Importantly, the 9th Circuit, in its decision, did not decide whether the album cover, in fact, constituted child pornography. Rather, it only decided whether his claims were timely. The issue of whether the album cover constitutes child p...

Brandy Melville has asked the Supreme Court to review the 9th Circuit's decision in its dispute with Redbubble. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Jamie:
This past summer, we analyzed the willful blindness doctrine, which was highlighted by the 9th Circuit's decision in the case of Redbubble, Inc. Versus Y.Y.G.M. doing business as Brandy Melville. The 9th Circuit in that case refused to hold Redbubble liable for contributory infringement because Redbubble didn't know, or have reason to know of specific incidents of infringement by its users. The matter seems settled, but Brandy Melville has asked the Supreme Court now to review the 9th Circuit's decision, which now causes a circuit split. I'm Jamie Lincenberg of Weintraub Tobin. We're going to talk about this update in the Brandy Melville Redbubble dispute on this installment of The Briefing.

Scott:
I'm Scott Hervey of Weintraub Tobin. Jamie, welcome back to The Briefing.

Jamie:
Thank you, Scott. It's great to be here again.

Scott:
So before we dive into Brandy Melville's petition for assert to the Supreme Court, can you take us back through the history of the case?

Jamie:
So this dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble's website that infringed their company's trademarks.

Scott:
Initially, the district court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement. Then, on appeal, the 9th Circuit appellate panel overturned much of the lower court's findings, holding that a party is liable for contributory infringement when it continues to supply its products to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to infringement. In short, willful blindness requires the defendant to have knowledge of specific infringers. General knowledge of infringement on the platform is not enough.

Jamie:
This decision for the first time defined the 9th Circuit's legal standard for contributory liability, and it really heightened the hurdle for brand owners to establish contributory infringement. Now, six months later, Brandy Melville argues that the appellate court was wrong in its holding and has asked the Supreme Court to review the 9th Circus decision that liability for user-submitted trademark infringement only stands when there's specific knowledge of the infringement.

Scott:
Brandy Melville argues in its petition for rid of Cert. That the 9th Circuit has adopted an erroneously narrow view of such liability and points to the Second Circuit and the 10th Circuit, where once a defendant knows or has reason to know that it is assisting in trademark infringement, it has a legal duty to take reasonable steps to stop it? The attorneys for Brandy Melville argue that the 9th Circuit's decision has no basis in background principles of common law and effectively flips the burden of ensuring compliance with the law from the defendants to the plaintiffs. In its writ for Cert. Brandy Melville argues that the issue is whether the defendant must know or have reason to know to trigger such liability. In particular,

As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.



Cases Discussed:

* Jack Daniels Properties v. VIP Products
* Rogers v. Grimaldi
* Punch Bowl v. AJ Press
* 20th Century Fox Television v. Empire Distribution, Inc.

Show Notes:
Scott:
The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel's dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I'm Scott Hervey from Weintraub Tobin, and I'm joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing.

Jamie:
Thanks, Scott. It's good to be back after a little bit of a hiatus.

Scott:
Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case.

Jamie:
That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity's name in the title of the work.

Scott:
The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can't be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California's 9th Circuit.

Jamie:
On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressi...

Fruity Pebbles failed to attain a trademark for the various colors of its cereal. Scott Hervey and Jessica Marlow discuss the TTAB's decision to reject the trademark application on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 



Show Notes:

Scott:
A trademark examiner refused to register a trademark for the various colors that make up the colors of Fruity Pebbles Cereal on the grounds that the proposed color mark fails to function as a trademark. The applicant, Post Foods, could not stomach the refusal, and it appealed it to the Trademark Trial and Appeal Board. On January 4, 2024, the TTAB upheld the examiner's refusal. This case exemplifies the difficulty of securing a color trademark. And there's some other takeaways, important takeaways, too.

We're going to discuss this on this next installment of The Briefing by Weintraub Tobin. Welcome back to The Briefing. I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by my law partner, Jessica Marlow. Jessica, welcome back to The Briefing.

Jessica:
Thank you. Happy to be back.

Scott:
So, Jessica, I know that you're a fan of fruity pebbles, right?

Jessica:
I am.

Scott:
Okay.

Jessica:
At all ages.

Scott:
Yeah, this case is right up your alley. So Post Foods applied to register a trademark for the various colors that make up the colors of Fruity Pebble Cereal. Understanding just how difficult it would be to register the color mark, the application included a declaration from the applicant's counsel supporting the two-f claim, which is a claim of acquired distinctiveness and allegations of long use, extensive advertising and, unsolicited media coverage and significant product sales. Supporting this claim of acquired distinctiveness. The examining attorney refused to register the mark because it consisted of a nondistinctive product design or nondistinctive features of a product design that are not registerable on the principal register without sufficient proof of acquired distinctiveness. And while the applicant's two-f claim and all the evidence that the applicant submitted in support of the two-f claim was an attempt of establishing acquired distinctiveness, the trademark examiner said that the section two-f claim showing was insufficient to demonstrate acquired distinctiveness.

Jessica:
Right. And in response to the office actions, the applicant submitted additional evidence of the mark's acquired distinctiveness, including the results of a consumer survey, long use of the mark, significant advertising expenditures and sales revenue, extensive media coverage, and customer statements. Despite all of this, the examiner found the additional evidence insufficient to show acquired distinctiveness and continued to refuse registration on the grounds that the mark failed to function as a trademark. Post appealed this refusal to the TTAB.

Scott:
Now, color marks are never inherently distinctive when used on products or on product designs. Where a color mark is not functional, it may be registered on the principal register if it is shown to have acquired distinctiveness. The TTAB noted that the burden of proving that a color mark has acquired distinctiveness is substantial there are six factors that are considered in determining whether a color mark has acquired distinctiveness, and those six factors are the association of the trade dress with a particular source by actual purchasers,

The FTC recently made changes to its guide concerning the use of endorsements and testimonials in advertising. Scott Hervey and Jessica Marlow discuss these changes and their expected impact on the influencer marketing industry in this episode of The Briefing. 

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
It's a new year, and some changes are in place for those in the influencer marketing business, whether it's on the brand side or on the talent side. We'll be covering recent changes to the FTC's guide concerning the use of endorsements and testimonials in advertising on this installment of The Briefing by Weintraub Tobin. Happy New Year, and thank you for tuning in to today's installment of The Briefing.

I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by a first-time guest to The Briefing, my law partner, Jessica Marlow. Jessica, welcome to the briefing.

Jessica:
Thank you, Scott. Happy to be here.

Scott:
So, Jessica, can you give us a little background on the FTC's involvement in endorsements and testimonials and the endorsement guide?

Jessica:
Absolutely. So, the FTC has the authority to investigate and bring cases related to endorsements made on behalf of an advertiser under section five of the FTC Act, which generally prohibits deceptive advertising. The endorsement guide is intended to give insight into how the FTC perceives various marketing activities involving endorsements and how the FTC's acts prohibition against deceptive advertising might apply to those particular activities. The guides do not have the force of law, but they are considered to reflect safe practices, meaning that if your marketing activities are inconsistent with the guides, that could result in law enforcement actions alleging deceptive advertising, which could include fines or restitution.

Scott:
That's a great summary. So, I understand that the guides have been around since, believe it or not, 1979, with the biggest update occurring in 2009, which addressed bloggers. Remember those celebrity endorsers and UGC user-generated content. Since then, the guides have continued to be updated to address the evolution of social media advertising. So, what's new? Or what's new in this most recent update to the guide?

Jessica:
Well, the FTC has provided some new guidance on what is an endorsement and who is an endorser. The historical definition of endorsement is any advertising, marketing or promotional message for a product that consumers are likely to believe reflects the opinions beliefs finding experiences of a party other than the sponsoring advertiser. So, the FTC has now included tags and social media posts in the list of things that can be considered.

Scott:
Endorsement and the FTC's position on who is an endorser. Now that changes. A reflection of the proliferation of AI influencers. The FTC now defines an endorser as that which quote appears to be an individual, group or institution. The FTC did make it clear that this language does not just apply to virtual or fabricated influencers. It also applies to writers of fake reviews and nonexistent entities that purport to give endorsements. So, let's talk about something that I'm sure everybody loves talking about. That's liability.

Jessica:
Oh, yes, liability. So, let's dive into that a little bit further. Everyone likes talking about how they can be sued. So, the previous language about advertiser liability said that advertisers are subject to liability for m...

In the case of Martinez v. Zoom Info Technologies, the Ninth Circuit addressed the "Public Interest" exemption to California's anti-SLAPP law. Scott Hervey and James Kachmar talk about this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
The 9th Circuit was recently asked to address the public interest exemption to California's anti-SLAPP law in a proposed class-action lawsuit brought by a plaintiff whose photo and personal information were used without her consent to advertise subscriptions to the website Zoom info. The case is Martinez v. Zoom Info Technologies. My colleague James Kachmar recently wrote an article exploring the interesting substantive and procedural issues concerning the interplay between one's intellectual property rights and California's anti-SLAPP law that arose in this case. James is joining me today to talk about this case on this installment of The Briefing by Weintraub Tobin.

James, welcome back to The Briefing.

James:
Thanks for having me. Scott.

Scott:
James, you wrote an extremely insightful article about the holding in Martinez versus Zoom Info Technologies, Inc. Can you give us some background on the case?

James:
Sure, Scott. Zoom Info is a website. It boasts a database of approximately 125,000,000 business professionals and contains their relevant information. When someone searches for a person or a business person, either through a web search or through Zoom Info's website, they can view a teaser profile of Zoom Info with some information about that person, such as their photo, maybe some limited business information, but most of the information is redacted. This teaser profile then contains the subscription buttons that invite the viewers to subscribe to Zoom info for a fee to access more information about that person and do other searches. The plaintiff in the case, Kim Martinez, is a political and legislative director of a labor union representing California public sector employees. Zoom Info has a profile dedicated to her that includes information regarding her job title, her employment at the union, contact information, and names of several of her business colleagues. Her teaser profile included options for a viewer to subscribe to Zoom Info, including, apparently, an option for a $10,000 annual subscription. Ms. Martinez alleged she never used Zoom Info and had not consented to the use of her profile by Zoom Info for marketing purposes.

In September 2021, Ms. Martinez filed a lawsuit against Zoom Info in federal court on behalf of herself and a proposed class of California citizens whose profiles might have been used without their consent, like hers. She claimed that Zoom info violated California law, particularly the right of privacy statute, by unlawfully profiting from her intellectual property of herself and the class. Members, such as the use of her name, photo and employment information and Zoom.

