The Briefing by the IP Law Blog

Weintraub Tobin

In The Briefing by the IP Law Blog, intellectual property attorneys Scott Hervey and Josh Escovedo discuss current trademark, copyright, and patent law as well as IP litigation and intellectual property in the news. read less

Trademark and Copyright Cases to Watch in 2023
2d ago
Trademark and Copyright Cases to Watch in 2023
The Supreme Court will bring finality to several IP disputes this year. Scott Hervey and Josh Escovedo provide an overview of the trademark and copyright cases to watch on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Josh: It’s always good to start off the year with an overview of the trademark and copyright cases to watch for the year. This year, we have a couple of cases that we’ve previously discussed on The Briefing when they were on appeal with the circuit courts, but we will now see the Supreme Court bring finality to the issues. Scott: This sounds like great information to me, Josh. Let’s get into it. Josh: We’ll start with Andy Warhol Foundation v. Goldsmith, which we’ve discussed at length on this show. In that case, the Supreme court will decide whether the Andy Warhol Foundation made fair use of a photo of the late artist Prince. In short, the matter at issue will address when a work is sufficiently transformative to qualify for fair use protection under the Copyright Act. In the matter below, the Second Circuit reversed the decision of the District Court and held that the Warhol work was not transformative because it maintained the “essential elements of its source material” and was not “fundamentally different and new.” This is the first time since 1994 that the Supreme Court has addressed fair use in the context of an artistic work. This is one I’ll be looking forward to. Scott: Next, we have Abitron Austria GmbH v. Hetronic International. In that case, US-based remote-control maker Hetronic International sued its former European partners Abitron Austria for trademark infringement. The Defendants in that action argued that since 97% of the sales related to the verdict were “purely foreign” and no one affiliated with the companies was based in the United States, Hetronic International needed to pursue the action abroad. Of course, Hetronic disagrees and contends that trademark law under the Lanham Act extends beyond U.S. Boards. This case should bring clarity to an issue that is constantly disputed in sizable Lanham Act cases—the materiality of foreign sales. For that reason, TM practitioners will certainly be keeping an eye on this one. Josh: Next up is my favorite case of the year. Jack Daniel’s v. VIP Products. As many of you know, this is the Ninth Circuit dispute arising out of VIP Products creation of a parodic dog toy styled like a Jack Daniel’s bottle but called Bad Spaniels. The toy is filled with comedic references related to dogs, but it’s no laughing matter to Jack Daniel’s. The case will determine the proper balance between trademark rights and free speech. The district court and the Ninth Circuit found that VIP’s use was protected by the First Amendment. Now, the Supreme Court will determine whether the Ninth Circuit made the right decision, and will provide some guidance and hopefully clarity on how these competing interests must be balanced. As we’ve discussed in the past, there is a difference in opinion on how these matters should be addressed and given the low bar for artistic relevance, it is imperative that the Court provide guidance, as these disputes will continue to arise. Scott: We’re definitely looking forward to that one. Next up, we have Genius v. Google. This action is present before the Supreme Court, but the Court has not yet granted cert. In this case, Genius sued Google for breach of contract over music transcriptions. In the petition for cert, Genius argued that the Second Circuit and the District Court wrongfully found that a preemption clause in the Copyright Act precluded its breach claim against Google and LyricFind for allegedly stealing song lyrics from its site for Google’s search result. The Second Circuit’s decision, affirming the decision below, held that Genius hadn’t shown that its claims are “qualitatively different” from a copyright claim on lyrics,
2023 IP Resolutions Start with a Review of IP Assets
Jan 27 2023
2023 IP Resolutions Start with a Review of IP Assets
The start of a new year is a good opportunity for companies to review and take stock of their intellectual property assets. Scott Hervey and Josh Escovedo talk about the importance of this review on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: As 2023 commences, it’s time for companies to take review and take stock of their intellectual property assets.  This applies to companies that have never taken serious steps to protect intellectual property, and those companies that understand the value of intellectual property and take active steps to secure and protect those assets.   We are going to talk about this on this next installment of the Briefing by the IP Law Blog Scott: Intellectual property is a company asset, just like inventory.  No CEO or CFO would think of running a company where they didn’t know the extent of company inventory.  Likewise, it makes no sense for a company not to have a firm understanding of all of its potential intellectual property assets.  Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks, or registering copyrights, a yearly review can prove beneficial. Josh: Understanding the extent of a company’s IP holdings usually start with what’s known to the company, such as all registered copyrights, trademarks or patents, domestic and foreign.  After compiling a list of those IP assets, the next step would be to review what the company is using and compare that to the list of registered or pending IP.  For trademarks, a good place to start is the company’s marketing and promotional materials, website, mobile app and social media.  If these materials show use of trademarks, logos, or slogans that are not already the subject of a trademark registration or application, then these marks should be cleared for use to prevent unintended liabilities, and they should be considered for possible registration. Scott: Don’t overlook company social media accounts, domain names and toll-free numbers, which may also serve as potential trademarks.  And be sure to confirm that all domain names and social media accounts are registered to the company; you would be surprised at how many times a domain name or social media account is registered to an individual company employee and not the company itself.  Also, if the company has changed the graphic user interface to any of its technology products or has changed product packaging, point of sale displays, or product design, these may also be protectable trade dress. Josh: When looking into company assets protectable under the federal copyright laws, one should check the company’s website, marketing materials, manuals, YouTube videos, podcasts, posted content on Instagram, TikTok and the like, photos, software, blog posts, articles, white papers, etc.  Although the cost benefit analysis of securing protection may result in a conclusion that registration does not economically make sense for every single piece of content, the company should at least maintain inventory of its copyrightable works. Scott: A company should always be aware of any new inventions under development, and its good practice to investigate the status of any inventions developed by company employees during the past year.  Such inventions may be protectable under federal patent laws.  An inventor must secure a patent application within a very short period of time in order to prevent the work from falling into the public domain.  Companies that routinely produce new inventions should put into place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public. Josh: In addition, a company should take stock of those items that it considers proprietary trade secrets.  Trade secrets are items not generally known by the public but ha...
The Strength of a Trademark
Jan 22 2023
The Strength of a Trademark
Trademarks perform a number of important functions. Scott Hervey and Josh Escovedo discuss the spectrum of trademark strength in this episode of The Briefing by the IP Law Blog. Watch this episode here.   Show Notes: Scott: Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog Scott: Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001. Josh: In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share. Scott: Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse. Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo.  A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell.  As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark. Scott: And while it’s true that a trademark can be anything, not everything can and should be a trademark. Josh: That’s right Scott.  There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable. Scott: Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individuals consent  Also, marks which consist or comprise of a portrait of a deceased president of the United States are not registrable during the life of the president’s widow except by written consent of the widow  In addition, certain organizations, by acts of Congress, have been granted exclusive rights to use certain marks.  For example, the United States Olympic Committee has been granted exclusive right to use a number of “Olympic” symbols, marks and terms Josh:
Viacom Wins Trademark Dispute Over MTV’s ‘Floribama Shore’
Jan 13 2023
Viacom Wins Trademark Dispute Over MTV’s ‘Floribama Shore’
An 11th Circuit Opinion in the 'Floribama Shore' trademark case provides guidance on establishing artistic relevance under the Rogers Test. Scott Hervey and Josh Escovedo talk about this case in this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Scott: Despite challenges to the application of the Rogers test outside of traditional artistic works, the Rogers test remains a valuable defense to TV and movie producers sued for trademark infringement. Establishing that the producer’s use of the allegedly infringing mark has artistic relevance is one of the two factors of Rogers and a recent 11th Circuit opinion cementing MTV’s win over the use of Floribama Shore as the title of a docu-series shows provides guidance on steps producers should take in order to establish the existence of artistic relevance. Scott: MTV FLORIBMA SHORE is the title of an MTV docu-series modeled after the JERSEY SHORE franchise.  The series purports to celebrate youth culture, profiling a summer of fun for eight young adults in the Florida panhandle. The Flora-Bama Lounge is a restaurant and marina facility located on the Florida Alabama border that has been in operation since 1964.  The owners of the lounge were not happy with MTV’s use of FLORIBAMA as the title of its series, especially after MTV held a few casting sessions at the Flora Bama Lounge, and sued for trademark infringement. Josh: In the district court case MTV moved for summary judgment which was granted. The owners of the Flora-Bama lounge appealed to the 11th circuit. Scott: In the 9th Circuit (as well as the 2nd, 5th, 6th and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e, use of a brand within a movie, TV series, video game, etc., including as part of the title of an expressive work is the 2nd circuit’s test from the 1989 case of Rogers v. Grimaldi. The Rogers test was adopted by the 9th Circuit in Mattel inc v MCA Records (better known as the “Barbie Girl” case). Under the Rogers test, the use of a third-party mark in an expressive work does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Under the Rogers test, the first inquiry is whether the use of the third-party mark has “some artistic relevance”. The threshold for this test is extremely low; basically, if the level of artistic relevance is more than zero, this is satisfactory. If there is greater than zero artistic relevance in the use of the third-party mark, the next analysis is whether the use of the third-party mark explicitly misleads as to the source or content of the work. Josh: In its opinion the court goes into great detail over how MTV eventually chose the title to its series.  MTV wanted to build out the Jersey Shore franchise like the Real Housewives, by establishing multiple series in different locations.  MTV began to develop a seventh Shore series, this one focused on Southern beach culture Scott: MTV commissioned a survey of 300 young people familiar with the region to measure awareness and perceptions of the culture and nightlife in various beach towns in the “gulf Shore” region spanning from Biloxi, Mississippi, to Panama City Beach, Florida. The report noted the term “Florabama” to describe the region. Of the 300 people surveyed, about 34% had heard of the term “Flora-bama,” with half of the 34% identifying it as the bar and the other half identifying it as the region.  The filming location for the series was Panama City Beach, 100 miles from the lounge.  An MTV executive testified that the selection of MTV ‘Floribama Shore’ was the title of the series was driven by finding a title, like Jersey Shore, that would “define the subculture” featured in the series,
The Yonays Take the First Sortie in Copyright Fight With Paramount Over Top Gun Maverick
Dec 30 2022
The Yonays Take the First Sortie in Copyright Fight With Paramount Over Top Gun Maverick
The heirs of the author who wrote an article upon which "Top Gun" is based, claims the film's sequel is an infringing derivative work. Paramount has since filed a motion to dismiss the case. Scott Hervey and Josh Escovedo discuss this on The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Scott: We previously reported on the copyright lawsuit filed by the heirs of the author who wrote an article upon which Top Gun is based alleging that “Top Gun Maverick” is an infringing derivative work. Paramount recently filed a motion to dismiss, arguing that the sequel to the 1986 motion picture, Top Gun, does not infringe the copyright in Ehud Yonay’s magazine article. The District Court denied Paramount’s motion to dismiss. We are going to talk about that on this installment of the Briefing…by the IP law blog. Scott: In May 1983, California magazine published the article Top Guns, by Ehud Yonay. This article was an inside look at the real Navy Fighter Weapons School Top Gun based out of Miramar California. When the article was published, it was optioned and in the credits for Top Gun Yonay is credited on the original movie as a writer of the magazine article. On January 23, 2018, the Yonays properly availed themselves of their right to recover the copyright to this article by sending Paramount a statutory notice of termination under Copyright Act, and then filing it with the Copyright Office.as we have discussed previously on this program, subject to the satisfaction of certain conditions, Section 203 of the Copyright Act permits authors or their successors to terminate copyright assignments and licenses that were made on or after January 1, 1978. Upon termination, all rights in the work that were covered by the grant revert to the author, however any derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after it is terminated, but this privilege does not extend to the preparation of other derivative works after termination. Josh: Paramount filed a motion to dismiss, arguing that that the works are not substantially similar because the Yonay article is a work of unprotectable fact.  