Scott:
Info responded to this filing by filing a motion to dismiss under California's anti-SLAPP laws, correct?

James:
Yes. It filed two motions, a motion to dismiss saying that the lawsuit had no merit, and a motion to strike under the anti-SLAPP law in California. California's anti-SLAPP laws, designed to protect against lawsuits brought primarily to suppress free speech and petition rights while encouraging participation in matters of public significance. The district court denied Zoom Info's motions, including the motion to strike under the anti-SLAPP,

Country singer Andy Stone, A.K.A Vince Vance, has renewed his lawsuit against Mariah Carey, which claims that her holiday hit 'All I Want for Christmas Is You' infringes the copyright of his song with the same name. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
Andy Stone, known professionally as Vince Vance, is suing Mariah Carey and Sony Music Entertainment for copyright infringement. Vance claims that the decades-old Christmas hit ‘All I Want for Christmas is You’ infringes his 1989 song ‘All I Want for Christmas is You.’

I'm Scott Hervey with Weintraub Tobin, and I'm joined today on this holiday edition of The Briefing by my partner Tara Sattler to discuss this Christmas-themed copyright infringement dispute on this next installment of The Briefing by Weintraub Tobin.

So, Tara, I think nothing rings in the holiday like a good copyright infringement lawsuit.

Tara:
Yeah, who doesn't want to spend the holidays with their lawyers in court?

Scott:
I know I certainly do. So, Tara, according to the complaint, Stone and his co-writer Troy Powers claim that in 1989, they co-wrote a country music hit also titled ‘All I Want for Christmas is You.’ That song was recorded by Stone's band Vince Vance and the Valiants, and apparently, it went to number 23 on Billboard's Hot 100 airplay list. He claims that he has performed this song over 8000 times in concerts across 20 countries. He also claims that this song was licensed by Kelly Clarkson, who recorded her version of it in 2021.

Tara:
In the complaint, Stone alleges the unique linguistic structure of his song was copied and that his song is about a person disillusioned with expensive gifts and seasonal comforts, wants to be with their loved ones at Christmas, expresses that wish to Santa, and that the loved one and unnamed you standing under the Christmas tree would be a dream come true. Stone also identifies the phrase 'All I want for Christmas is You' as an element that was infringed. Lastly, the plaintiff claims that similarities in the melody support its claim.

Scott:
So, let's take a look at these claims and see how Carey and her team may respond and also how a court, right here in the Central District of California, may analyze the plaintiff's claims. So, as we know, a court will analyze the complaint by applying the extrinsic test, which, as we've discussed before, is used in the determination of substantial similarity. After the plaintiff has identified specific criteria that it alleges to have been copied, the court separates the unprotectable elements, such as facts or ideas, from those elements that are protectable. And then it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the plaintiff's work. So, let's look at two of the elements the plaintiff identifies as being infringed: the linguistic structure and the phrase 'All I want for Christmas is You.'

Tara:
Sure? There are many songs that express the sentiment of wanting to be with a loved one during the Christmas season, and I can think of a few songs that draw on the theme of expressing wishes to Santa, such as Ariana Grande's 'Santa, Tell Me,' 'My Grown-Up Christmas List' by Amy Grant, and even 'Santa Baby' by Earth A. Kitt.

Scott:
That's right, and I suspect that Carrie's team will argue that ...

Mariah Carey has widely been referred to by fans as the 'Queen of Christmas,' but when she attempted to trademark the title last year, it was met with pushback from another singer and songwriter who claimed to hold the same title. Scott Hervey and Tara Sattler discuss this dispute on this Holiday edition of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
In 2022, Mariah Carey sought to register the trademark ‘Queen of Christmas’ for a wide variety of goods and services. Her application was opposed by a singer-songwriter who claimed she was known as the Queen of Christmas. I'm Scott Hervey with Weintraub Tobin, and I'm joined today by my partner Tara Sattler to discuss this holiday trademark dispute on this next installment of The Briefing, Christmas edition, by Weintraub Tobin.

Tara, welcome to The Briefing. You have a great holiday sweater on.

Tara:
Thanks for having me, Scott, and so do you.

Scott:
So, as you know, Tara, Mariah Carey is extremely well known for her 1994 holiday hit "All I Want for Christmas is You", which has reportedly made more than $60 million in royalties alone. In 2022, her company filed a trademark registration application for Queen of Christmas, covering a wide variety of goods and services. In the prosecution of her trademark application, while the United States Patent and Trademark Office trademark examiner assigned to the application raised a few issues, the application pretty much sailed through to publication.

Tara:
Then, later that year, singer-songwriter Elizabeth Chan filed an opposition to the registration of the mark. The basis of Chan's opposition was likelihood of confusion. In her filing, Chan claimed that she is pop music's only full-time Christmas singer-songwriter and has herself been repeatedly dubbed the Queen of Christmas. She claims to have prolifically written, composed, and performed only original Christmas holiday-themed songs for more than a decade, and due to the notoriety that she's attained for this singular and specific achievement, Elizabeth Chan has been referred to as the Queen of Christmas by multiple media, including in 2018 by the New Yorker Magazine.

Scott:
In her opposition, Chan claims to have been in continuous use of the Mark Queen of Christmas since at least 2014. Chan further argued that Queen of Christmas should not be owned or controlled by Ms. Carey's company since Ms. Carey herself has admitted that she did not create the title or moniker Queen of Christmas, and she does not even consider herself the Queen of Christmas.

Tara:
So, with the opposition filed, Ms. Carey's company was required to file an answer by a date certain, which did not happen. As a result, a default was entered against Ms. Carey's company, and the application to register the mark was deemed abandoned by the TTAB. So Scott, do you think that Carey was being Scrooge in filing her trademark application?

Scott:
I don't think so. She was represented by a highly reputable law firm and she certainly could have pressed her rights if she desired to do so. Maybe she was moved by the opening paragraph in Chan's petition, which said Christmas is big enough for more than one queen. Over the decades, several recording artists have been dubbed with the nickname Queen of Christmas, including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come. I mean,

Netflix has been ordered to pay GoTV Streaming $2.5 Million in damages for infringing one of its wireless technology patents. Scott Hervey and Eric Caligiuri discuss this update on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
I'm Scott Hervey with Weintraub Tobin. In a prior discussion with my colleague, Eric Caligiuri, earlier this year, we talked about a case where a federal court denied discovery requests aimed at uncovering details surrounding the financing of a plaintiff's patent litigation. That case was GoTV Streaming LLC versus Netflix in the Central District of California. In response to some inquiries and requests for further updates from some of our viewers and listeners, we wanted to give you an update on the broader outcome of this case. That's coming up on this installment of The Briefing by Weintraub Tobin.

Eric, welcome to another episode of the Briefing. Thanks for joining us today.

Eric:
Great to be here, Scott.

Scott:
Eric, what can you tell us about what's happened in the GOTV streaming versus Netflix case since we last spoke?

Eric:
Well, Scott, California jury has found that Netflix did in fact, infringe one of GOTV Wireless's technology patents with its television and movie streaming platform, and found Netflix owes GOTV Streaming 2.5 million for the infringement. In the verdict, the jury said that Netflix should pay GOTV the damages in one lump sum as a penalty for infringing US patent number 898715. But the jury did find that Netflix did not infringe a second patent that was also included in the suits. Both patents generally covered methods for rendering content on a wireless device.

Scott:
So, 2.5 million is not really a lot of money for Netflix. But I do have a technical question for you, and maybe you might not know, based on the judgment, does the judgment include ongoing royalties? In other words, will Netflix be able to continue to use this technology if it continues a particular royalty payment? Or does that $2.5 million include ongoing use of the patent, or is this just for past use, and Netflix can't use this technology without further infringement? Do you know?

Eric:
Yeah. So, that judgment was just for past infringement. It was a lump sum payment. There's nothing about ongoing royalties or future payments. There's probably a bit of an open question in terms know what Netflix can do in the future, and they may have to go and license the patent. But there was nothing specific in the jury verdict about going forward. It was simply damages for past infringement.

Scott:
Okay, so either Netflix has to enter into a commercial deal with GOTV, or they need to come up with a technology that doesn't infringe that particular patent. Interesting. Eric, can you tell us about some of the background of this case?

Eric:
Yeah, sure. So GOtV first sued Netflix in October of 2022, alleging certain parts of Netflix's streaming service infringed two of its wireless technology patents. Specifically, GOTV alleged Netflix's streaming service uses the methods covered by GOtV's patents to lay up content on its app and website, like its widgets, menu buttons, photo imagery. Netflix argued in response that it had no pre-filing knowledge of the patents, and without that knowledge, there couldn't be any indirect infringement or induced infringement. Instead, Netflix argued that GotV tried to create knowledge of the patents by filing suit, sorting the patents,

The Supreme Court rejected a trademark infringement claim against the producers of the Quentin Tarantino film ‘Once Upon a Time… in Hollywood’ over its portrayal of the late actor Christopher Jones. Scott Hervey and Tara Sattler discuss this decision in this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Tara:
The laws surrounding false endorsement claims in the United States are rooted in section 43 A of the Lanham Act. There's quite a bit of case law that analyzes false endorsement claims brought by celebrities who claim that a company or brand used a lookalike or soundalike to promote the brand in advertising or marketing campaigns without the celebrity's permission. Recently, the U.S. Supreme Court refused to review a California case about this exact topic. This time, the case was brought by the partner of the late actor Christopher Jones concerning the popular 2019 Quentin Tarantino film ‘Once Upon a Time in Hollywood.’ This is what we will be discussing in today's installment of the Briefing by Weintraub Tobin.

Scott:
I'm Scott Hervey from Weintraub Tobin. Tara, thanks for joining me today. So you're right that celebrities bring these types of false endorsement claims under section 43 A of the Lanham Act relatively frequently. So, let's talk about the specific language in the Lanham Act that addresses false endorsement.

Tara:
That's a great place to start. Section 43 A imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol or, device, or any combination thereof, or any false designation of origin. False. Or misleading description of fact or false or misleading representation of fact, which is likely to deceive consumers as to the affiliation, connection, association sponsorship, or approval of another person's goods or services.

Scott:
Right. And courts have held that a celebrity's physical likeness, voice, or other unique or distinguishing characteristics does constitute a symbol or device as specified in section 43 A of the Lanham Act. So, this is the usual basis for a celebrity false endorsement claim. These types of claims often arise in marketing and advertising campaigns where a brand or a service will use a lookalike or a sound alike of a celebrity. And I've even seen cases where they've used photographs of a celebrity to market that brand. Vanna White from Wheel of Fortune and the pop culture and music icon Ariana Grande, to name just a few, have brought false endorsement claims in the past.