In order to state a claim for infringement a plaintiff must show substantial similarity between the works’ protected elements.  Determining whether works are substantially similar involves a two-part analysis consisting of the ‘extrinsic test’ and the ‘intrinsic test.’” The extrinsic test “assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, Scott: In its motion to dismiss Paramount argued that in applying the extrinsic test and by filtering out the elements that are not protected under copyright law - that is facts, ideas, scenes faire (which are situations and incidents that flow necessarily or naturally from a basic plot premise) and stock elements - the two works are not substantially similar.   In its motion to dismiss Paramount argues that all elements that are alleged to be similar - the history and operations of the “Top Gun” academy; that the pilots pull off risky aerial maneuvers, that manner of combat training and the tactical discussions the pilots have; descriptions and depictions of fighter jets, including their exorbitant cost; pilots doing push-up exercises; pilots’ use of “call signs” as nicknames and depictions of camaraderie amongst pilots, including bar excursions and games —are reported in the Article as factual. Josh: As we predicted, it seems that Yonay’s counsel were ready for Paramount and had evasive maneuvers ready to go.   In reading the district court’s denial of Paramount’s motion to dismiss, the key argument which resonated with the court was, essentially, that it would be contrary to 9th Circuit precedent to dismiss Yonay’s case at such an early stage.  Because the analytical dissection required to separate protectable fro...
After 70 Years, Supreme Court Will Once Again Weigh in on The Exterritorial Reach of Lanham Act
Dec 23 2022
After 70 Years, Supreme Court Will Once Again Weigh in on The Exterritorial Reach of Lanham Act
The U.S. Supreme Court will weigh in on the reach of the Lanham Act and whether it can protect against the infringement of a U.S. trademark in a foreign territory. Scott Hervey and Josh Escovedo discuss this case in this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Scott: What’s the reach of the Lanham act? Can it protect against the infringement of a U.S. trademark in a foreign territory? The U.S. Supreme Court is taking up the appeal of a 10th Cir case of Abitron Austria GmbH v. Hetronic International, Inc. to hopefully shed light on the matter. This is what we are talking about on this installment of the Briefing by the IP Law Blog. Scott: Here are the underlying facts of Abitron Austria GmbH v. Hetronic International, Inc. Hetronic International, Inc., a U.S. company, manufactures radio remote controls—used to remotely operate heavy-duty construction equipment.  The Defendants distributed Hetronic’s Products in Europe. The distributor relationship deteriorated, and the Defendants began manufacturing their own products—identical to Hetronic’s—and selling them under Hetronic. Brand in Europe. Hetronic sued Abitron in the U.S., and a jury in the Western District of Oklahoma awarded Hetronic over $100 million in damages, most of which related to Defendants’ trademark infringement relating to sales outside of the US. Then on Hetronic’s motion, the district court entered a worldwide injunction barring Defendants from selling their infringing products.  On appeal to the 10th Circuit, the defendants insist that the Lanham Act’s reach doesn’t extend to their conduct, which generally involved foreign defendants making sales to foreign consumers. Josh: The Lanham Act governs federal trademark and unfair competition disputes. It subjects to liability any person who uses in commerce any . . . “colorable imitation of a registered mark,” or “[a]ny person who . . . uses in commerce any” word, false description, or false designation of origin that “is likely to cause confusion . . . or to deceive as to the affiliation,” origin, or sponsorship of any goods.  the Act defines commerce broadly as “all commerce which may lawfully be regulated by Congress. The sole Supreme Court case on the exterritorial application of the Lanham Act is the 70-year-old case of Steele v. Bulova Watch Co., That case involved a Lanham Act claim brought by the Bulova Watch Company, against Sidney Steele, a U.S. citizen residing in Texas. Using component parts he had procured from the United States and Switzerland, Steele assembled watches in Mexico City and branded them ‘Bulova’. The “Bulova Watch Company’s Texas sales representative received numerous complaints from retail jewelers in the Mexican border area [of Texas] whose customers brought in for repair defective ‘Bulovas’ which upon inspection often turned out not to be products of that company.  The Supreme Court held that Steele’s activities were covered by the Lanham Act. The fact that [Steele] affixed the mark ‘Bulova’ in Mexico City rather than in the US was not determinative..” The Court explained that Steele’s “operations and their effects” were “not confined within the territorial limits of” Mexico. Steele had bought components for his watches in the United States.  And Steele’s watches filtered through the Mexican border into the US,” and those “competing goods could well reflect adversely” on Bulova’s “trade reputation in markets cultivated by advertising here as well as abroad.”. The Court further noted that because Steele did not have trademark rights to the “Bulova” mark under Mexican law, applying the Lanham Act to his conduct would not create any conflict with foreign law. Scott: Presently a number of federal circuits have different frameworks for the exterritorial application of the Lanham Act.  The 10th circuit ended up adopting the framework from the First Circuit's McBee v. Delica Co. Under McBee,
Jack Nicklaus Companies Landed Hole-In-One With Court’s Recent Injunction
Dec 16 2022
Jack Nicklaus Companies Landed Hole-In-One With Court’s Recent Injunction