Tara:
This recent case that went up to the U.S. Supreme Court concerns the likeness and unique physical attributes of the late actor Christopher Jones. Jones was a popular actor in the 1960s, starring in both TV and movies. Jones passed away in 2014 and assigned the rights in his likeness to his partner, Paul McKenna. Sony released Quentin Tarantino's film Once Upon a Time in Hollywood in 2019. The film is loose historical fiction based in the 1950s and centers around fictional characters played by Leonardo DiCaprio and Brad Pitt. It also touches on the Manson family murder of Sharon Tate McKenna.

Scott:
The executor of Jones's estate brought both a false endorsement claim and a trademark infringement claim against the producers of Tarantino's film. The plaintiff cited a few examples as the basis of the claim. First, Jones's name was mentioned in Tarantino's film. Second, a television advertisement and a marquee advertisement that mentions Jones's name and one of Jones's films.

The creator of a LEGO brick Second Holy Temple product is accusing another LEGO creator of copyright infringement for their interpretation of the same temple. Scott Hervey and Eric Caligiuri discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here or read Eric's article about this case here.


Show Notes:
Scott:
I'm Scott Hervey from Weintraub Tobin. My colleague Eric Caligiuri wrote an interesting article for The Briefing about a recent copyright ruling involving competing LEGO sets. And we're not talking about just any old LEGO set, but a LEGO Brick interpretation of the Second Holy Temple. We are going to talk about this case, the case of JBrick versus Chazak Kinder, Inc, on this installment of The Briefing by Weintraub Tobin.

Eric, welcome back to the podcast.

Eric:
Thanks, Scott. Good to be here.

Scott:
Great. Can you give us a rundown of the case?

Eric:
Yeah, sure. Of course. The founders of Plaintiff JBrick created a LEGO brick Second Holy Temple product that was based on independent research and at least three years of studying of historical teachings. Plaintiff also consulted with various rabbis as part of the design process. According to the court, the Second Holy Temple product is a tangible, sculptural interpretation of what the Second Holy Temple may have looked like in real life, based on the written words and interpretations of Hebrew scholars and philosophers.

Scott:
And JBrick even went so far as to obtain copyright registrations for its Second Holy Temple product, along with the copyright registrations for the product's photographs, right?

Eric:
Yes, that's correct. And now the plaintiff, JBrick, alleged that the defendant's product was almost an exact replica of its own Second Holy Temple product, containing all the unique features that set JBrick's product apart from its competitors. Accordingly, JBrick filed a complaint in May of 2021, citing claims for copyright infringement and unfair competition against these defendants. The defendants responded by claiming or by filing counterclaims for non-infringement of copyright, copyright invalidity, torture's interference with prospective economic advantage, and false advertising.

Scott:
And let's forward to the recent court ruling. And in that ruling, the court addressed the plaintiff's motion for summary judgment on the defendant's counterclaim for copyright invalidity. So, under the Copyright Act, a copyright registration creates a rebuttal presumption that the copyright is valid. This presumption of validity may be rebutted where other evidence casts doubt on that question. So, given what we have here, given that JBrick has copyright registrations, the burden it shifted to the defendant to come forward with evidence that the works in question were copied from the public domain.

Eric:
Yes, that's exactly right. So, the defendants argued that because the information concerning the Second Holy Temple is in the public domain, the plaintiff's copyrighted works are not original. As a result, the defendants contended that the plaintiff's second Holy Temple product can be copied and used in derivative works. The defendants further argued that a historically accurate replication does not constitute a new and original work.

Scott:

The Supreme Court recently heard oral arguments in the case of Vidal v. Elster to determine whether the USPTO’s refusal to register the trademark “Trump Too Small” violates the applicant's First Amendment rights. Scott Hervey and Eric Caligiuri discuss this case on this installment of The Briefing. 

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
Today, November 1, 2023, the Supreme Court will hear oral arguments on whether the Trademark Office's refusal to register the trademark “Trump Too Small” on the grounds that it violates Section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual's consent violates the applicant's First Amendment rights. We are going to talk about this case on this installment of The Briefing by Weintraub Tobin. The case is Vidal v. Elster. The facts are relatively simple. Elster sought to register the mark "Trump Too Small" for T-shirts. The USPTO refused to register the mark based on section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual's consent. Elster appealed this refusal to the Federal Circuit, where Judge Timothy B. Dyke held for a unanimous panel that the government's interest in protecting the privacy and publicity rights of President Trump did not outweigh Elster's First Amendment right to criticize that public figure.

Eric:
USPTO suspended the examination of applications of trademarks that cover phrases that are critical of government officials or public figures and petitioned the Supreme Court for review?

Scott:
That's right. The question for review by the Supreme Court is whether the Section Two C Bar of the Registerability of trademarks that identify a particular individual without their consent, including those that are critical of government officials or public figures, is a condition of a government benefit, the trademark registration, or a restriction on speech.

Eric:
So let's talk about this in light of Matal vs. Tam, which struck down a ban on trademarks that may disparage groups of people, which included marks that incorporated racist or demeaning terms on First Amendment grounds, and also Iancu v. Brunetti that invalidated a ban on profane or lewd trademarks, also on First Amendment grounds.

Scott:
That's a good point, Eric. In its petition to the Supreme Court, the USPTO distinguished these two cases from this instant case. The USPTO argued that the restrictions at issue in Tam and Brunetti were viewpoint-based restrictions. The USPTO contends that Section Two C is viewpoint neutral, meaning it doesn't matter whether the application is for a mark that is critical of a live person, complimentary of a live person, or neutral. If the mark contains the name of a live individual, it can't be registered without their consent under section two C.

Eric:
So, Scott, putting aside the argument that Section Two C is a viewpoint neutral, do you think that the trademark Office's refusal to register Chill's political speech?

Scott:
I don't remember. Registered trademark is a protectable right. So what happens if this applicant was granted registration? Then, others who want to express a similar political sentiment on a T-shirt or a bumper sticker would be prohibited from doing so. The granting of a trademark registration to Marx that includes political criticism of notable figures would actually limit that kind of speech.

Thomson Reuters sued Ross Intelligence for using its content to train its AI technology. Scott Hervey and Tara Sattler talk about this copyright dispute on this installment of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
Thompson Reuters, the provider of the Westlaw Legal Research Platform, sued Ross Intelligence for copyright infringement based on Ross's use of Westlaw content to train Ross's IP technology. This court ruling on a motion for summary judgment may provide guidance for future similar cases, and it even provides some additional guidance into the application of a post-Warhol fair use defense. We're going to talk about this case on the next installment of The Briefing by Weintraub Tobin. These are the basic facts underlying this lawsuit. Ross is an AI legal startup. Ross hired a subcontractor to create memos with legal questions and answers. The questions were meant to be those that a lawyer would ask, and the answers were direct quotations from legal opinions. Those memos were used to train Ross's AI tool. Thompson Reuters contends that these questions were essentially Westlaw case Headnotes. Ross denies that the Westlaw Headnotes were copied but also raises a fair use defense. As the case went forward, both sides moved for summary judgment on Ross's fair use defense. The court denied the party's motions for summary judgment on Ross's fair use defense, but there are a few points in this opinion that may shape the way future AI training cases play out.

Tara:
Before we get into the analysis of Ross's fair use defense, the court spent a significant amount of time talking about the scope of Westlaw's copyright. Westlaw's copyright extends to its Headnotes and its arrangement of the Headnotes and opinions, but its copyright does not extend to the opinions itself.

Scott:
That's right, and the reason the court spent so much time talking about the scope of Westlaw's copyright was because Ross challenged Westlaw's copyright claim in the Headnotes. Ross claims that the Westlaw Headnotes follow or closely mirror the language of the judicial opinions. And if a Headnote merely copies a judicial opinion, it's not copyrightable. But if it varies more than a trivial amount, then Westlaw owns a valid copyright. The court found that this leaves a genuine factual dispute about how original the Headnotes are. If the Headnotes are mere regurgitation of parts of an opinion, this will severely impact the strength and the extent of Westlaw's copyright case and Westlaw's copyright in its whole, including in the Headnotes. And it also goes to whether Ross was copying the Headnotes or the opinions themselves.

Tara:
So, how do you see this applying to other copyright cases involving AI training?

Scott:
Well, this analysis is part of the extrinsic test, which is used in the determination of substantial similarity after the plaintiff has identified specific criteria which it alleges have been copied. The court separates the unprotectable elements, such as facts or ideas, from the elements that are protectable. And then, it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the protected elements of the plaintiff's work. This analysis is part of any copyright case, and it certainly will be part of an AI training case as well.

Tara:
Okay, so back to Ross's fair use defense, because the court finds that Ross actually copied the head notes. So fair use balances four factors: the purpose and character of the ...

A tattoo artist is suing Netflix for showing one of her tattoos in the series "Tiger King" without her permission. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
On this installment of The Briefing, we're going to talk about yet another post-Warhol fair use case. However, in this case, the Court finds the secondary use to be transformative. This case also makes me think that fair use, grounded in use as a biographical anchor, isn't quite as dead as I may have thought it is. We're going to talk about Molly Cramer vs. Netflix on this installment of the Briefing.

The case is Molly Kramer vs. Netflix. It arises from a tattoo artist's lawsuit against Netflix due to the portrayal of her Joe Exotica tattoo, actually, a picture of her Joe Exotica tattoo as tattooed on her husband's arm that she posted on Facebook, and the use of this image in the first episode of the second season of Tiger King. The context of the display of this photo and the tattoo is relevant to the Court's analysis. So the opening of the episode, this is the first episode of the second season, is meant to be reflective of the popularity of Tiger King and Joe Exotica and how it spread like literal wildfire during the first half of COVID The montage shows approximately 27 TikTok videos depicting dancers dressed as Joe Exotica are wearing animal print clothing and a clip from a Trump press conference where he asks, is that Joe Exotica?

Then there are about 58 seconds into the episode, an eight-way split-screen montage appears with all types of images of or relating to Joe Exotica, and this includes the photo of the tattoo in the lower left-hand corner. And this appears on screen for about 2.2 seconds. The barrage of images and videos continue on for about three minutes in total, all of which is to show how Joe Exotica, Carol Baskin, and the other cast of characters from Tiger King became a huge part of the cultural zeitgeist for that specific moment in time.

Tara:
So the tattoo artist here, Molly Kramer, obtained a copyright registration covering the tattoo and then sent Netflix a demand letter. The court opinion says that she demanded $10 million to settle the infringement claim.