In this 100th episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo talk about a company founded by Jack Nicklaus that was awarded a preliminary injunction enjoining him from using his name, image, & likeness in commercial endorsement deals. Watch this episode here. Show Notes: Scott: A company founded by Jack Nicklaus, Nicklaus Companies, LLC has been awarded a preliminary injunction which enjoins Jack Nicklaus from using his name, image and likeness in commercial endorsement deals.  The judge who entered the ruling called it awkward, but its an interesting look at the interplay between non-compete clauses and the transfer of name, image and likeness rights.  We are going to discuss this case on this installment of the briefing by the IP law blog. Scott: In 2007, Jack Nicklaus and GBI Investors, a company owned and controlled by Jack Nicklaus, entered into an agreement with Nicklaus Companies, LLC. a company formed by real estate magnate Howard Milstein, whereby for $145m Nicklaus Companies purchased certain assets of GBI which included substantial portfolio of trademark registrations and applications related to Mr. Nicklaus’ name and signature and “Golden Bear” nickname in the United States and various other countries around the world - more than 600 in the US and 50 other countries.  Also included in the purchase was the exclusive right to the golf course design services rendered by GBI and marketing, promotional and branding businesses of GBI, which included the right to use Nicklaus’s name, image and likeness. The complaint alleges that Nicklaus Companies because the sole owner of and the rights to use all of the intellectual property related to Jack Nicklaus. GBI and Mr. Nicklaus became members of the Company, and Mr. Nicklaus became a manager. Josh: In 2017 Jack Nicklaus retired from his day to day involvement with Nicklaus Companies but, according to the complaint, he still provided services on Nicklaus Companies or its subsidiaries when required. However, the complaint alleges that after Jack Nicklaus retired he repeatedly participated in deals for the use of his name, likeness and trademarks, including personal endorsements outside of the Nicklaus Companies which included Jack Nicklaus being paid to promote a European Tour golf tournament, which included the tournament’s right to use certain Nicklaus IP.  The complaint also alleges that Jack Nicklaus attempted to steer a Nicklaus company opportunity for a marketing and endorsement relationship to a one-off personal appearance deal for his own personal benefit to the detriment of the Nicklaus Companies.  The complaint also alleges that Nicklaus is directly competing with the Nicklaus Companies for golf course design projects and he is personally negotiating to renew his endorsement deal with Rolex. Scott: In the plaintiff’s motion for the temporary restraining order, the plaintiff argues that the 2007 transaction resulted in the purchase of all   golf course design services branded and identified under the Nicklaus, Jack Nicklaus and Jack Nicklaus Signature brands, the various marketing, promotional, and branding activities involving the use and licensing of Jack Nicklaus’ persona endorsements, other commercial rights to publicity, and intellectual property related to his identity and history as a recognizable public figure.  The transaction documents included a purchase agreement whereby GBI transferred the assets, rights and business interests to Nicklaus Companies, a non-compete agreement that Jack Nicklaus signed personally which restricted him from competing with the plaintiff, including providing his personal services as a spokesman or authorize the promotional use of his name or likeness for the business, products or services in competition with Nicklaus Companies for as long as GBI retains an ownership interest in the company, sufficient to elect at least two (2} members of the Board of Managers,
The Sneakerhead Breakup of the Century – Yeezy and Adidas
Dec 9 2022
The Sneakerhead Breakup of the Century – Yeezy and Adidas
Adidas, which manufactures and sells the wildly popular "Yeezy" line of shoes in partnership with rapper Kanye West, recently terminated the relationship after anti-Semitic statements by the star. In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the trademark and contract issues that Adidas is navigating with shoe designs and future related designs. Watch the video here. Read the Adidas press release here. Show notes: Josh: Following its split from rapper Kanye West, Adidas has announced that it owns the designs formerly associated with the Yeezy mark. We will be discussing how and why that is possible on this installment of the Briefing by the IP Law Blog. Following a personal meltdown that included various antisemitic statements, Kanye West has been abandoned by a variety of his partners and representatives. Among those partners is Adidas, the company that makes and distributes his highly sought after Yeezy shoes. And when I say highly sought after, I mean that these shoes are nearly impossible to get for retail price. If you want a pair, unless you have a connection, you probably have to buy them on the aftermarket. Nonetheless, while the shoe represents a golden ticket for Adidas, Kanye West’s behavior left the company with no choice but to cut ties and move on. But this left a lot of people wondering, would Adidas continue to sell its holy grail of shoes? And more importantly, could Adidas continue to sell the shoes? Scott: That really comes down to a couple of issues. First, can Adidas continue to market shoes in connection with the Yeezy trademark, assuming that it wanted to? The answer to that question is no. That trademark is owned by Kanye West, and presumably, when Adidas terminated its relationship with West, it consequently terminated its license to utilize West’s intellectual property. Josh: That’s right. And the second issue is whether Adidas can continue to use past shoe designs, shoe designs that have been created but not yet released, or shoe designs similar to those that consumers have come to expect from the Yeezy brand. Now that would generally depend on a couple of things. First, it would depend on who is actually coming up with the designs. If Kanye West were the party who came up with the designs and he had licensed the right to use those designs to Adidas, it is possible that Adidas would no longer be able to exploit the intellectual property. In fact, Kanye West was responsible for many, if not all, of the designs. But, that’s where the second thing comes into play. Irrespective of who created the designs, if the contract between Kanye West and Adidas clearly stated that Adidas is the owner of the designs, that would be dispositive. Scott: And it turns out that’s the case. Adidas has come out and said that its contract with West provides that Adidas is the owner of the shoe designs. Accordingly, while Adidas cannot use the Yeezy trademark, and it probably wouldn’t want to as the mark has been significantly tarnished over the last few weeks, Adidas is free to continue selling prior designs and releasing new designs of a similar spirit, the latter of which it would probably free to do anyway. Josh: I suppose this is a prime example of one of the reasons why a company responsible for distribution of a product would want to maintain rights to the designs. It is an extreme example, but it is an example nonetheless. If Adidas had not reserved the rights to the design, and it were not the creator, it would be in a position where it would be unable to continue marketing its wildly successful product. Instead, because of prudent contracting, Adidas is able to do so. Scott:  That’s right. Still, Adidas has said that it will cease production of all Yeezy-related products for the time being. To borrow a term from Disney, I suspect they’ll be putting these back in the Vault and bringing them out at an opportune mom...
Vogue Sues 21 Savage and Drake Over Imitation Vogue Cover Marketing Campaign
Dec 2 2022
Vogue Sues 21 Savage and Drake Over Imitation Vogue Cover Marketing Campaign
Vogue Magazine is suing 21 Savage and Drake after they created mock Vogue Magazines to market their new album. Scott Hervey and Josh Escovedo discuss the dispute on this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Josh: Conde Nast, the publisher of Vogue magazine, filed a Complaint against Drake and 21 Savage in the United States District Court for the Southern District of New York, alleging claims under the Lanham Act concerning Drake and 21 Savage’s promotion of their recent collaboration album Her Loss, which was released on November 4. In the Complaint, Conde Nast alleges that Drake and 21 Savage ran a deceptive campaign and utilized Vogue’s reputation by creating fake Vogue magazine covers to promote the album. According to the Complaint, they even thank editor-in-chief Anna Wintour for her support. Scott: The complaint also includes allegations that Drake and 21 Savage misled the public into thinking the fictitious Vogue covers were from a real issue that would have been released on October 31. Conde Nast has been clear that none of this promotion was authorized by the company, especially not the alleged distribution of copies throughout North America, or the placement of so-called counterfeit covers along streets and buildings in various cities. The Complaint also takes issues with the fact that Drake and 21 Savage have posted similar content to more than 135 million social media followers. Josh: One of Drake’s posts featuring the faux Vogue ad included a caption that states, “Me and my brother on newsstands tomorrow!! Thanks, @voguemagazine and Anna Wintour for the love and support on this historic moment. ‘Her Loss’ Nov. 4th.” Conde Nast was obviously displeased since it has been using the mark in commerce since at least 1892, and in connection with digital advertising since 1998. It is, without question, one of the most well-known fashion publications in the world. Surely it is that reputation that led to Drake and 21 Savage using this idea for promotion. Scott: According to Conde Nast, the campaign has created significant confusion among the public, as well as the media, with several media companies actually believing that the cover feature was real. As a result, they even ran stories about the artists landing the cover of Vogue for the album. Josh: Making matters even more significant, Drake and 21 Savage’s public relations team sent emails announcing that copies of the putative Vogue magazine would be handed out in specific countries, and then, according to the Complaint, they proceeded to distribute a near-exact reproduction of the October Vogue magazine, including Vogue’s copyrighted content, with a Drake and 21 Savage cover in those areas. There were, of course, some pages that had been changed to include superimposed promotions for Her Loss on the pages or to include photos of Drake. Scott: According to Conde Nast, its attorneys reached out to the Defendants and sent cease-and-desist demands prior to filing suit, but its warnings were not heeded. The Complaint includes claims for trademark infringement, counterfeiting, false designation of origin, unfair competition, trademark dilution, false advertisement, and other violations of NY law. Josh: Most recently, Conde Nast moved for and obtained a temporary restraining order precluding Drake and 21 Savage from using fake Vogue maagzines and covers or using the likeness of its editor-in-chief to promote Her Loss, with the Court expressly finding Conde Nast has a likelihood of success on the merits of its claims. The order stated that the rappers are “Confusing consumers about the origin, sponsorship, and approval of the bogus Vogue cover.” The Court also directed Drake and 21 Savage to appear before the Court on November 22, 2022 to show cause as to why the restraining order should not convert to a preliminary injunction for the duration of the case.