Scott:
So, let's talk about that demand for a second. If, as a plaintiff in a case like this, you come out with such a huge demand number, a number that, at least as far as I'm concerned, has no relation to the amount of damages that you would likely be awarded. I think it only pushes the defendant to defend the case because it says that you either aren't reasonable or that you don't understand how damages in a copyright case are to be assessed. So, yes, I mean, Netflix has a lot of money, but it isn't handing out bags of money to plaintiffs who have a potentially defensible claim.

Tara:
And it seems like that's probably what happened here, because it seems that Netflix and Kramer's attorney did exchange further letters, and Kramer eventually offered to settle for $50,000 instead of 10 million. But Netflix continued to insist that their use was fair use. Kramer eventually filed a copyright infringement lawsuit, and Netflix filed a twelve B six motion to dismiss the case on the grounds that Netflix's use of the tattoo image was fair use.

Scott:
So, to determine whether a work constitutes fair use, courts engage in a case-by-case analysis and a flexible balancing of relevant factors. Those factors are the purpose and character of the use,

Former New York prosecutor Linda Fairstein is suing Netflix over her portrayal in the limited series "When They See Us," which tells the story of the 1989 Central Park Five case. Scott Hervey and Tara Sattler discuss this dispute on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Tara:
There have been quite a few high-profile defamation cases making their way through the courts recently. One of those cases is Fairstein v. Netflix, a defamation case brought by attorney Linda Fairstein, the New York City prosecutor who ran the sex crimes unit and oversaw the prosecution of five African American men known as the Central Park Five, who were wrongly accused and imprisoned for a near-fatal rape in Central Park. Fairstein sued Netflix for defamation over her character's depiction in the limited series When They See US, that was released by Netflix and produced by The Streamer. Even though the case has not yet gone to trial, there have been several interesting pretrial rulings. In the most recent ruling, a federal judge in New York denied Netflix's motion for a summary judgment, which means that the case is one step closer to trial. On this installment of the briefing, we're going to talk about the recent ruling and the potential impacts that this ruling may have on the uber-popular film and television programming that's based on real events and real people.

Scott:
Since it has been a while since we've talked about this case, let's briefly talk through Fairstein's allegation of defamation. She alleges that she was incorrectly portrayed by actress Felicity Huffman as having a larger role in the Central Park Five's fate than was factually accurate. She mentions three specific episodes and that she is portrayed in a false and defamatory manner in nearly every scene in those episodes. Her original complaint claims that this series depicts her using her true name as a racist, unethical villain who is determined to jail innocent children of color at any cost.

Tara:
Decades of case law has established that in order to prevail in a defamation case, the plaintiff has the burden of proof to establish that the statements at issue were indeed false. And here, because the plaintiff is considered a public figure, the plaintiff also has to prove that the defendant acted with actual malice in making the statement at issue. While there are some other factors in defamation, these factors are the most interesting in this particular case.

Scott:
That's right. And the last element you mentioned, that the defendants acted with actual malice, was part of the recent ruling in the Fairstein case of Netflix's motion for summary judgment. In order to prove that the defendant acted with actual malice, the plaintiff has to prove that the defendant acted in reckless disregard for the truth. Here, we're dealing with dramatization, and courts have applied the actual malice standard to dramatized accounts of real events, often recognizing that the use of invented dialog or a condensed timeline may be necessary for storytelling and that those facts are not themselves evidence of actual malice. Here, Fairstein needed to prove with clear and convincing evidence that Netflix and the producers acted in reckless disregard for the truth when portraying her in the series.

Tara:
So Netflix filed for summary judgment, arguing that they did not act with actual malice. Because the filmmakers are very confident that their portrayal of Ferrise reflected the essence of truth based on their multiple trusted sources and research,

The Parmigiano Reggiano Consortium claims that Italy's renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. Scott Hervey and Jamie Lincenberg discuss how they plan to fight off these counterfeits on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.



Scott:
The Parmigiano Reggiano Consortium claims that Italy's renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. And the consortium is seeking to fight off the cheap imitations through lawsuits and through technology. I'm Scott Hervey from Weintraub Tobin. I'm joined today by my colleague, Jamie Lincenberg. We are going to talk about when Parmesan cheese isn't Parmesan cheese on this next installment of the Briefing by Weintraub Tobin. For those who may not know, Parmigiano Reggiano traces its history back to the Middle Ages. In 1996, the European Union recognized a protective designation of origin, or a PDO, for Parmigiano Reggiano. According to the PDO, this cheese can only be produced in a small geographic area of northern Italy, which includes Parma and Reggiano. A PDO designation is used for agricultural products that traditionally have been produced in a particular geographic region. When used on a product, the PDO designation guarantees that the food product originates in that specific region or follows a particular traditional production process.

Jamie:
If I'm recalling correctly, there was a legal issue involving a challenge to Germany permitting the sale of cheese branded as Parmesan, but it didn't meet the PDO designation requirements. Germany argued that Parmesan was a generic term for a type of cheese often grated over food and could not be called uniquely Italian. A European Court of Justice, hearing the dispute, finally held that Parmesano Reggiano is the only type of cheese that can be called Parmesan within Europe and that Parmesan is not a generic term.

Scott:
That's right. And that's why when you go to Italy or other members of the European Union when you buy Parmesan, you're buying Parmesan or Reggiano. But that ruling and the PDO is only binding within the European Union. Now, the consortium is taking steps to try to prevent the sale of what it calls counterfeit Parmesan cheese outside of the European Union. This includes filing various certification marks with trademark offices throughout the world, which includes the United States. Under the Trademark Act, a certification mark is used to certify regional or other origin, material, motive, manufacture, quality, accuracy or other characteristics of goods or services or that the works of labor on the goods or services was performed by members of a union or other organization. With regard to the certification mark, Parmesan or Reggiano, it certifies that the cheese that is branded Parmigiano Reggiano originates in the Parma Reggiano region of Italy.

Jamie:
So what about Kraft? We all know that green can of Kraft Grated cheese. I assume Kraft has the right to use that mark.

Scott:
Kraft does have various registered trademarks in the US. Covering its product, but the consortium seems to be fighting Kraft's use of Parmesan. Last year, the consortium filed the equivalent of an opposition with the Australian Trademark Office challenging Kraft's application for its Parmesan cheesemarks in Australia. The consortium argued that Kraft's use will confuse consumers. Kraft argued that the term Parmesan is generic for a certain style of hard cheese Kraft's position that Parmesan is generic for a certain style of ...

Amazon is suing two social media influencers for promoting the sale of counterfeit luxury goods on the platform. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Jamie:
Last week, Amazon.com, Seattle-based tech and e-commerce giant, and its counterfeit crimes unit launched lawsuits in Seattle federal court against two social media influencers and their coconspirators, accusing the defendants of using their profiles to promote, advertise, and facilitate the sale of knockoff luxury brand products as part of a scheme with third-party counterfeit sellers. I'm Jamie Lincenberg of Weintraub Tobin, and we'll be joining my colleague Scott Hervey to talk about this case on today's episode of The Briefing.

Scott:
Thank you for joining me today, Jamie. Can you provide us with a quick recap of the lawsuits?

Jamie:
Sure. In the filed complaints, Amazon Alleges that Influencers Ashley Howett and Cameron Russell posted links on Instagram and other social platforms to direct their followers to dupes of Prada, Hermes, Chanel, Louis Vuitton, Christian Dior, and other designer accessories through hidden links leading to seemingly generic product listings in the Amazon store. The lawsuits say that both influencers collaborated with a series of retailers on, per the complaints, sophisticated campaigns of false advertising in an attempt to evade Amazon's counterfeit and infringement detection tools. Amazon alleges that both influencers use the same CD method to avoid getting caught through social media posts. The influencers make it very clear that they are promoting fake versions of the luxury brand items but then direct their followers to product listing pages in the seller's Amazon stores, where the items appear generic with blurred logos or pixelated images. Amazon's complaint against how it says that she openly acknowledged that the products were fake, informed her followers that they would receive products bearing luxury brand trademarks, and urged them to order the products before Amazon could take down the listings. According to the lawsuit against how Amazon, investigators ordered some of the products that she advertised and confirmed they spore the stolen brand names and logos.

Scott:
Both Howet and Russell, of course, received commissions for sales via the links they shared on their social media channels.

Jamie:
Yeah. The crux of the case against the influencers there are a number of charges against the manufacturers of the counterfeit goods, which are allegedly Chinese manufacturers located in various provinces of China. But the crux against the influencers is 15 USC. 1125 A, which is part of the Lanham Act. And that statute prohibits the use in commerce of any mark or false designation of origin, which can be a designation of the manufacturer in connection with goods that are false. Or misleading and which A are likely to cause confusion or to cause mistake or to deceive as to the affiliation, connection, or association of such person with another person or as to the origin, sponsorship, or approval of his. Or her goods, services, or commercial activities by that other person or b in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities. The lawsuits accuse the influencers of contributory violations of this statute. The complaint alleges that the influencers' liability stems from their knowing,

A recent article in The Hollywood Reporter explores TV and movie studios' potential use of AI for generating scripts. Scott Hervey and Jamie Lincenberg discuss this and other statements in the article on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
An August 23rd article in The Hollywood Reporter had the title, “Studio’s Offer to Writer May Lead to AI-created Scripts that are Copyrightable.” The article acknowledged that copyright law doesn't recognize works solely created by artificial intelligence, but the article theorized that by incentivizing writers to participate in the creation process, studios may have a better shot at getting that work protected. We are going to dissect some of the statements made in this article in light of the recent ruling by the D.C. District Court that AI works are not entitled to copyright protection on this installment of The Briefing by Weintraub Tobin.

Let's set the stage with a recent ruling by Judge Howell in the lawsuit brought by Stephen Thaler against the Copyright Office based on the Office's rejection of his application to register their work. A recent entrance to paradise. The work was created by an AI technology called Creativity Machine and was submitted for copyright registration in 2018 by Stephen Thaler as a work made for hire, in which Thaler listed the Creativity Machine as the author and Thaler as the copyright owner. In his application, Thaler left a note from the Office stating that the work was autonomously created by a computer algorithm running on a machine, and he was seeking to register his computer-generated work as a work for hire as the owner of the Creativity Machine.

Jamie:
We previously covered the Copyright Office's rejection of Thaler's application in March of last year. Basically, the Copyright Office rejected Thaler's application because it lacked the human authorship necessary to support a copyright claim. Thaler appealed the rejection to the District Court for the District of Columbia, and the Court upheld the rejection of Thaler's application, holding that human authorship is an essential part of a valid copyright claim.