Law Firm’s Suit Against Namesake Provides Two Important Trademark Lessons
Nov 23 2022
Law Firm’s Suit Against Namesake Provides Two Important Trademark Lessons
A law firm has filed a trademark infringement lawsuit against its namesake. Scott Hervey and Josh Escovedo discuss this case in this installment of The Briefing by the IP Law Blog. Watch this episode here.   Show Notes:  Scott: Lewis Brisbois Bisgaard & Smith, LLP is suing Lewis Brisbois Bisgaard & Smith, LLP in a Texas federal court for trademark infringement. No, this is not law firm schizophrenia. But it is a weird case that may exemplify the strength of common law trademark rights. Scott: Lewis Brisbois Bisgaard & Smith is a well-regarded national law firm with 1,600 lawyers across many states, including Texas. Since 2002 Lewis Brisbois has operated under the business name Lewis Brisbois Bisgaard & Smith, and since 2009 the law firm has operated an office in Texas. The firm also owned a registered trademark for Lewis Brisbois Bisgaard & Smith, but apparently, that trademark registration went abandoned in 2020. This fact is a plot point later on in our story. Josh: So who is this other Lewis Brisbois Bisgaard & Smith. Scott: Yes, it’s time for this weird twist.  Michael Bitgood and Richard JonesMay 26, 2022, Bitgood filed a registration for a domestic limited liability partnership, “Lewis Brisbois Bisgaard & Smith, LLP” in the Office of the Secretary of State of Texas. Bitgood listed the services as mediation and related services. They then filed an assumed name certificate in the Office of the Secretary of State identifying the Bitgood Entity’s assumed name as “Lewis Brisbois Bisgaard & Smith.”  I am sure you are asking why would Bigtood and Jones do this. Well, it seems that the law firm represented some third parties to defend an unrelated case where the plaintiffs were Bitgood and Jones. After Bitgood and Jones formed their entity, they amended the complaint and added their new entity, Lewis Brisbois Bisgaard & Smith, as a plaintiff and then added the law firm and the law firm’s lawyer handling this other case as defendants.  Against the law firm and its lawyer, Bitgood, Jones and the Bitgood entity…the other Lewis Brisbois Bisgaard & Smith…allege that they are using the Bitgood Entities name in an illegal and unauthorized manner reasonably calculated to create mass confusion and damage. Josh: I think my head is about to explode. Let me see if I get this right.  Bitgood and Jones sued some third parties. Lewis Brisbois Bisgaard & Smith represent these third parties in the lawsuit.  Bitgood and Jones, then…I assume thinking it provides them with some type of strategic leverage in their underlying lawsuit, form an entity in Texas, Lewis Brisbois Bisgaard & Smith, LLP, they then add that entity as a plaintiff in their first lawsuit and add the law firm and lawyer as defendants claiming, essentially, trademark infringement.   Scott: You have it correct. I am sure you are asking yourself, why would they do that?  Well, there was a clue to that in Bitgood and Jones’ amended complaint. They claimed that the law firm failed to renew their filing with the Texas Secretary of State, which is why they were able to file their incorporation. This seems to be part of some plan to cause the law firm to be unable to represent the defendants in the underlying lawsuit. Josh: So going back to your lead-in for this story, I assume the law firm filed a trademark infringement lawsuit. Scott: That’s right, they did.  And Bitgood and Jones filed a motion to dismiss. Apparently Bitgood and Jones thought they hit the pot of gold at the end of the rainbow when they discovered that the law firm’s federal trademark registration went abandoned on July 10, 2020.  But, as you know, Josh, that’s not the end of the story. Josh: No, it isn’t. Bitgood and Jones failed to consider the common law trademark rights the law firm has in its name. Scott: Trademark rights stem not from the registration of a mark but from actual use in commerce. While some civil law nations follow the “first to file” rule,
Cardi B Makes Money Moves with the Jury and Prevails in IP Trial
Nov 18 2022
Cardi B Makes Money Moves with the Jury and Prevails in IP Trial
Cardi B was cleared of liability in an action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. Scott Hervey and Josh Escovedo discuss this in this installment of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Josh: Rap star Cardi B has been cleared of liability by a California jury in the Central District in the action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: On October 21, 2022, a federal court jury found Cardi B was not liable for misappropriation of a man’s likeness by using his back tattoo on the cover of her 2016 Gangsta Bitch Music Vol. 1 mixtape to make it look as if he were performing a sex act on Cardi. This all began in 2017, when Kevin Michael Brophy, a tattoo model and marketing manager for surf and skate company RVCA, filed suit against Cardi over the aforementioned mixtape cover after sending a cease-and-desist letter that went unanswered. According to Brophy, the tiger and serpent tattoo on the model on the cover resembles his own and constitutes a misappropriation of his likeness under Civil Code section 3344 and false light invasion of privacy. Brophy claims that he was angry because “It looks like I’m giving oral sex to somebody that’s not my wife, or somebody that’s not my partner, and an image that I never signed off on, ever. Being a father of two and a devoted husband and a man of faith as well, this goes against everything that I stand ford, and I would never ever sign off on something like this.” Scott: Brophy claims that he suffered shame, embarrassment, and humiliation after learning that portions of his tiger back tattoo had been overlaid onto the back of the black model featured on the cover of Cardi’s 2016 mixtape. For those reasons, he sought compensatory, punitive, and disgorgement of profits from the mixtape. Josh: But irrespective of the claimed damages, the jury ultimately concluded that Cardi B was not liable to Brophy. This came after hearing testimony from Brophy and his wife and his alleged humiliation and concerns, as well as testimony from Cardi and her former manager who stated that the model on the mixtape cover was not Brophy and that the image had been substantially altered, giving rise to First Amendment protection under the transformative use doctrine. The jury also hear from the graphic designer who edited the image. He said that he found the back tattoo somewhere on the internet after searching for a backpiece tattoo.” He also claimed that he made several changes to it, removing certain pieces, color correcting, and rearranging other parts of the tattoo before overlaying the image onto the model’s back. Scott: During closing argument, Plaintiff’s counsel argued that the defense was continuously trying to explain how the tattoo was transformed, yet they denied using Brophy’s likeness. According to Plaintiff’ counsel, if they weren’t using Brophy’s likeness, then they wouldn’t have had to argue about how they had changed it. Plaintiff’s counsel argued that Brophy’s likeness was material to the vision for the mixtape and that Brophy’s back tattoo is what makes Cardi look strong and in control. Of course, the jury obviously rejected these arguments, ultimately finding in favor of Cardi. Josh: That’s right. But here’s a question for you Scott, even though this is taking place in the Ninth Circuit, if the law from the recent Illinois District Court case involving Randy Orton applied, would the tattoo artist have a claim against Cardi for copyright infringement? I know we would have to evaluate the merits of Cardi’s fair-use defense in greater detail, but let’s assume for the sake of the discussion that it were not fair use. Would Brophy’s tattoo artist have a claim even though it seems Brophy ...
Tattoo Artist Copyright Win Will Create Uncertainty Over Celebrities with Tattoos
Oct 21 2022
Tattoo Artist Copyright Win Will Create Uncertainty Over Celebrities with Tattoos
As Scott Hervey previously wrote on the IP Law Blog, a tattoo artist won a copyright lawsuit against a video game publisher for showcasing an athlete with their tattoo design in a game. Scott and Josh Escovedo discuss the case on this episode of The Briefing. Watch this episode here. Read Scott's article here. Show Notes: Scott:  A jury in the district court for the southern district of Illinois in the case of Alexander v. Take-Two Interactive Software found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take Two Interactive infringed the tattoo artist’s copyright in the tattoos. I think the trial court, and the court of appeals that rejected Take Two’s defenses- defenses that won the day in the US District Court for the Southern District of NY in Solid Oak Sketches v 2k Games-got it all wrong and this decision could have wide-ranging implications.  We are going to talk about this on the next installment of the briefing by the IP law blog. Scott: So here is the history of this case. Tattoo artist Catherine Alexander sued Take-Two and 2K Games in the U.S. District Court for the Southern District of Illinois for depicting World Wrestling Entertainment wrestler Randy Orton in the video game WWE 2K. On a motion for summary judgment, Take 2 made the same arguments that garnered it a win previously Solid Oak Sketches v 2k Games - (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of WWE 2K Josh: Alexander testified in 2009, Alexander contacted WWE's legal department to negotiate about a possible faux sleeve product depicting her tattoo works. A WWE representative laughed at her and stated she had no grounds and that they could do what they wanted with Orton's images because he was their wrestler. WWE then offered Alexander $450 for extensive rights to use and produce the tattoo designs on WWE products. Alexander declined the offer and advised WWE that she did not grant it any permission to copy, duplicate, or otherwise reproduce any of her designs. Defendants have released and promoted wrestling video games titled "WWE 2K16", "WWE 2K17", and "WWE 2K18" which feature Ortons Scott:  In the Solid Oaks case, as to the implied license defense, the court found that the NBA players featured in the video game had implied licenses to use the tattoos as elements of their likenesses and the video game publisher’s right to use the tattoos in depicting the players derives from these implied licenses.  A crucial element of the court’s finding - the tattoo artist knew their subject was likely to appear “in public, on television, in commercials, or in other forms of media.  Alexander testified that she has never given permission to any of her clients to use copies of her tattoo works in videogames and argued that the WWE and Take 2 are conflating Orton’s rights to his own likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as in video games Josh: In the ruling on the motion for summary judgment, the Alexander court found that it wasn’t’ clear whether Alexander or Orton actually every discussed whether and to what extent Orton had permission to copy and distribute the tattoos, and whether any implied license would include sublicensing rights, and denied summary judgment on this affirmative defense. Scott: The court also found that the use was not fair use. The key to a finding of fair use is whether the new use is transformative.  Does the new work merely "supersedes the objects" of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative."
Titania v. She-Hulk: Trademark Infringement in the Marvel Universe
Oct 16 2022
Titania v. She-Hulk: Trademark Infringement in the Marvel Universe
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a recent episode of Marvel's "She-Hulk: Attorney at Law" and the accuracy of a trademark infringement case featured on the show. Watch this video here.   Show Notes: Josh: The last few weeks, every Thursday night in my household, we sit down to watch the latest episode of She-Hulk on Disney+. Full disclosure, we consume every bit of content that the Marvel cinematic universe puts out. I have been waiting a few months for the release of She-Hulk though, since the main character Jennifer Walters is an attorney and a graduate of UCLA School of Law, not unlike myself. But what I didn’t expect was for the content of a particular episode to become my choice of topic for this program. A few weeks ago, at the end of that week’s episode of She-Hulk, Jennifer Walters was served with a complaint by a process server at her home, and when she removed the pleading from its folder, Walters learns that she had been sued by an influencer from an earlier episode for trademark infringement. As you can imagine, at that point, I could not wait for the next episode of the show. Scott: Although we are obviously big fans of intellectual property, it isn’t often that a trademark dispute is at the center of a movie or television shows or plot. This instance in particular was unique because it constituted the focal point of the entire episode and walked the viewers through an abridged version of the process. Josh: The next episode picked up exactly where the prior episode had left off, with Walters being in possession of the recently served complaint. She went to her full-service law firm and retained an attorney who specialized in trademark litigation. At first, I was  little put off by a comment made by another one of the characters about how Walters should have already registered She-Hulk as a trademark because she should know that whoever files first gets the mark. Many of you probably already know why this irked me But if you don’t, it is because the United States is not a first to file country. Some countries are, but the United States focuses on first use, not first to file. Scott: These are the kind of things that would only bother an intellectual property aficionado. That said, it isn’t uncommon for television shows or movies to take certain liberties with things in the interest of creating a more interesting final product. Josh: That’s true, and while something like that wouldn’t necessarily bother me in most instances, when it’s something that you specialize in, I feel like it is a little harder to accept. That’s probably how many medical professionals feel when they watch shows like Grey’s Anatomy I’m sure. Anyway, my disappointment didn’t last long, because Walters subsequently filed a counter claim against Titania, the influencer who appropriated her name, seeking to enjoin her from utilizing She-Hulk in commerce, because Walters used the mark first. On that basis, Walters moved for summary judgment, which was heard the next day, which is at least 365 times faster than any motion for summary judgment I’ve ever filed or opposed. Scott: Although the show reflects an unrealistically streamlined legal process, it did manage to stay reasonably true to the requirements of such a dispute. Specifically, the remainder of the episode focused on Walters proving that she was the first to adopt and use the She-Hulk Mark. Josh: But it did once again stray from true trademark law in that Walters utilized her online dating profile, where she adopted the She-Hulk persona after failing to get any dates as Jennifer Walters, as evidence of her use of the SheHulk mark prior to Titania’s filing of a trademark application. Of course, such use would not suffice in a real trademark proceeding since such use does not constitute use in commerce, unless her dating profile somehow served as marketing collateral for her super...