Scott:
Right. The single legal question before the Court was whether a work generated autonomously by a computer falls under the protection of copyright law upon its creation. The Court acknowledged that copyright is designed to adapt with the times and that copyright law has proven malleable enough to cover works created with or involving technologies developed long after the traditional media of writings memorialized on paper. But underlying that adaptability and that malleability has been a constant understanding that human creativity is at the core of copyrightability, even as that human creativity is channeled through new tools or into new media.

Jamie:
The Court cited the 1884 Supreme Court case of Borough Giles Lithographic Company versus Serenay, which upheld the constitutionality of an amendment to the Copyright Act to cover photographs. In that case, the Supreme Court reasoned that photographs amounted to copyrightable creations of authors despite being issued from a mechanical device that merely reproduced an image of what is in front of the device because the photographic result nonetheless represented the original intellectual conceptions of the author.

Scott:
The Court said that at its founding, copyright was conceived of as a form of property that the government established to protect.

An Illinois judge rejected an infringement claim brought by rapper Gutta, alleging that a song released by hip-hop artist Future infringed his rights. Scott Hervey and Jamie Lincenberg talk about this dispute on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Jamie:
On August 25, 2023, the U.S. District Court for the Northern District of Illinois rejected an infringement claim brought by rapper Dequan Robinson, otherwise known as Gutta, alleging that a song released by hip-hop artist Future infringed his rights. We are going to talk about this case and why the court dismissed Robinson's claim on today's episode of The Briefing

I'm Jamie Lincenberg of Weintraub Tobin and I'm joined today by my colleague Scott Hervey.

Scott:
Hi Jamie, thanks for having me today. Looking forward to diving into this case. So first, why don't you provide us with a quick recap on the lawsuit.

Jamie:
So, on Friday, a Chicago federal court dismissed the copyright infringement lawsuit that was brought in 2021 against popular Atlanta hip hop artist Future by Virginia rapper Dequan Robinson, who, as I said, performs as Gutta. He alleged that Future's song, ‘When I Think About It’, released in 2018, ripped off his own 2017 song ‘When You Think About It’ to make a hit of his own and claiming that he had emailed a draft of his song to future's producer a year before the song was released. His complaint alleged that they created the song in the image of his song, likening his case to the famous Blurred Lines lawsuit in which Pharrell Williams and Robin Thicke's very popular track Blurred Lines was found to have infringed Marvin Gaye's iconic ‘Got to Give It Up.’ The lawsuit raised arguments that the works were substantially similar due to the following factors one, similar thematic content of guns, money and jewelry two, that they were both in the key of e and three, that they had the same chorus and verse structure. The lawsuit also named some of future's companies, his producer and Sony Music Entertainment as defendants. The suit sought injunctive relief damages, a running royalty and litigation costs, among other relief.

Scott:
Future’s team filed a motion to dismiss, arguing that Robinson did not adequately allege the protectable elements of ‘When You Think About It’ were copied. They argued that both the songs repeat exceedingly commonplace phrases when you think about It and when I think about it, and both include commonplace themes of guns, money and jewelry.

Jamie:
That's right. Then Robinson's team filed an opposition to the motion, citing that there are a lot of questionable similarities between the two works and that the lyrical theme, content, structure and rhythm are identical. But Judge Martha Picold of the District Court of the Northern District of Illinois disagreed, ruling that it didn't matter whether Future had copied Robinson's song because the material he allegedly borrowed, even if he did so, was not covered by copyright in the first place.

Scott:
That's right. Citing other examples, including tracks from Biggie, Kanye West and Neil Young. That's an interesting trio, if you think about it. She notes that thematic elements that are frequently present in certain genres of music place them outside of the protections of copyright law. This was the same argument that won the dismissal of the lawsuit against Kanye West over the lyrics what doesn't kill you makes you stronger. In his 2017 hit track Stronger,

A photographer is suing a real estate media site for copyright infringement after publishing several of his photos without permission. Scott Hervey and Jamie Lincenberg discuss this case and explain how media companies can handle similar situations in a post-Warhol world on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
One of the recent copyright infringement cases post the Supreme Court's decision in Warhol is Brandon Vogts, I hope I'm pronouncing that correctly. Brandon Vogts vs. Penske Media Corporation. This case involved the display of Vogts photographs in connection with various articles appearing on Penske's Dirt online media site. I'm Scott Hervey from Weintraub Tobin. I'm joined today by my colleague Jamie Lincenberg. We are going to take a look at this case and talk about how online media companies can deal with similar situations in a post-Warhol world, on this next installment of The Briefing by Weintraub Tobin.

These are the facts of this case boots is a professional photographer who specializes in real estate photography. His clients include real estate companies, real estate agents and interior designers. The majority of these clients are real estate agents who retain Vogts to photograph a property to facilitate its sale. Dirt.com is an online news publication owned by Penske Media Corporation. Dirt publishes material on real estate transactions involving persons in the entertainment industry or prominent business persons. Dirt's articles are intended to provide a unique peek into those individuals' lifestyle. Dirt published various articles about transactions involving certain properties and used Vogts photographs in connection with those articles. Vogts eventually sued for copyright infringement.

Jamie:
And, Dirt advanced a fair use defense. Dirt claimed that it featured the photographs to provide readers with what he believed was a unique insight into the lifestyles of individuals who were involved in the transaction, including commentary and critique of the property featured in the photographs, and used only those photographs that Dirt Publishers believes were necessary to do so. After both parties moved for summary judgment, the Supreme Court ruled on Andy Warhol Foundation for the Visual Arts versus Goldsmith.

Scott:
Finding that Boots had established a prima facial case of copyright infringement, the court turned to Dirt's fair use argument. Now, to determine whether a work constitutes fair use, courts engage in a case by case analysis and a flexible balancing of four factors. Those factors are one, the purpose and character of the use, including whether such use is of a commercial nature or for a nonprofit educational purpose. Two, the nature of the copyrighted work that is allegedly infringed. Three, the amount and substantiality of the portion used in relation to the infringed work as a whole. And four the effect the use will have on the potential market for or value of the original copyrighted work.

Jamie:
The first factor assesses whether the use is transformative, as established in the Supreme Court case of Campbell versus Acuff Rose Music. Transformativeness occurs where the new work adds something new, with a further purpose or different character, altering the first with new expression, meaning or message right.

Scott:
And that has been the traditional test for transformativeness. But now the Warhol decision requires courts to ask, as part of examining transformativeness,

Failure to disclose certain relationships with a third party may result in significant consequences from the court. Scott Hervey and Eric Caligiuri talk about this on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
In our last discussion with my colleague Eric Caligiuri, we looked into a case where a federal court denied discovery request aimed at uncovering details surrounding the financing of a plaintiff's patent litigation case. Today, we are going to discuss a case where a failure of one party to disclose certain relationships with a third party resulted in significant consequences. On this installment of The Briefing by Weintraub Tobin. Welcome to another installment of The Briefing. I'm Scott Hervey. I'm joined today by my colleague, Eric Caligiuri. Eric, thank you for joining us.

Eric:
Thanks, Scott. Great to be here.

Scott:
So, Eric, you wrote an interesting article on the case of Ventex versus Columbia Sportswear of North America. Similar to the last case we discussed, go to Streaming versus Netflix. This case, the Ventex case, deals with litigation financing and how the failure to disclose or possibly the attempt to hide critical information showing a financial relationship between two parties interested in the outcome of a certain proceeding can impact that legal proceeding. Eric, can you break down the key details of the case?

Eric:
Yes, absolutely. In this case, we have ventex comp versus Columbia Sportswear of North America. It centers around an inner parties dispute filed by Ventex. An inner parties dispute, or an IPR, is a proceeding before the Patent Trial and Appeal Board of the USPTO. Basically, it's an administrative proceeding similar to a district court litigation similar to litigation, except a little more streamlined and presided over by an administrative law judge at the PTAB. And basically, the only remedy is to consider the validity of a patent. So, essentially, what happens is someone who may think that either a patent is invalid or patent has been asserted against them, they can file a challenge to that patent at the PTAB, and that dispute is called an IPR. In this case, the PTAB found that Ventex failed to disclose a variety of information asserting Ventex's relationship with a company called Sirius Innovative Accessories, Inc. In response to discovery request by Columbia, the PTAB found that this failure to disclose led to unnecessary delays in the proceeding. As a result, the PTAB dismissed the proceeding and awarded over $32,000 in sanctions to Columbia, who was the patent owner. Columbia's motions for sanctions was based on a contention that Ventex petitions were time-barred, meaning they didn't file the IPRs in time, and therefore the PTAB should not have initiated the IPRs to begin with.

Scott:
So, Columbia's argument revolved around Ventex's nondisclosure of its relationship with Serious Innovative Accessories, which Columbia argued was both a proxy of Ventex and a real party in interest. The board agreed with Columbia, leading to dismissal of Ventex's petitions and the termination of the IPRs and sanctions against Ventex. So what was the crux of Columbia's argument in terms of the relationship between Ventex and Sirius?

Eric:
Yeah. So Columbia relied heavily on two prior agreements, a supplier agreement from 2013 and a 2016 exclusive manufacturing agreement. These documents illustrated a preexisting business relationship between Ventex and Sirius, suggesting that they shared a mutual interest in invalidating the ...

In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
The trademark dispute in Blue Mountain Holdings versus Blitz Nutraceuticals ended with the 11th Circuit upholding the finding by the US. District Court for the Northern District of Georgia that Lighthouse Enterprises had issued a naked license to Blue Mountain, which covered the trademark that was the basis for the dispute. We're going to talk all about the naked license on this installment of The Briefing by Weintraub Tobin. Thanks for joining us today. My name is Scott Hervey. I'm joined by my colleague, Eric Caligari. Eric, thanks for joining us today.

Eric:
Thanks for having me, Scott.

Scott:
Eric, can you give us some background on the case of Blue Mountain Holdings versus Bliss Nutraceuticals?

Eric:
Yes, of course. Lighthouse Enterprises and Blue Mountain Holdings initially sued Bliss in April of 2020 for federal trademark infringement, federal cybersquatting, and federal trademark dilution, along with some other claims. The lawsuit was based on their ownership of the trademark, Vivazen Botanicals claimed that had been selling Vivazen products since 2012 and registered the name as a trademark with the United States Patent and Trademark Office in 2017. Blue Mountain claimed that it acquired the Vivazen trademark and a 2019 purchase agreement with Lighthouse. Bliss claimed that this purchase agreement was really a license. The district court agreed with Bliss and found that the purchase agreement was really a license and that this license became a naked license when Lighthouse failed to police Blue Mountain's use of the trademark. This resulted in the abandonment of Lighthouse's rights in the trademark, and the 11th Circuit upheld the district court's findings.

Scott:
While this case itself is very interesting, and it's probably far from being over, what I want to focus on today is the ramifications of the court's finding that the transaction between Lighthouse and Blue Mountain was a naked license. A naked license refers to a situation where a trademark owner grants permission to another party to use a trademark, and that trademark owner does not maintain proper control over the quality and nature of the goods or services associated with that trademark. In other words, it's a license that lacks the necessary safeguards to ensure that the trademark's reputation and distinctiveness are maintained. The nakedness of a license isn't judged by whether the licensor allows product quality to suffer. It's whether the license or is keeping an eye on product quality, and whether, in other words, it has abandoned quality control or not. If it has, the license is naked and the trademark is abandoned.

Eric:
Yeah, and if a trademark is abandoned, whatever rights the mark owner may have had in the mark are also abandoned. It's quite a serious situation and result to avoid.

Scott:
I agree. And given this, let's talk about how to avoid the granting of a naked license.

Eric:
Yeah, sure. Well, first of all, when entering into a license agreement, that agreement should be in writing, and the right agreement should fully outline the terms and conditions that th...

The Federal Circuit Court of Appeals invalidated seven patents owned by an AI technology company after applying the two-step Alice test. Scott Hervey and Audrey Millemann talk about this decision on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
Under the Alice test for patent subject matter eligibility, the Federal Circuit Court of Appeals continues to strike down patents directed to abstract ideas. The case of People AI, Inc. V. Clary, Inc. was just such a case in which the Court invalidated seven patents owned by People AI. We are going to talk about this case and the Alice test on this next installment of The Briefing by Weintraub Tobin. Welcome to another episode of The Briefing by Weintraub Tobin. I am joined today by my partner, Audrey Millemann, a patent attorney who wrote an intriguing article titled a Prototypical Corporate Salesperson Is Not Patentable. We'll be discussing the recent People AI v. Clary, Inc. Case and its implications on patent subject matter eligibility under the Alice test. Welcome, Audrey.

Audrey:
Hi, Scott. How are you?

Scott:
Great to have you here today, Audrey. So, let's start by discussing the Alice test for patent subject matter eligibility. Can you explain the two-part test established by the Supreme Court in the 2014 case of Alice Corp. Versus CLS Bank International?

Audrey:
Yes, I can. Patent subject matter eligibility refers to whether an invention falls within categories of subject matter that can be patentable. So that's referred to as patent eligible subject matter and by statute. And that's federal statute. Section 101 of Title 35 of the United States Code provides that there are four categories of patent eligible subject matter, and they are articles of manufacture, machines, processes, and compositions of matter. And there are exceptions to those categories of patent eligible subject matter which the courts have decided over the years. And they include things like natural phenomenon, laws of nature, and abstract ideas. And those things are deemed to fall within patent ineligible subject matter, meaning they are not something that can be the subject of patent protection. So, the Supreme Court in Alice in 2014 developed a test for determining whether a claimed invention falls within patent ineligible subject matter, meaning whether it is something that is not eligible for patent protection. It's a two-part test. And under the first step, the Court examines whether the invention falls within one of those types of ineligible subject matter, meaning natural phenomena, laws of nature, or abstract ideas. And if the invention falls within one of those categories, then the Court would proceed to step two.

Under step two, the Court looks to see if there is some kind of inventive concept or something that improves the technology such that it takes it out of the patent ineligible subject matter and makes it into patent eligible subject matter. Now, this is a very complicated test, and courts have been struggling with how to apply it for years. Since it was decided.

Scott:
In the People AI versus Clary case, the Court invalidated seven patents owned by People AI based on the Alice test. Can you explain the basis of that Court's decision?

Audrey:
Yes. People AI is a company that provides business analytics or software for customer relations management. So, they developed software that would take the notes and contacts that a salesperson would have. So,

The rise of deepfakes is a growing concern within the entertainment industry. Scott Hervey and Jamie Lincenberg discuss this and the intersection between free speech and protected rights on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
Deepfakes and AI-generated likeness are not just the concerns of striking actors. Just ask Drake, The Weeknd, and UMG, a Drake and Weeknd collaboration that busted the Internet in May of this year wasn't real. It was generated by AI and made to sound like the performers. Where is it that current write of publicity laws work? And in what situations do they fail to address the scenarios presented by Deepfakes and AI-generated images? We are going to talk about this next on The Briefing by Weintraub Tobin. Let's first identify the type of AI output that triggers the right of publicity concerns. It's visual likeness and appearances, and then it's also voices or vocal likeness. California's right of publicity statute is Civil Code section 3344, and it prohibits the use of another's name, voice, photograph, or likeness on or in products, merchandise, or goods, or for the purpose of advertising or selling such products, merchandise or goods without such person's prior consent. California also has a common law right of publicity that's a bit broader than the statute. But whereas a celebrity's likeness isn't being used on or in products, merchandise, or goods, or for the purpose of advertising or selling such goods, California’s right of publicity statute isn't applicable, really.

As for a common law claim, even though common law provides for a broader right of publicity protection than the statute, the First Amendment may prevent any recovery. Generally, a claim for common law appropriation will not stand in the case of an expressive work due to First Amendment concerns.

Jamie:
So, Scott, it seems well settled that where a celebrity's likeness, whether that be visual or vocal, is used in connection with the advertising or sale of goods or services, consent of that celebrity is required. The void seems to be where that celebrity's likeness is used in an expressive work.

Scott:
That's true, Jamie, and void is a good way of putting it since it's not clear that this void is a shortcoming or some type of legal failure, or rather the greater importance of the First Amendment. Take, for example, the AI Drake song. Section 114 B of the copyright act permits sound-alikes. A publication of the US. Copyright Office specifically says that under U.S. Copyright law, the exclusive rights in a sound recording do not extend to making independently recorded sound-alike recordings. Copyright protection for sound recordings extends only to the particular sounds of which the recording consists and will not prevent a separate recording of another performance in which those sounds are imitated. The imitation of a recorded performance, no matter how similar to the original, would not constitute copyright infringement, even where one performer deliberately sets out to simulate another performance as exactly as possible. To extend a state right of publicity to cover the use of a celebrity's vocal likeness in an expressive work like the A. I. Drake Song would put a law in effect that directly conflicts with the Copyright Act.

Jamie:
Let's talk about New York's right of publicity statute. In particular, section 50 F of New York's Civil Rights Law, which took effect in 2021. This law addresses and prohibits certain uses of AI-generated lookalikes or digital ...

In the case of Brandy Melville v Redbubble, a three judge appellate panel explored whether an owner of an online market place is liable for contributory trademark infringement. Scott Hervey and Jamie Lincenberg discuss this on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
On today's episode of The Briefing, we will be taking a dive into the Willful Blindness Doctrine which is highlighted by a recent filed opinion in the case between Redbubble and YYGM doing business as Brandy Melville, in which a three-judge appellate panel discussed what legal standard the district court should apply when examining whether an owner of an online marketplace is liable for contributory trademark infringement, which is committed by artists who sell products on its marketplace. I'm Scott Hervey of Weintraub Tobin, and I'm joined today by my colleague, Jamie Lincenberg. Jamie, thank you for joining us today.

Jamie:
Thank you, Scott. I'm happy to be here.

Scott:
Jamie, can you provide a quick recap of the lawsuit?

Jamie:
Absolutely. In 2021, Brandy Melville, a popular manufacturer of clothing, home goods, and other items, sued Redbubble for trademark violations alleging infringement of its registered Brandy Melville heart mark and La lightning mark. The defendant, Redbubble, owns and operates an online marketplace where artists can upload their own work to be printed on various products and then sold. Unlike other print on demand vendors, Redbubble outsources everything other than marketing and payment processing, so third party users upload their images, and third party manufacturers and other vendors produce and ship the ordered items. The district court had found Redbubble liable for one willful contributory counterfeiting of the heart mark and the lightning mark, two contributory infringement of those two marks, and three contributory infringement of unregistered trademarks that were Brandy Melville variations. After the jury's verdict, the district court granted Redbubble's motion for judgment as a matter of law on the contributory counterfeiting claim for the heart mark. The district court let the verdict stand for the remaining claims, and it denied Brandy Melville a permanent injunction, attorneys fees, and prejudgment interest. On Monday, the 9th Circuit appellate panel overturned much of the lower court's findings and remanded for reconsideration of Redbubble's motion for judgment as a matter of law, telling the district court to use the correct legal standard for what constitutes willful blindness, the doctrine we will explore in more detail today.

Scott:
This panel's opinion vacates the district court's order granting in part and denying in part Redbubble’s motion for judgment as a matter of law, and also vacated the district court's denial of Brandy Melville's motion to permanently enjoin Redbubble from referencing, mentioning, and or using Brandy Melville, brandy Melville's registered trademarks and Brandy Melville's unregistered trademarks. In reversing the lower court with respect to Redbubble’s contributory infringement liability, the panel held that a party is liable for contributory infringement when that party continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to that infringement. So how do we determine whether a party is willfully blind to infringement?

Jamie:
In agreement with other circuit courts,

Alexis Hunley v. Instagram has been referred to as one of the top copyright cases to watch this year. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
It's been referred to as one of the top copyright cases to watch this year. The case Alexis Hunley v. Instagram. It questioned the scope and validity of the server test, a copyright doctrine that was established by the 9th Circuit and has since been rejected by a number of other courts. The 9th Circuit has spoken, and we're going to talk about this case on the next installment of the briefing by Weintraub Tobin. Alexis Hunley versus Instagram involved a potential class action claim against Instagram related to its embedding practice. The plaintiffs were two photojournalists whose photographs were featured on websites of various media outlets without a license. Hunley alleged that Instagram provided an embedding tool which allowed the photos or videos posted on an Instagram account to be simultaneously displayed on third party websites. Hunley alleged that these third parties who displayed her photos via the use of Instagram's embedding tool, committed direct copyright infringement and that Instagram was secondarily liable for infringement.

Jamie:
Embedding is the process of copying unique HTML code assigned to the location of a digital copy of a photo or video published to the Internet, and the insertion of that code into a target web page or social media post enables that photo or video to be linked for display within the target post.

Scott:
The lower court tossed the case, holding that the third-party media companies that displayed the photographs Time and BuzzFeed, to name a few, were not liable for direct copyright infringement, and as a result, Instagram was not liable for secondary copyright infringement. The district court concluded that the 9th Circuit's 2007 opinion in Perfect Ten versus Amazon, which established the server test, precluded relief. To Huntley to violate the public display right infringers must display copies of the copyrighted work. The district court held that the embedding websites do not store an image or video and do not communicate a copy of the image or video and thus do not violate the copyright owner's exclusive display. Right under perfect Ten, an alleged infringer displays an image in violation of a copyright holder's rights only if a copy of the image is embodied stored on a computer's server or other storage device.

Jamie:
The court concluded that because Time and BuzzFeed did not store the image files on their actual servers, they were not liable for direct copyright infringement, and because there was no underlying direct infringement, Instagram could not be secondarily liable. The court invited the plaintiffs to raise their issue with the 9th Circuit if they believed the server test violated copyright law, and the photographers took the court up on its offer.

Scott:
In June 2022, the photographers filed an appeal with the 9th Circuit arguing for a review of the applicability of the server test. They claimed that the server test was outdated and impractical and argued that it had been widely rejected by virtually every court throughout the country that had considered the same issue.

Jamie:
In their appeal, the photographers argued that the server test is a technological loophole that did not exist when the Copyright Act was enacted by Congress,

The Ninth Circuit recently issued an opinion affirming that Zillow infringed thousands of copyrights owned by a real estate photography studio. Scott Hervey and James Kachmar discuss this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel, here.

 


Show Notes:
Scott:
In 2019, the 9th Circuit affirmed the trial court's judgment against Zillow Group based on Zillow's use of VHT's photographs on Zillow's Digs platform. In June of this year 2023, this case found itself back up to the 9th Circuit. I'm joined by my partner, James Kachmar, to talk about this recent decision on this episode of The Briefing You. Thanks for joining us. I'm joined today by Weintraub litigation partner, James Kachmar. James, thanks for joining us today.

James:
Thanks, Scott, for having me.

Scott:
Certainly, James. Let's start by providing some context for our viewers and listeners. Could you briefly explain the background of the case between VHT and Zillow Group?

James:
Sure, Scott. Everyone should know what Zillow is the website with homes for sale. VHT is the largest professional real estate photography studio in the US. It is generally engaged by real estate agents and brokers to photograph homes for sale. These photos are edited, loaded into VHT's database, and then sent back to the agents and brokers pursuant to a license agreement to help promote their listings. VHT's photographs appear on Zillow's website one of two ways. First, Zillow will use these photographs as part of showing property listings on its website. Second, Zillow would feature some of these photographs on their website, Digs, to offer users or give people some home improvement ideas. VHT filed a copyright infringement lawsuit against Zillow, claiming that the photos were being used without their permission.

Scott:
In the previous trial, the 9th Circuit found in favor of Zillow on most counts, but reversed the findings of fair use. Regarding the use of the photos on the Diggs website. Could you elaborate on how the court reached that conclusion?

James:
Sure. The 9th Circuit in the first case, which is referred to as Zillow One, determined that Zillow had added searchable functionality on its Zigs website, which made it not a fair use of VHT's photographs. They concluded that Zillow had committed copyright infringement in doing so. However, the court in Zillow One held that Zillow was not liable for direct, secondary or contributory infringement and remanded the case back to the district court for further proceedings. This resulted in further motion practice and a second trial.

Scott:
The 9th Circuit addressed the issue of copyright registration and whether VHT's claims should be dismissed due to incomplete registration. Could you explain the court's reasoning and how it applied the U.S. Supreme Court's fourth estate decision?

James:
Sure. Just days before the 9th Circuit rendered its opinion in Zillow One, the US. Supreme Court issued its decision in Fourth Estate Public Benefit versus Wallstreet.com, in which it found that the registration requirement to bring a copyright infringement claim can only be satisfied when the Copyright Office has registered the copyright, not merely when the application for registration is filed by the plaintiff. When the case went back to the lower court, Zillow argued that because VHT had filed its lawsuit before the Copyright Office had registered its copyrights, the action should be dismissed. The lower court, however,

There is some concern that the Supreme Court's decision in Andy Warhol Foundation v. Goldsmith will harm the documentary filmmaking community. Scott Hervey and Tara Sattler discuss the implications of this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.


Show Notes:
Scott:
When Andy Warhol Foundation versus Goldsmith was pending before the Supreme Court, a group of prominent documentary filmmakers, including the makers of The Last Days of Vietnam, The Invisible War. Won't you be my neighbor? And RBG filed an amicus brief and claimed that the Second Circuit's proposed change to the way fair use is analyzed could, quote, devastate now that Warhol has been decided, it's clear that the way in which fair use is now to be determined will have an impact on documentarians who rely on the use of unlicensed third-party materials as part of conveying their story. We are going to talk about this on this installment of The Briefing.

We covered the Supreme Court's decision in Andy Warhol Foundation versus Goldsmith in a previous episode, but let's hit on some highlights relevant to the impact of this decision on documentarians. The decision changes the way fair use is analyzed. In determining fair use, four factors are examined. The first fair use factor examines the purpose and character of the use. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell versus Acuffro's Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether the new work merely supersedes the objects of the original creation or instead adds something new with further purpose or different character, altering the first with new expression, meaning, or message. In other words, whether and to what extent the new work is transformative.

Tara:
This transformative use analysis took on great importance and often eclipsed the other fair use factors. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. If the work was transformative, it was almost always found to be fair use. The importance of transformativeness all changed with this opinion. The fact that the second work conveys a different meaning or message from the first work without more is not dispositive. Now, the focus of the first fair use factor, the purpose and character of the use, has shifted from a context-based analysis to a purpose-based analysis.

Scott:
That's right, Tara. Now, the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. So now let's talk about how this decision will and will not change how documentarians can use third party footage under fair use. So documentarians frequently use third party footage in order to comment on or critique the footage itself. Section 107 of the Copyright Act provides that the fair use of a copyrighted work, including such use for purposes such as criticism and comment, is not an infringement of copyright.

Tara:
At oral argument in Warhol, both Goldsmith and the US. Government agreed that commenting on the original work, criticizing it, or otherwise shedding light on the original work is the most straightforward way to establish fair use.

Scott:
Right. In its opinion, the Supreme Court reasoned that where the use is for commentary or criticism, a copying of the first work may be justified because copying is reasonably nec...

The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce" occurs in the United States. Scott Hervey and Tara Sattler talk about this case on this installment of The Briefing.

Watch this episode on the Weintraub YouTube channel here.



Show Notes:

Tara:
Extraterritorial? Not quite for the Lanham Act. The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce" occurs in the United States. This is what we will be discussing on this installment of the Briefing.

Scott:
We talked about the facts of this case, Abitron Austria GmbH, v. Hetronic International, Inc., and the holdings of the lower courts on an earlier episode of "The Briefing," so Tara, why don't you give us a quick reminder of the facts and how this case came before the U.S. Supreme Court.

Tara:
Sure, Hetronic International, Inc., is a U.S. company that manufactures radio remote controls used to operate heavy-duty construction equipment. Abitron, the defendant, distributed Hetronic’s products in Europe. When the distributor relationship ended, Abitron started manufacturing their own products that were identical to Hetronic’s and that included the Hetronic trademark. The defendant sold their products with the Hetronic branding in Europe, so Hetronic sued Abitron. A jury in the Western District of Oklahoma awarded Hetronic over $100 million in damages, most of which tied to the defendants’ trademark infringement based on sales outside of the U.S. as 97% of the defendant's sales were made "in foreign countries, by foreign companies, to foreign customers, for use in foreign countries". On appeal to the 10th Circuit, the defendants insisted that the Lanham Act’s reach for trademark infringement doesn’t extend to their conduct because their conduct generally involved foreign defendants making sales to foreign consumers. And now, the Supreme Court has remanded the case and held that liability for trademark infringement under the Lanham Act extends only to infringing "use in commerce" in the United States.

Scott:
The Lanham Act governs federal trademark and unfair competition disputes. It imposes liability on any person who uses in commerce any . . . “colorable imitation of a registered mark,” or “[a]ny person who . . . uses in commerce any" word, false description, or false designation of origin that "is likely to cause confusion . . . or to deceive as to the affiliation," origin, or sponsorship of any goods. The Act defines commerce broadly as "all commerce which may lawfully be regulated by Congress. In the U.S. Supreme Court's holding, they focused specifically on the "use in commerce" language in the Lanham Act, in holding that "use in commerce" must occur in the United States in order to constitute trademark infringement under the Lanham Act.

Tara:
That's right. The focus on "use in commerce" is different than the holdings that some of the other federal circuits have taken on the extraterritorial application of the Lanham Act. Some federal circuits looked instead to whether the foreign activities of foreign defendants have a "substantial effect" on U.S. commerce. In fact, the only other Supreme Court case that addresses the extraterritorial application of the Lanham Act also discussed the effects of the alleged infringement on U.S. commerce.

Scott:
That case is Steele v. Bulova Watch Co. and was decided in 1952. In that case, Steele, a Texas man,

The subjects of a documentary have dropped their long-standing defamation lawsuit against Netflix and producers. Scott Hervey and Jamie Lincenberg talk about this case on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

 



Show notes:

Scott:
As of last week, a longstanding lawsuit against Netflix and producers, Doc Shop Productions, has been dropped. In a previous episode of The Briefing, we discussed the then-current status of the case where seven subjects of the Netflix docuseries “Afflicted” sued Netflix for claims of defamation, fraud and invasion of privacy.  We are going to take a look at this dismissal on this installment of the Briefing by Weintraub Tobin.

I am Scott Hervey of Weintraub Tobin and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to The Briefing.

Jamie:
Thank you, Scott. I’m happy to be here.

Scott:
Jamie, can you provide a quick recap on the lawsuit.

Jamie:
Sure.  the seven-part series “Afflicted” explores the world of chronic diseases, following a number of patients and their loved ones suffering from the same. The show casts a skeptical eye on some of the subject’s illnesses and those subjects then brought claims accusing Netflix and the producers for editing the show to make the subjects’ rare illnesses look psychosomatic and alleging that the plaintiffs were “duped by the defendants into participating in a salacious reality television program that questioned the existence of chronic illness and portrayed the plaintiffs as lazy, crazy, hypochondriacs who were deserving of scorn and who in fact have since received scorn and abuse because of the shows false representation.

Scott:
Netflix and the producers fired back - filing an anti-SLAPP motion to quickly block the lawsuits, based on the right to free speech. However, an LA county judge rejected the motion, and the appeals court agreed in a unanimous decision where the judges found that “undisputed facts concerning the plaintiff’s diagnosed medical conditions, when contrasted with the show script excerpts and aired version of “Afflicted” were sufficient to constitute a threshold showing that the defendants could reasonably be understood as falsely implying that the sick plaintiffs were imagining their illnesses due to some psychological condition and that their caregivers were gullible pawns or enablers who had been duped into providing care for persons who did not need it.”

The plaintiff’s attorney called the ruling a “Significant Win” and we discussed in our episode that such a ruling could in fact be a shift in the norm and represent major issues for documentary/non-scripted film and television producers.

Jamie:
Now, almost four years since the initiation of the lawsuit, the case has been dropped. From limited sources, it seems that both sides have agreed to drop the suit, according to a request for dismissal filed on June 6. Details of the deal have not been disclosed, but of course, this is a win for Netflix, and the producers.

Scott:
Of course, Netflix is no stranger to defending itself from accusations of defamation. This is one of many defamation lawsuits that have been brought against not just Netflix, but many studios and producers working in the documentary space. This case addresses a number of issues that are generally always present in documentary industry and highlights important lessons for both producers and subjects of those documentaries.

Jamie:

The U.S. Supreme Court provided clarification on the application of the Rogers test in relation to Jack Daniels v. VIP Products. Scott Hervey and Jamie Lincenberg talk about this ruling on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.



Show Notes:

Scott:
In the case of Jack Daniel’s Properties, Inc. v. VIP Products, the Supreme Court has spoken and provided clarification on the application of the Rogers test and whether the parodic use of another’s trademark is always non-commercial use for the purposes of a dilution claim. We are going to talk about this ruling and its potential future applications on this installment of the Briefing by WT.

I am Scott Hervey of Weintraub Tobin, and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to the briefing.

Scott:
On June 8, 2023, the United States Supreme Court handed down its opinion in JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS. The dispute dates back to 2014 when Jack Daniel's sent a series of cease and desist letters to VIP products concerning its squeaky dog chew toy, Bad Spaniels. This toy parodies the Jack Daniel's product;  “Jack Daniel's" becomes "Bad Spaniels." And the phrase "Old No. 7 Brand Tennessee Sour Mash Whiskey" turns into "The Old No. 2 On Your Tennessee Carpet." Jack Dailes claimed that VIP Products had infringed and diluted its trademarks. In 2018 a district court judge ruled in Jack Daniels's favor.

Jamie:
In its ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s marks.

Scott:
On appeal to the Ninth Circuit, VIP argued that the district court erred in finding that the toy wasn't expressive. The Ninth Circuit, therefore, remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work.

Jamie:
In reviewing the Ninth Circuit’s holding, the Supreme Court framed its analysis by starting its opinion with a discussion of the purpose and function of a trademark, which is to serve as an identifier of the source of certain goods and services. From there, the Court then looks at the Ninth Circuit's application of the Rogers test and its analysis of Jack Daniels’ dilution claim.

Scott:
Right. With regard to the application of the Rogers test, the Supreme Court said the issue is not whether the dog toy is an expressive work. The issue is the nature of the use of Jack Daniel's marks. The Supreme Court found that VIP's use of the marks, while humorous, was for the purpose of serving as a source identifier…trademark use, in other words. That didn't seem to be a controversial analysis since, in its complaint, VIP claimed trademark rights in Bad Spaniels, and VIP had, in fact, secured trademark registration of Bad Spaniels. This use, use as a trademark, is outside of the application of the Rogers test and instead should be analyzed under the multi-factor test like Sleekcraft.

Jamie:
The Supreme Court said that this approach….confining Rogers to instances where a trademark is not used to designate a work...

A court denied Netflix's request for GoTV Streaming to supply documents relating to the source of its patent litigation funding. Scott Hervey and Eric Caligiuri discuss this dispute on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

Read more about this case here.

The U.S. Supreme Court will hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to register trademarks using the name of a living person without their consent. Scott Hervey and Tara Sattler discuss this on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.



Show Notes:

Tara:
The U.S. Supreme Court has agreed to hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to secure registration of a trademark using the name of living persons without that person’s consent. That's what we'll be discussing in this installment of the Briefing by Weintraub Tobin.

Tara:
Last year, the Federal Circuit overturned a decision from the USPTO Trademark Trial and Appeal Board in which the USPTO refused to grant a trademark registration for the mark TRUMP TO SMALL for use on t-shirts. The USPTO refusal was based on Section 2(c) of the Lanham Act, which requires the USPTO to refuse registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”.

Scott:
After the TTAB affirmed the trademark examiner’s refusal to register, the applicant, Steve Elster, appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that "the government has no legitimate interest in protecting the privacy of President Trump."

Tara:
Elster argued that the phrase was "political criticism" and accordingly protected by the First Amendment. The Federal Circuit agreed and overturned the USPTO's refusal to register. The USPTO appealed to matter to the Supreme Court and suspended applications on all pending applications for trademarks that are critical of public or government officials until the Supreme Court weighs in on the issue. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided.

Scott:
In its petition to the Supreme Court, the Trademark Offices argued that enforcing the decision conflicts with the plain language of section 2(c) of the Lanham Act.

Tara:
The Trademark Office also argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent's — not the refusal to register them — that would 'chill' such speech.”

Scott:
This is an interesting issue for the Supreme Court. Is a section 2(c) refusal to register the same thing as a government restriction on free speech? If the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, trademark examiners will have to make a decision about whether a particular trademark expresses protectable speech under the First Amendment. That isn't the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue and a case we will be watching. Thanks, Tara.

The U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. Scott Hervey and Tara Sattler talk about this decision on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

Cases Discussed:

* Andy Warhol Foundation v. Goldsmith
* Campbell v. Acuff-Rose Music



Show Notes:

Scott:
In a closely watched copyright case, the U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol's portrait of music legend Prince did not qualify as fair use under copyright law. The decision affirms a previous ruling by the Second Circuit, which found that Warhol's artwork shared the same commercial purpose as the original photograph taken by photographer Lynn Goldsmith. The Supreme Court seemed to make a great effort to state that its analysis was limited to the specific use alleged to be infringing - the foundation’s licensing of Warhol Prince portrait to Conde Nast - and stated that the court is not expressing an opinion as to the creation, display or sale of the original series of Warhol Prince portraits, and the case itself presents the unique situation of the two works actually competing in the same marketplace. However, this opinion is now the go-to for determining fair use, and it will have a very wide impact. We are going to talk about the impact of this case in this installment of the briefing by Weintraub Tobin.

Scott:
These are the underlying facts. In 1981 Lynn Goldsmith was commissioned by Newsweek to photograph a then "up and coming" musician named Prince Rogers Nelson. Newsweek later published one of Goldsmith's photos along with an article about Prince. Years later, Goldsmith granted a limited license to Conde Nast publication - Vanity Fair, for use of one of her Prince photos as an "artist reference for an illustration." The terms of the license included that the use would be for “one time” only. Vanity Fair then hired Andy Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400.

Tara:
After Prince died in 2016, Condé Nast contacted the foundation about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince.  Condé Nast learned about a series of orange silkscreen portraits of Prince created by Warhol. This Orange Prince image is one of 16 works that Warhol derived from Goldsmith's photograph. When Condé Nast learned about the Orange Prince Series images, it opted instead to purchase a license from the foundation to publish it instead. Apparently, Goldsmith was unaware of the orange prince Series until 2016, when she saw it on the cover of Condé Nast’s magazine. And from there, this lawsuit commenced.

Scott:
The sole issue on appeal to the Supreme Court was whether the first fair use factor, the purpose, and the character of the use weighed in favor of the foundation. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell v. Acuff-Rose Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether   "the new work merely "supersedes the objects" of the original creation, or instead adds something new,

While iconic catchphrases from TV and film can hold significant equity, protection of them can be spotty. Scott Hervey and Tara Sattler talk about the protectability of short phrases on this archive episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

 


Show Notes:
Scott:
“Show me the money.” “Who are you going to call?” “Go ahead, make my day.” These are a few iconic phrases with significant equity, but protection of catchphrases like these is spotty. We're going to talk about the protectability of short phrases on this next installment of The Briefing by Weintraub Tobin. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by my partner, Tara Sattler. Tara, thank you for joining us.

Tara:
Thanks for having me, Scott. Glad to be here.

Scott:
So, Tara, we deal with this quite a bit. Iconic short phrases that come up usually in script search reports. Now, these phrases are worth their weight in gold, and the creators of these short phrases would probably like to prevent others from using those phrases under any circumstances. But that's not always the case.

Tara:
Yeah, you're right, Scott. So let's first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under copyright law, and that isn't the case.

Scott:
That's right. Short phrases are not protectable under U.S. copyright law. According to a copyright office circular, short phrases such as slogans are unprotectable because they contain an insufficient amount of authorship, no matter how creative or catchy they may be. The copyright office will not register short phrases, even if they're novel, distinctive, or lend themselves to a play on words.

Tara:
And if a work is not protectable under copyright, then it cannot be the subject of a copyright infringement claim. But that doesn't mean that all uses of a third party's short phrase are always okay.

Scott:
That's right. While the quotation of a short phrase in books or in movies may not be actionable, the use of let's get ready to rumble in connection with the sale of goods or services could certainly bring a lawsuit.

Tara:
It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for "let's get ready to rumble" and has been quite active in policing its use.

Scott:
He's been very active in policing its use. Trademark protection is the best form of IP protection for such short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and they're used in connection with goods or services.

Tara:
Just do it is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie?

Scott:
Well, if it's a quote like ET phone home, that could be protectable for merchandise but not likely for the movie itself.

Tara:
Yeah, that's right. And the same applies to may the force be with you.

Scott:
The problem that one may encounter is when is a short phrase not a short phrase? Right. When does it become longer material such that there's a sufficient amount of authorship and thus protectable under copyright law? I like to think that if it's more than a sentence or two,

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.

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...

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:

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 ...

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,

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 adverti...

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,

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 ...

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 ...

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.

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 pro...

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 T...

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 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 Googl...

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 e...

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 ...

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,

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 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.

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 prom...

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,

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.

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 th...

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...

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 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 episodehere.

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.

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 this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the copyright infringement dispute between a paparazzo and Emily Ratajkowski, and discuss the settlement's implications for Fair Use.

Watch this episode on the Weintraub YouTube channel, here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the dispute between the original USFL and Fox, over the network's attempt to revive the football league.

Watch this episode on the Weintraub YouTube channel, here.

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...

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 no...

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...

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,

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 de...

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?

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.