Defamation by Docudrama – Inventing Anna
Oct 7 2022
Defamation by Docudrama – Inventing Anna
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a defamation dispute between Rachel Williams - a victim of con artist Anna Sorokin - and Netflix, over her portrayal in the docudrama "Inventing Anna." Watch this episode here. Show Notes: Scott: Netflix finds itself mired in yet another defamation and false light lawsuit, this one brought on by its portrayal of Rachel Williams, the Vanity Fair photo editor who’s friendship with Anna Delvey -  who passed herself off as German heiress Anna Sorokin.  Williams’ complaint raises some interesting questions about the portrayal of Williams in the program.  We are going to discuss this lawsuit on the next installment of the Briefing by the IP Law Blog Scott: Rachel Williiams does not come across well in the Netlix program, Inventing Anna.  Rather, she comes across as a privileged, freeloader, who sponges off of Sorokin and then abandones Sorkin when Sorkin’s real situation comes to life. So, let’s talk about what Williams will have to establish in order to move her claim forward. Josh:  Williams. brings claims for   defamation and false light.  For her defamation claim Williams will have to establish: that the statements were defamatory; that the statements were published to third parties; that the statements were false; and that it was reasonably understood by the third parties that the statements were of and about herf.  Since Williams is a public figure - she published a story in Vanity Fair and a book about her experiences with Sorkin - she must also prove by “clear and convincing evidence” the statement was made with “actual malice” meaning that the defendant knew the statement was false, or had serious doubts about the truth of the statement. In most states, libel is defined similarly. Scott: A false light claim is a type of invasion of privacy, based on publicity that places a person in the public eye in a false light that would be highly offensive to a reasonable person, and where the defendant knew or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the aggrieved person would be placed.  A false light claim is equivalent to a libel claim, and its requirements are the same as a libel claim, including proof of malice. So, in order for Williams to prevail on both her false light and defamation claims, she would have to demonstrate that her portrayal in Inventing Anna was (1) assertions of fact, (2) actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice. Josh:  Actual malice would be established by showing that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact. Scott: So, let’s take a look at the various portrays of Williams she claims to be actionable.  Williams notes a scene in episode 2 where Sorokin’s friend Neff Davis states or implies that Williams used to be Sorokin’s best friend, but Williams dropped her as a friend because she was jailed and could not pay for Williams’ social life and clothes.  Williams claims that these scenes are false.   Williams was friends with Sorokin because she liked her, not because Sorokin would pick up the tab, and she did not drop Sorokin as a friend because Sorokin was no longer able to pay for her social life and clothes, but rather because she discovered that Sorokin had made the fraudulent statements and promises which induced her to incur significant liabilities, and that Sorkn was a liar and a con artist.  That Sorokin never bought clothes, shoes, earrings, or a bag as gifts for Williams, who never wore Sorokin’s clothing or accessories and never told Neff that Sorokin had bought her clothes.
Paramount is Ready to Dogfight in Top Gun Maverick Copyright Lawsuit
Sep 23 2022
Paramount is Ready to Dogfight in Top Gun Maverick Copyright Lawsuit
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Paramount's motion to dismiss a copyright infringement lawsuit relating to 'Top Gun: Maverick.' Watch this episode here. Show Notes: Scott: Paramount came into the Top Gun Maverick copyright lawsuit guns hot by filing a motion to dismiss claiming that the sequel to the 1986 motion picture, Top Gun, does not infringe the copyright in Ehud Yonay’s magazine article.  We are going to talk about this… Scott: In May 1983, California magazine published the article Top Guns, by EHUD YONAY.   This article was an inside look at the real  Navy Fighter Weapons School Top Gun based out of Miramar California.  The article begins with a vivid description of  two Top Gun F14 Tomcat avaitors, Yogi and Possum, on a hop,  simulated dog fight training, against Top Gun instructors then continues with a deep dive into what makes Yogi and Possum (and other fighter pilots) tick, a  look at the Top Gun training regimen, life on base and the history of Top Gun.  When the article was published, it was optioned and in the credits for Top Gun Yonay is credited on the original movie as a writer of the magazine article Josh: On January 23, 2018, the Yonays properly availed themselves of their right to recover the copyright to the Story under the sent Paramount a statutory notice of termination under Copyright Act, and then filed it with the Copyright Office.As we have discussed previously on this program, Section 203 of the Copyright Act permits authors (or, if the authors are not alive, their surviving spouses, children or grandchildren, or executors, administrators, personal representatives or trustees) to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978 when certain conditions have been met. Upon the effective date of termination, all rights in the work that were covered by the terminated grant revert to the author, however any derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.  The Yonays sued Paramount for copyright infringement claiming that the Top Gun Maverick infringes the Yonay’s right in the original article. Scott: When we previously reported on the complaint, we stated our belief that is case is going to be about whether Maverick is actually a derivative of the article, and, more interestingly, would Maverick even infringe the article given that the article is not a work of fiction but rather a factual work.  It seems that Paramount agrees. Josh: In its motion to dismiss Paramount correctly argues that in order to state a claim for infringement a plaintiff must show substantial similarity between the works’ protected elements.  Determining whether works are substantially similar involves a two-part analysis consisting of the ‘extrinsic test’ and the ‘intrinsic test.’” The extrinsic test “assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, whereas the intrinsic test “examines an ordinary person’s subjective impressions.  Although a plaintiff must prove both to establish substantial similarity,a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury.  As such, on a motion to dismiss, the court will only consider the extrinsic test and the extrinsic test can  end a plaintiff’s infringement case  only when the similarities between the  works are either wholly due to unprotected elements, or where the amount of similar protected expression is de minimis as a matter of law. Scott: