The Briefing by the IP Law Blog

Weintraub Tobin

In The Briefing by the IP Law Blog, intellectual property attorney Scott Hervey and his guests discuss current IP issues related to trademark, copyright, and entertainment, as well as IP litigation and intellectual property in the news. read less
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Tennessee’s ELVIS Act Isn’t What You Think
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Tennessee’s ELVIS Act Isn’t What You Think
ELVIS Act —Breaking down the Ensuring Likeness, Voice, and the Image Security Act of 2024. Scott Hervey and James Kachmar from Weintraub Tobin discuss its impact on AI audio technology and how it protects musicians in the next installment of “The Briefing.” Watch this episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott: Tennessee's ELVIS Act isn't what you think. The acronym stands for Ensuring Likeness, Voice, and the Image Security Act of 2024. It's about protecting a musician's voice from AI clones. The bill was signed into law on March 21st, 2024, amid a growing concern by the music industry and musicians over AI soundalikes and deep fakes. I'm Scott Hervey from Weintraub Tobin, and I'm joined again by my partner, James Kachmar, to talk about this bill and its impact on the nascent AI audio space in this episode of "The Briefing" by Weintraub Tobin. James, welcome back to "The Briefing." James: Thanks, Scott. Scott: So, James, let's dive right into this bill and see what it does and doesn't do. So, this bill amends Tennessee's existing right of publicity statutes. Tennessee's existing law has previously provided that individuals, or in the case of a deceased individual, their estate, have a proprietary right in the use of that person's name, photograph, or likeness in any medium, in any manner. Now, one could probably have argued that likeness included voice, but this bill now makes it clear that a person's voice is among the personal property rights this statute now protects. James: Right, Scott. And in the bill, voice is defined as a sound in a medium that is readily identifiable and attributable to a particular individual, regardless of whether the sound contains the actual voice or a simulation of the voice of the individual. So essentially, a soundalike. Scott: That's right. So, let's talk about what this bill protects against. Tennessee's right of publicity statute now protects against the use of a person's name, photograph, voice, or likeness for the purpose of advertising products, merchandise, goods or services, or for the purposes of fundraising, solicitation of donations, purchases of products, merchandise, goods, or services. The bill also adds new language which provides that a person will be civilly liable If they publish, perform, distribute, transmit, or otherwise make available to the public an individual's voice or likeness with knowledge that the use of the voice or likeness was not authorized by the individual. James: So, Scott, I assume that this bill is going to put a target on AI voice companies for possible lawsuits? Scott: Yeah, it does. It absolutely does. The bill provides for civil liability for any person that distributes, transmits, or otherwise makes available an algorithm, software tool, or other technology, service, or device, the primary purpose or function of which is the production of an individual's photograph, voice or likeness without authorization from the individual. James: Scott, do I understand the bill correctly that not only the individual performer will have a cause of action, but it also gives record labels a right to sue for violations? Scott: Yeah, absolutely. That's right. The bill adds a paragraph to the section that discusses remedies for violations of the section. This new paragraph states that well where a person has entered into a contract for an individual's exclusive personal services as a recording artist or an exclusive license to distribute sound recordings that capture an individual's audio performances, an action to enforce the rights set forth, and this part may be brought by the person or individual. So, in other words, record labels. James: I'm sure there's a lot of them in Nashville, Tennessee. Scott, even though the statute does not appear to be limited to commercial advertising, previous federal court decisions have limited its scope to the advertising or promotional context.
Navigating the Legal Risks for Brands in Social Media Marketing – Part 2
1w ago
Navigating the Legal Risks for Brands in Social Media Marketing – Part 2
Safeguard your brand in the world of social media marketing, from IP infringement risks to FTC guidelines compliance.  Scott Hervey and Jessica Marlow from Weintraub Tobin continue the discussion on legal risks brands face in part 2 of our social media marketing series on “The Briefing.” Make sure to catch Navigating the Legal Risks for Brands in Social Media Marketing - Part 1. Watch this episode on the You Tube channel here Show Notes: Scott: Brands spend a lot of money on social media marketing, and that amount continues to grow. According to a recent survey, ad spend on social media is projected to reach 129 billion in 2024. However, social media marketing presents unique legal issues, not generally present in more traditional advertising. Last week, we discussed the legal risks for the celebrity endorser in social media marketing. This week, I'm joined again by my partner, Jessica Marlow, and we're going to discuss the legal risks for brands in social media marketing. I'm Scott Hervey with Weintraub Tobin; this is "The Briefing." Jessica, welcome back. Jessica: Pleasure to be back. Scott: Last week, we discussed the risks celebrities or influencers face in social media marketing. Today, we're going to talk about the risks brands face in social media marketing. Let's first talk about FTC compliance. Like influencers, brands have FTC compliance requirements. As you mentioned last week, Jessica, we did an entire episode on this. Jessica: Right, but let's review a few points because it seems that this can be one of the biggest blind spots for brands. Scott: Sure, you're right because this really is the biggest blind spot for brands. Previously, the FTC would hold an advertiser liable for misleading or unsubstantiated statements made through endorsements when there is a connection between the advertiser and the endorser. Now, the FTC has recently deleted the wording when there is a connection between the advertiser and the endorser. So generally, there's always a connection between an advertiser and an endorser because it is, after all, a marketing or a promotional message. However, the FTC pointed out that a connection is not always needed for an advertiser to be liable for an endorsement. If, for example, an advertiser retweets a positive statement made by an unrelated third party or publishes in an advertisement a positive review by an unrelated third party, those statements or reviews become endorsements for which an advertiser may be liable. The despite the lack of any connection. Jessica: Right. Then, there are performance claims. Performance claims must be for the typical result. If the results being hyped are atypical, then the advertiser must clearly and conspicuously disclose the generally expected performance in the depicted circumstances. To be effective, the disclosure must alter the net impression of the advertisement so that it's not misleading. Scott: If the brand is reposting content from a paid endorser or someone who received anything of value to make that initial post, the brand must make sure that the material connection between the brand and the endorser is conspicuously disclosed. Jessica: In boosting, upvoting, reposting, pinning, or liking consumer reviews of products, a brand should not take action that have the effect of distorting or otherwise misrepresenting what consumers think of their product. This includes suppressing or deleting negative reviews or comments. Scott: Like risks with FTC compliance, similar to influencers, brands also face IP infringement risks. In an influencer marketing campaign, a brand will hire an influencer to create content for the purpose of endorsing and promoting a product. Even though the contract between the brand and the influencer generally requires the influencer to create the original content and not use content that belongs to someone else, sometimes that doesn't happen. Sometimes an influencer may use,
The Briefing:  Navigating the Legal Risks for Brands in Social Media Marketing – Part 1
Apr 5 2024
The Briefing: Navigating the Legal Risks for Brands in Social Media Marketing – Part 1
Delve into the legal terrain of influencer marketing from IP infringement risks to FTC guidelines compliance. Scott Hervey and Jessica Marlow from Weintraub Tobin navigate the complexities of brand deals with expert insights on safeguarding your brand partnerships on this episode of “The Briefing.” Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Influencer social media marketing is big business, whether it's a brand integration on Instagram by an influencer or a long-term brand endorsement deal by an A-list movie star. Each deal is different, but there are similar issues that are apparent in all brand deals. I'm Scott Hervey with Weintraub Tobin, and I'm joined today by my partner, Jessica Marlow. Today is part one of our profile on understanding and navigating risks in brand marketing deals on today's installment of "The Briefing" by Weintraub Tobin. Jessica, welcome back to "The Briefing." Jessica: Thank you. Happy to be back. Scott: This is something we both deal with frequently from both the brand and the talent side. There are certain risks that celebrities and brands have to navigate in these types of deals. Making these risks more prevalent is the fact that we're talking about digital marketing, where things tend to move quicker. And for whatever reason, people, even marketing professionals, may sometimes believe that the laws applicable to terrestrial or regular advertising don't apply to the Internet. Let's talk about our top general risks from a talent perspective and how to deal with them. Now, we have a bunch of lawyers that listen to our podcast, and you might have a different list, and we would love to hear from you if you think we should have covered something that we didn't. But this is what we think are the top legal issues in a talent brand deal. Jessica: One of the major risks is IP infringement. Now, this is multifaceted, and the risk of infringement comes from a few different places. First, there is infringement risks that the celebrity or influencer imposes on themselves, which can happen in a few ways. The first way is by using content where the copyright is owned by a third party, for example, where a celebrity or influencer posts an image that they don't own. You've covered a few cases on "The Briefing" about this. Scott: That's right. One of the more well-known case is what is O'Neill versus Ratajkowski. While that case didn't necessarily involve brand marketing, it's a perfect example of this type of risk. In 2009, O'Neill, who was a professional paparazzi, took a photo of Ratajkowski outside of a flower shop in downtown Manhattan. Now, the photo showed Ratajkowski with her face covered by this bouquet of flowers. O'Neill subsequently registered his photograph with the Copyright Office. Now, shortly after O'Neill posted the photo online, Ratajkowski posted the photo on her own Instagram account. The photo she posted was the same, except that she added the words "Mood Forever" to the bottom of the Instagram post. Now, O'Neill, of course, sued Ratajkowski and her loan-out company for copyright infringement. Jessica: Right. And Ratajkowski tried to get out of the case on a fair use defense on a motion to dismiss, but she was unsuccessful. And this case was before the Supreme Court ruling in Warhol versus Goldsmith. Under the new fair use analysis, it's almost certain that Ratajkowski would not have had a fair use defense. Scott: Yeah, that's true. And this type of liability isn't just limited to cases where the photo that is used makes up the entire post. This type of potential liability can exist where the third-party photo only makes up a portion of the poster video. Jessica: Right. It's just not limited to photos. This could be a video or other similarly copyrighted, protected material like music or logos. Scott: Yeah, and music can be a bit tricky. You would think that almost everyone would understand that you can't just us...
Defamation by Docudrama – Inventing Anna (ARCHIVE)
Mar 29 2024
Defamation by Docudrama – Inventing Anna (ARCHIVE)
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a defamation dispute between Rachel Williams – a victim of con artist Anna Sorokin – and Netflix, over her portrayal in the docudrama “Inventing Anna.” Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Netflix finds itself mired in yet another defamation and false light lawsuit, this one brought on by its portrayal of Rachel Williams, the Vanity Fair photo editor who’s friendship with Anna Delvey –  who passed herself off as German heiress Anna Sorokin.  Williams’ complaint raises some interesting questions about the portrayal of Williams in the program.  We are going to discuss this lawsuit on the next installment of the Briefing by the IP Law Blog Scott: Rachel Williiams does not come across well in the Netlix program, Inventing Anna.  Rather, she comes across as a privileged, freeloader, who sponges off of Sorokin and then abandons Sorkin when Sorkin’s real situation comes to life. So, let’s talk about what Williams will have to establish in order to move her claim forward. Josh:  Williams. brings claims for   defamation and false light.  For her defamation claim Williams will have to establish: that the statements were defamatory; that the statements were published to third parties; that the statements were false; and that it was reasonably understood by the third parties that the statements were of and about herf.  Since Williams is a public figure – she published a story in Vanity Fair and a book about her experiences with Sorkin – she must also prove by “clear and convincing evidence” the statement was made with “actual malice” meaning that the defendant knew the statement was false, or had serious doubts about the truth of the statement. In most states, libel is defined similarly. Scott: A false light claim is a type of invasion of privacy, based on publicity that places a person in the public eye in a false light that would be highly offensive to a reasonable person, and where the defendant knew or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the aggrieved person would be placed.  A false light claim is equivalent to a libel claim, and its requirements are the same as a libel claim, including proof of malice. So, in order for Williams to prevail on both her false light and defamation claims, she would have to demonstrate that her portrayal in Inventing Anna was (1) assertions of fact, (2) actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice. Josh:  Actual malice would be established by showing that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact. Scott: So, let’s take a look at the various portrays of Williams she claims to be actionable.  Williams notes a scene in episode 2 where Sorokin’s friend Neff Davis states or implies that Williams used to be Sorokin’s best friend, but Williams dropped her as a friend because she was jailed and could not pay for Williams’ social life and clothes.  Williams claims that these scenes are false.   Williams was friends with Sorokin because she liked her, not because Sorokin would pick up the tab, and she did not drop Sorokin as a friend because Sorokin was no longer able to pay for her social life and clothes, but rather because she discovered that Sorokin had made the fraudulent statements and promises which induced her to incur significant liabilities, and that Sorkn was a liar and a con artist.  That Sorokin never bought clothes, shoes, earrings, or a bag as gifts for Williams, who never wore Sorokin’s clothing or accessories and never told
Truth Maybe Crazy, But Truth Just Got Kanye West Out of a Defamation Case
Mar 23 2024
Truth Maybe Crazy, But Truth Just Got Kanye West Out of a Defamation Case
Discover how truth became the ultimate defense in the legal battle between Cynthia Love and Kanye West. Join Scott Hervey and Eric Caligiuri from Weintraub Tobin as they unpack the court's ruling on whether displaying historical footage amounts to defamation on this episode of 'The Briefing'. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Truth is a defense to a defamation claim. So, it would be no surprise to think that displaying a recording of the way someone actually behaved at some past date would also not be defamation. That assumption was put on trial, literally, in the case of Cynthia Love versus Kanye West in the Central District of Illinois. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by Weintraub lawyer and frequent guest of "The Briefing," Eric Caligiuri, to talk about this case and the court's ruling on today's episode of "The Briefing." Eric, welcome back to "The Briefing." Eric: Good to be here again, Scott. So, Scott, can you tell us a little bit about the history of the case? Scott: Sure. Absolutely. So, in 2003, Cynthia Love appeared in a Kanye West music video for "Talking Through The Wire." Love apparently does some short dance number in a barbecue restaurant before asking West for some change. She, according to the complaint and according to the court documents, she looks unsteady and sounds slurred. Fast forward to 2022, when Netflix released a docuseries called "Jeen-yuhs," a Kanye trilogy, which included clips of Love from that music video, plus previously unreleased footage, all totaling about two minutes of screen time. Love took issue with how she was portrayed in the clips taken in that barbecue restaurant decades ago, and so she sued. Eric: The basis of her claim is that the documentary captures Love at her darkest moments, and that is not who she is now. Love bases her defamation claims on the grounds that she is not the same person now that she was in 2003 when they made the music video. Scott: That's right, Eric. That's the basis of her complaint for defamation, false light, and other causes of action. On the defendant's motion to dismiss, the court analyzed Love's defamation claim. Now, under Illinois law, to state a defamation claim, a plaintiff must present facts showing that the defendant made a false statement about the plaintiff, that the defendant made an unprivileged publication of that statement to a third party, and that this publication caused damages. Eric: Similar to California law, in Illinois, truth is an absolute defense to defamation. True statements cannot support a defamation claim. Scott: That's correct. And the court found that any allegations about Love in the "Jeen-yuhs" docuseries were true. The docuseries included real-world, real-life clips of Love without doctoring the content or adding any false material. It shows true clips of a real event. The court noted that the docuseries makes clear that the footage is from 20 years ago, and the fact that Love later turned things around does not make the footage from years earlier false. Eric: So, a defamation claim fails if the allegedly defamatory statement is a historical truth, even if it's not necessarily the current truth. Scott: That's right. If a defamatory statement is a historical truth, even if it's not currently true, it's true, and the defamation claim must fail. The "Jeen-yuhs" video accurately portrayed Love in a moment of time several decades ago. The video does not suggest that Love in this day remains in an intoxicated state or anything of that sort. The video shows a past truth without suggesting that the past is the present. The footage is historically accurate. So Love's defamation claim and false like claim fail. Eric: There were other claims, too. A violation of publicity rights and intentional infliction of emotional distress. Scott: That's right, and the court made short work of the right of publicity ca...
The Patent Puzzle: USPTO’s Guidelines for AI Inventions
Mar 15 2024
The Patent Puzzle: USPTO’s Guidelines for AI Inventions
Can AI inventions be patented? Scott Hervey and Eric Caligiuri explore recent USPTO guidance on patenting AI-assisted inventions in this installment of "The Briefing" by Weintraub Tobin.   Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Can AI inventions be patented? Can inventors use AI assistance in the creation of an invention, and can that invention be patented? On February 12, 2024, the United States Patent and Trademark Office issued guidance on the patentability of inventions developed with the assistance of artificial intelligence. I'm Scott Hervey from Weintraub Tobin, and I am joined today by Weintraub lawyer and frequent guest to the briefing, Eric Caligiuri, to discuss this new development in patent prosecution on this episode of "The Briefing." Eric, welcome back to "The Briefing." Eric: Good to be here, Scott. Scott: So, Eric, the USPTO recently issued a guidance statement that addressed the listing of non-humans on patent applications. Now, this seems to stem from the various patent applications filed by Stefan Thaler or Thaler, which lists his AI tool device for the autonomous bootstrapping of unified sciences, or DABUS, as the inventor. The USPTO denied these applications, and this denial was upheld by the Federal Circuit. Eric: Right, Scott, in the guidance, the USPTO explained that AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents. The USPTO reasoned that the US Supreme Court has indicated that the meaning of invention in the patent act refers to the inventor's conception. Similarly, the Federal Circuit has made clear that conception is the touchstone of inventorship. Conception is often referred to as a mental act or the mental part of the invention. Specifically, it is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice. Because conception is an act performed in the mind, it has to date been understood as only performed by natural persons. Scott: Eric, there has been some question about the patentability of inventions created using AI tools. The USPTO issued guidance on this issue as well. Eric: That's right. The USPTO explained that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity. Thus, patent protection may be sought for inventions created through the use of AI tools under specific circumstances. Scott: So the USPTO made it clear that inventions created through the use of AI tools are not per se unpatentable. Eric: That's correct. The USPTO said that there are no specific sections of the patent act that support a position that inventions that are created by natural persons using specific tools, including AI systems, result in improper inventorship or otherwise unpatentable. The statutes only require the naming of natural persons who invented or discovered the claimed invention. Irrespective of the contributions provided by an AI system or other advanced technology system. Scott: So, Eric, what are the circumstances under which a creator or inventor using an AI tool can claim ownership of the invention? Eric: In the context of AI-assisted inventions, natural persons who create an invention using an AI system or any other advanced system must still contribute significantly to the invention. There is no requirement for a named inventor to contribute to every claim in an application or patent. A contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent or patent application. In the event of a single person using an AI system to create an invention,
How Far Back Can You Go: Supreme Court to Decide Circuit Split on Recovery of Copyright Damages
Mar 8 2024
How Far Back Can You Go: Supreme Court to Decide Circuit Split on Recovery of Copyright Damages
How far back can a plaintiff recover damages in a copyright infringement case?  Scott Hervey and Jamie Lincenberg discuss this contested copyright law question in this installment of "The Briefing" by Weintraub Tobin. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Just how far back can a plaintiff in a copyright infringement case go in recovering damages? I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by my colleague Jamie Lincenberg. We will take a look at an important and contested question in copyright law, which is headed to the Supreme Court this spring, on today's episode of "The Briefing" by Weintraub Tobin. Jamie, welcome back, and thank you for joining us today. Jamie: Thanks, Scott. Happy to be here. Scott: Jamie, can you tell us more about the topic that we're diving into here? Jamie: Of course. In the case of Nealy versus Warner Chappell Music, the Supreme Court will be discussing the question of when the clock starts ticking in the Copyright Act's three-year statute of limitations and whether a copyright claim plaintiff can recover damages beyond the three years from when the claim was filed. The justice's decision to hear this case highlights a circuit split on the matter. The case began in 2018 when music producer Sherman Nealy filed a lawsuit against Warner Chappell Music and Artists Publishing Group. It was a run-of-the-mill copyright infringement case in which Nealy claimed that Flo Rida's 2008 song "In The Sir" featured an unlicensed sample of a 1984 track that Nealy had owned. And now, almost six years later, Nealy's lawsuit is headed to the Supreme Court to answer the unresolved questions of whether damages in a copyright case are limited to just the last three years before the case was filed or can damages go back for years, potentially dramatically increasing the amount of damages that a plaintiff can recover? Scott: The debate at the center of the case against Warner Chappell goes back to the case of Petrella versus MGM, when the Supreme Court ruled that the movie studio MGM could be sued for copyright infringement over the Scorsese-directed film "Raging Bull". Great film, by the way, even though the case was filed decades after the film had first been released in 1980, MGM argued that such a long delay was unfair, but the Supreme Court decided that the Copyright act has a three-year statute of limitations that resets with every new infringement. Jamie: Yeah, that's right. Under the court's interpretation of the law in that case, as long as copies of allegedly infringing material, whether a book or a song or movie, had been sold during the three years prior to the lawsuit, it was ripe for a copyright case. Unsurprisingly, that ruling then led to a burst of infringement cases that had been long delayed, including a high-profile lawsuit against Led Zeppelin over the very popular 1971 song "Stairway to Heaven." Scott: But with respect to the awarded damages in the Raging Bull case, the late Justice Ruth Bader Ginsburg stated that a successful plaintiff can gain retrospective relief only three years back from the time of the suit. No recovery may be had for infringement in the earlier years. Profits made in those years remain the defendants to keep. In the years since the rulings in the New York U. S. Court of Appeals for the Second Circuit have abided by that decision, and copyright accusers have not been awarded damages for any conduct past that three-year mark. In 2021, the judge of the Nealy case cited "Raging Bull" and ruled that Nealy was not entitled to damages from earlier than 2015. Nealy said he had only learned of the illegal sample in 2016 and wanted damages dating back to the song's release in 2008, and the judge cited the Supreme Court's binding precedent in "Raging Bull" that had explicitly limited damages to the three years prior. Jamie: That's true, Scott, but that's actually not the case in the US Court o...
Writers, Actors, AI: The AI Centric Changes to the WGA and SAG Agreements
Mar 2 2024
Writers, Actors, AI: The AI Centric Changes to the WGA and SAG Agreements
Delve into the new WGA and SAG contract provisions relating to AI. Scott Hervey and Jamie Lincenberg tackle the terms and changes in this installment of "The Briefing" by Weintraub Tobin. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott AI ended up being a bigger than expected part in the writers' and actors' strikes. What exactly are the new WGA and SAG contract provisions relating to AI? I'm Scott Hervey from Weintraub Tobin, and today, I'm joined by my colleague Jamie Lincenberg. We are going to talk about the AI terms and the 2023 changes to the WGA and SAG MBA on this installment of "The Briefing" by Weintraub Tobin. Jamie, welcome back to "The Briefing." Jamie Thanks. It's good to be back. Looking forward to getting into this topic with you. Scott Yeah. So, let's dive right in. So, let's first talk about the changes to the Writers Guild MBA related to AI. I think the most logical place to start is with how the WJ defines AI. So the term generative artificial intelligence, or let's call it GAI, because we don't have enough acronyms, let's call it GAI. And that generally refers to a subset of AI that produces content based upon learned patterns like Chat GPT, DALL-E, and Llama, and it does not include traditional AI technologies such as those used in computer-generated imagery like CGI and visual effects. Jamie Scott, the WGA terms say that GAI cannot be a writer or professional writer as defined in the MBA because it's not a person, and therefore, materials produced by GAI should not be considered literary material under any MBA. This is important because the fact that GAI output can't be considered literary material has a direct impact on a writer's credit and compensation. Scott Yeah, that's right. While a producer can provide a writer with GAI output and instruct the writer to use it as the basis for writing a story or a script, that GAI output cannot be considered assigned or source material for the purpose of determining compensation or writing credit, and it can't be used to disqualify a writer from that writer's eligibility for separated rights. Jamie While writers can use GAI in the process of preparing literary material, for example, a screenplay with consent of the company, a company may not require that a writer do so as a condition of employment. Material created by writers who elect to use GAI should be considered literary material as opposed to material produced by GAI. Scott That's right, but given the issues surrounding the protectability of GAI output and the requirements that must be satisfied when registering a work that includes GAI output with a copyright office, it's not clear to me why a producer would want a writer to incorporate GAI output into any literary material. The WGA terms do acknowledge that producers can establish their own policies with respect to the use of GAI that writers will be required to adhere to, and companies can reject the use of GAI, including when that use could threaten the copyrightability or the exploitation of the work. Jamie We should also talk about the 2023 changes to the SAG Basic Agreement related to AI. Those revisions seem to be a bit more involved. Scott Yeah, they are. I would agree with you there. So, the 2023 changes in the SAG Basic Agreement, they really address three different types of digital replicas. The first is an employment-based digital replica. The second is an independently created digital replica. And then the third is called a synthetic performer. Jamie Let's talk about the employment-based digital replica first. Scott Sure, let's do that. So, an employment-based digital replica is a replica of the voice or likeness of the performer that is created in connection with the employment, performer's employment on a motion picture. And note that this can be both the program for which the performer was employed and a program other than which the performer was employed.
Tag, You’re Sued: Graffiti Artists Sue Over Use of Their Tags
Feb 23 2024
Tag, You’re Sued: Graffiti Artists Sue Over Use of Their Tags
Graffiti artists Nekst and Bates have filed a lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing. Scott Hervey and James Kachmar discuss this case in the next installment of "The Briefing." Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: This case is a head-scratcher. Graffiti artists Nekst and Bates have filed the lawsuit against Guess and Macy's for incorporating their tags in various articles of clothing manufactured by Guess and sold by Macy's. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by my partner, James Kachmar. We are going to talk about this lawsuit on the next installment of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.” James: Thanks, Scott. Scott: So it seems that Guess manufactured various clothing items that incorporated the tags of graffiti artists Nekst and Bates, and those pieces of clothing were then sold by Macy's. Now, a tag, in the parlance of street art, graffiti art, is a design element that reflects, among other things, the artist's elaborately expressed signature or name. The plaintiffs contend that these tags are the primary calling cards and source identifiers of their artwork and, well, themselves. James: That's right, Scott. The plaintiffs in this case bring a number of claims in the complaint, including a false endorsement claim under the Lanham Act, a right of publicity claim under California law, and a copyright infringement claim. Let's talk first about the Lanham Act claim. Scott: Sure. So that's section 43A of the Lanham Act, and that imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin or false or misleading description of fact or false or misleading representation of fact which is likely to deceive consumers. As to the affiliation, connection, association, sponsorship, or approval of another person's goods or services, courts have held that a person's physical likeness, voice, or other unique or distinguishing characteristic, such as a signature, constitutes a symbol or device as specified in that section. James: That's right, Scott. The mere use of a celebrity's image or likeness is not ordinarily actionable. But using the celebrity's image or likeness to suggest sponsorship or approval could constitute false endorsement where the celebrity hasn't, in fact, given their endorsement. A false endorsement claim must also be something that is likely to confuse consumers or must lead them to thinking that the celebrity endorsed a product or brand when, in fact, they actually have not. Scott: That's right, James. The complaint alleges that Guess falsely used artwork reflecting artists' names and signatures on apparel, creating the false impression that the artists endorsed Guess and Macy's. Now, we can't show you the pictures of the apparel on the podcast, but it's pretty blatant. The plaintiffs argue that the use of the artist's name and signature is designed to create and does, in fact, create the false and deceptive commercial impression that these artists and their products are somehow associated with or somehow endorse the Guess merchandise.   James: So, Scott, I suppose that Guess may try to argue that a tag is not a symbol device or any of the other enumerated items in section 43A. That seems like a pretty thin argument. Scott: Yeah, I would agree with you, James. It does seem like a thin argument. James: So, Scott, what about the California right of publicity claim? Scott: Well, California Civil Code section 33 44A provides any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise,
Nirvana Stuck in Lawsuit Over “Nevermind” Album Cover
Feb 16 2024
Nirvana Stuck in Lawsuit Over “Nevermind” Album Cover
As James Kachmar previously wrote on the IP Law Blog, the man who was photographed as a naked baby in 1991 for Nirvana's iconic "Nevermind" album cover is now suing the band for distributing child pornography. Scott Hervey and James discuss the Ninth Circuit's opinion on the case in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: James: In 1991, the grunge band Nirvana was one of the most popular musical acts in the United States with its anthem “Smells like Teen Spirit”, which was featured on its album Nevermind. Many will remember the cover of that album, which featured a naked baby swimming underwater and reaching for a dollar bill on a fishing hook. Three months after its release, Nevermind rose to the top of the Billboard 200 rankings and since then has sold over 30 million copies. The picture on the album was licensed for use on other merchandise, such as t-shirts, and was also the subject of various parodies. Now, 30 years later, Nirvana, its surviving members, and its record companies face a civil lawsuit for allegedly distributing child pornography by the now-grown man who was depicted on the album cover as a baby. I am James Kachmar from Weintraub Tobin, and I am joining Scott Hervey from Weintraub Tobin to talk about this case on the next installment of “The Briefing.” Scott: James, welcome back to The Briefing. This case, the case of Elden versus Nirvana, has been on my mind since I read your excellent article on the case. Can you give us some background? James: Sure. Scott, the baby in that photo, is now a gentleman. His name is Spencer Elden, and he was four months old at the time the photograph was taken. He turned 18 in 2009 12 years later in 2021, at the age of 30, he filed a lawsuit, and after two rounds of amended complaints, filed a second amended complaint in January 2022. Mr. Elden asserts a single claim against the defendants for a violation of 18 USC section 22 55, which allows victims of child pornography to bring a civil cause of action for their injuries. Scott: And, James, what is the nature of Mr. Elden's complaint? What's it based on? What is it based on? James: Mr. Elden's complaint alleges that the cover of Nevermind depicting him in the nude constitutes child pornography and that the defendants, quote, knowingly possessed, transported, reproduced, advertised, promoted, presented, distributed, provided, and obtained, end quote, this alleged child pornography depicting him. He further alleges that the image has been reproduced and redistributed during the ten years preceding his lawsuit, and since then, pointing out that Nevermind had been rereleased in September 2021, claimed that he had suffered personal injury as a result of the ongoing violations of section 22 55. Scott: So initially, the defendants moved to dismiss Mr. Elden's complaint, arguing that it was barred by the applicable tenure statute of limitations for such claims. The district court agreed with the defendants and dismissed the complaint with prejudice. Mr. Elden appealed that dismissal to the 9th Circuit. And what happened on appeal, James? James: Well, Scott, just days before Christmas last year, the 9th Circuit issued its opinion in Elden versus Nirvana, LLC, and reversed the dismissal of his claims. Importantly, the 9th Circuit, in its decision, did not decide whether the album cover, in fact, constituted child pornography. Rather, it only decided whether his claims were timely. The issue of whether the album cover constitutes child pornography will be decided on remand by the lower court. Scott: So, what was the basis for the 9th Circuit's reversal of the district court's dismissal? James: Well, the 9th Circuit began by examining the text of the statute of limitation provisions in section 22 55, which set forth two pertinent time frames. First, the plaintiff must have been a minor when victimized by the violation,
Brandy Melville v Redbubble: Navigating Contributory Infringement
Feb 9 2024
Brandy Melville v Redbubble: Navigating Contributory Infringement
Brandy Melville has asked the Supreme Court to review the 9th Circuit's decision in its dispute with Redbubble. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Jamie: This past summer, we analyzed the willful blindness doctrine, which was highlighted by the 9th Circuit's decision in the case of Redbubble, Inc. Versus Y.Y.G.M. doing business as Brandy Melville. The 9th Circuit in that case refused to hold Redbubble liable for contributory infringement because Redbubble didn't know, or have reason to know of specific incidents of infringement by its users. The matter seems settled, but Brandy Melville has asked the Supreme Court now to review the 9th Circuit's decision, which now causes a circuit split. I'm Jamie Lincenberg of Weintraub Tobin. We're going to talk about this update in the Brandy Melville Redbubble dispute on this installment of The Briefing. Scott: I'm Scott Hervey of Weintraub Tobin. Jamie, welcome back to The Briefing. Jamie: Thank you, Scott. It's great to be here again. Scott: So before we dive into Brandy Melville's petition for assert to the Supreme Court, can you take us back through the history of the case? Jamie: So this dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble's website that infringed their company's trademarks. Scott: Initially, the district court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement. Then, on appeal, the 9th Circuit appellate panel overturned much of the lower court's findings, holding that a party is liable for contributory infringement when it continues to supply its products to one whom it knows or has reason to know is engaging in trademark infringement. And a party only meets this standard if it is willfully blind to infringement. In short, willful blindness requires the defendant to have knowledge of specific infringers. General knowledge of infringement on the platform is not enough. Jamie: This decision for the first time defined the 9th Circuit's legal standard for contributory liability, and it really heightened the hurdle for brand owners to establish contributory infringement. Now, six months later, Brandy Melville argues that the appellate court was wrong in its holding and has asked the Supreme Court to review the 9th Circus decision that liability for user-submitted trademark infringement only stands when there's specific knowledge of the infringement. Scott: Brandy Melville argues in its petition for rid of Cert. That the 9th Circuit has adopted an erroneously narrow view of such liability and points to the Second Circuit and the 10th Circuit, where once a defendant knows or has reason to know that it is assisting in trademark infringement, it has a legal duty to take reasonable steps to stop it? The attorneys for Brandy Melville argue that the 9th Circuit's decision has no basis in background principles of common law and effectively flips the burden of ensuring compliance with the law from the defendants to the plaintiffs. In its writ for Cert. Brandy Melville argues that the issue is whether the defendant must know or have reason to know to trigger such liability. In particular, is contributory trademark liability limited solely to a defendant's knowledge of and failure to redress specific instances of infringement or infringers, as the 9th Circuit holds? Or does it extend to a defendant's knowledge that it is assisting infringement of the plaintiff's trademark and fails to take reasonable steps to stop such assistance as the Second and 10th Circuit holds in. Jamie:
Ninth Circuit Pulls Back Rogers Test in Light of Jack Daniels Decision
Feb 2 2024
Ninth Circuit Pulls Back Rogers Test in Light of Jack Daniels Decision
As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Jack Daniels Properties v. VIP Products Rogers v. Grimaldi Punch Bowl v. AJ Press 20th Century Fox Television v. Empire Distribution, Inc. Show Notes: Scott: The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel's dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I'm Scott Hervey from Weintraub Tobin, and I'm joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing. Jamie: Thanks, Scott. It's good to be back after a little bit of a hiatus. Scott: Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case. Jamie: That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity's name in the title of the work. Scott: The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can't be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California's 9th Circuit. Jamie: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test. Scott: On appeal, the Supreme Court said that the issue really was not whether the dog toy was an expressive work but rather the nature of the use of Jack Daniel's mark by VIP products. The Supreme Court found that VIP's use of the marks, while humorous for sure, was for the purpose of serving as a source identifier, trademark use. In other words, the Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it's also used to perform some expressiv...
It’s Not Yabba-Dabba-Delicious – TTAB Denies Color Mark for Post Fruity Pebbles!
Jan 26 2024
It’s Not Yabba-Dabba-Delicious – TTAB Denies Color Mark for Post Fruity Pebbles!
Fruity Pebbles failed to attain a trademark for the various colors of its cereal. Scott Hervey and Jessica Marlow discuss the TTAB's decision to reject the trademark application on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: A trademark examiner refused to register a trademark for the various colors that make up the colors of Fruity Pebbles Cereal on the grounds that the proposed color mark fails to function as a trademark. The applicant, Post Foods, could not stomach the refusal, and it appealed it to the Trademark Trial and Appeal Board. On January 4, 2024, the TTAB upheld the examiner's refusal. This case exemplifies the difficulty of securing a color trademark. And there's some other takeaways, important takeaways, too. We're going to discuss this on this next installment of The Briefing by Weintraub Tobin. Welcome back to The Briefing. I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by my law partner, Jessica Marlow. Jessica, welcome back to The Briefing. Jessica: Thank you. Happy to be back. Scott: So, Jessica, I know that you're a fan of fruity pebbles, right? Jessica: I am. Scott: Okay. Jessica: At all ages. Scott: Yeah, this case is right up your alley. So Post Foods applied to register a trademark for the various colors that make up the colors of Fruity Pebble Cereal. Understanding just how difficult it would be to register the color mark, the application included a declaration from the applicant's counsel supporting the two-f claim, which is a claim of acquired distinctiveness and allegations of long use, extensive advertising and, unsolicited media coverage and significant product sales. Supporting this claim of acquired distinctiveness. The examining attorney refused to register the mark because it consisted of a nondistinctive product design or nondistinctive features of a product design that are not registerable on the principal register without sufficient proof of acquired distinctiveness. And while the applicant's two-f claim and all the evidence that the applicant submitted in support of the two-f claim was an attempt of establishing acquired distinctiveness, the trademark examiner said that the section two-f claim showing was insufficient to demonstrate acquired distinctiveness. Jessica: Right. And in response to the office actions, the applicant submitted additional evidence of the mark's acquired distinctiveness, including the results of a consumer survey, long use of the mark, significant advertising expenditures and sales revenue, extensive media coverage, and customer statements. Despite all of this, the examiner found the additional evidence insufficient to show acquired distinctiveness and continued to refuse registration on the grounds that the mark failed to function as a trademark. Post appealed this refusal to the TTAB. Scott: Now, color marks are never inherently distinctive when used on products or on product designs. Where a color mark is not functional, it may be registered on the principal register if it is shown to have acquired distinctiveness. The TTAB noted that the burden of proving that a color mark has acquired distinctiveness is substantial there are six factors that are considered in determining whether a color mark has acquired distinctiveness, and those six factors are the association of the trade dress with a particular source by actual purchasers, and usually that's measured by customer surveys, the length, degree, and exclusivity of use the amount and manner of advertising the amount of sales and the number of customers, intentional copying and unsolicited media coverage of the product embodying the mark. No single factor is determinative, and all six factors are to be weighed together in determining the existence of secondary meaning. Jessica: In response to the evidence submitted by the applicant, which included product history and length of us...
Beyond the Hashtag: FTC Revises Guidelines for Endorsement Use in Advertising
Jan 19 2024
Beyond the Hashtag: FTC Revises Guidelines for Endorsement Use in Advertising
The FTC recently made changes to its guide concerning the use of endorsements and testimonials in advertising. Scott Hervey and Jessica Marlow discuss these changes and their expected impact on the influencer marketing industry in this episode of The Briefing.  Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: It's a new year, and some changes are in place for those in the influencer marketing business, whether it's on the brand side or on the talent side. We'll be covering recent changes to the FTC's guide concerning the use of endorsements and testimonials in advertising on this installment of The Briefing by Weintraub Tobin. Happy New Year, and thank you for tuning in to today's installment of The Briefing. I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by a first-time guest to The Briefing, my law partner, Jessica Marlow. Jessica, welcome to the briefing. Jessica: Thank you, Scott. Happy to be here. Scott: So, Jessica, can you give us a little background on the FTC's involvement in endorsements and testimonials and the endorsement guide? Jessica: Absolutely. So, the FTC has the authority to investigate and bring cases related to endorsements made on behalf of an advertiser under section five of the FTC Act, which generally prohibits deceptive advertising. The endorsement guide is intended to give insight into how the FTC perceives various marketing activities involving endorsements and how the FTC's acts prohibition against deceptive advertising might apply to those particular activities. The guides do not have the force of law, but they are considered to reflect safe practices, meaning that if your marketing activities are inconsistent with the guides, that could result in law enforcement actions alleging deceptive advertising, which could include fines or restitution. Scott: That's a great summary. So, I understand that the guides have been around since, believe it or not, 1979, with the biggest update occurring in 2009, which addressed bloggers. Remember those celebrity endorsers and UGC user-generated content. Since then, the guides have continued to be updated to address the evolution of social media advertising. So, what's new? Or what's new in this most recent update to the guide? Jessica: Well, the FTC has provided some new guidance on what is an endorsement and who is an endorser. The historical definition of endorsement is any advertising, marketing or promotional message for a product that consumers are likely to believe reflects the opinions beliefs finding experiences of a party other than the sponsoring advertiser. So, the FTC has now included tags and social media posts in the list of things that can be considered. Scott: Endorsement and the FTC's position on who is an endorser. Now that changes. A reflection of the proliferation of AI influencers. The FTC now defines an endorser as that which quote appears to be an individual, group or institution. The FTC did make it clear that this language does not just apply to virtual or fabricated influencers. It also applies to writers of fake reviews and nonexistent entities that purport to give endorsements. So, let's talk about something that I'm sure everybody loves talking about. That's liability. Jessica: Oh, yes, liability. So, let's dive into that a little bit further. Everyone likes talking about how they can be sued. So, the previous language about advertiser liability said that advertisers are subject to liability for misleading or unsubstantiated statements made through endorsements. When there is a connection between the advertiser and the endorser, the FTC has deleted the wording. When there is a connection between the advertiser and the generally, there's a connection between the advertiser and the endorser because it is, after all, a marketing or promotional message. However, the FTC has pointed out that a connection is not always needed for an advertiser to be lia...
The Protectability of Short Phrases (Archive)
Jan 12 2024
The Protectability of Short Phrases (Archive)
While iconic catchphrases from TV and film can hold significant equity, protection of them can be spotty. Scott Hervey and Tara Sattler talk about the protectability of short phrases on this archive episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: “Show me the money.” “Who are you going to call?” “Go ahead, make my day.” These are a few iconic phrases with significant equity, but protection of catchphrases like these is spotty. We're going to talk about the protectability of short phrases on this next installment of The Briefing by Weintraub Tobin. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by my partner, Tara Sattler. Tara, thank you for joining us. Tara: Thanks for having me, Scott. Glad to be here. Scott: So, Tara, we deal with this quite a bit. Iconic short phrases that come up usually in script search reports. Now, these phrases are worth their weight in gold, and the creators of these short phrases would probably like to prevent others from using those phrases under any circumstances. But that's not always the case. Tara: Yeah, you're right, Scott. So let's first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under copyright law, and that isn't the case. Scott: That's right. Short phrases are not protectable under U.S. copyright law. According to a copyright office circular, short phrases such as slogans are unprotectable because they contain an insufficient amount of authorship, no matter how creative or catchy they may be. The copyright office will not register short phrases, even if they're novel, distinctive, or lend themselves to a play on words. Tara: And if a work is not protectable under copyright, then it cannot be the subject of a copyright infringement claim. But that doesn't mean that all uses of a third party's short phrase are always okay. Scott: That's right. While the quotation of a short phrase in books or in movies may not be actionable, the use of let's get ready to rumble in connection with the sale of goods or services could certainly bring a lawsuit. Tara: It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for "let's get ready to rumble" and has been quite active in policing its use. Scott: He's been very active in policing its use. Trademark protection is the best form of IP protection for such short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and they're used in connection with goods or services. Tara: Just do it is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie? Scott: Well, if it's a quote like ET phone home, that could be protectable for merchandise but not likely for the movie itself. Tara: Yeah, that's right. And the same applies to may the force be with you. Scott: The problem that one may encounter is when is a short phrase not a short phrase? Right. When does it become longer material such that there's a sufficient amount of authorship and thus protectable under copyright law? I like to think that if it's more than a sentence or two, that's when there's enough authorship that it's protectable under copyright law. Tara: I would agree with that. And I also think it matters what is included in those sentences, because another element that the copyright office considers in what material can be protected by copyright is originality. Scott: Right. But we all know from the FIS case that the organization of a telephone book can be sufficient to meet that level of originality. So it can be a low threshold. Obviously, if it's the same words over and over again for four sentences,
IP Rights and the “Public Good” Exemption to California’s Anti-SLAPP Law: An Update
Jan 5 2024
IP Rights and the “Public Good” Exemption to California’s Anti-SLAPP Law: An Update
In the case of Martinez v. Zoom Info Technologies, the Ninth Circuit addressed the "Public Interest" exemption to California's anti-SLAPP law. Scott Hervey and James Kachmar talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: The 9th Circuit was recently asked to address the public interest exemption to California's anti-SLAPP law in a proposed class-action lawsuit brought by a plaintiff whose photo and personal information were used without her consent to advertise subscriptions to the website Zoom info. The case is Martinez v. Zoom Info Technologies. My colleague James Kachmar recently wrote an article exploring the interesting substantive and procedural issues concerning the interplay between one's intellectual property rights and California's anti-SLAPP law that arose in this case. James is joining me today to talk about this case on this installment of The Briefing by Weintraub Tobin. James, welcome back to The Briefing. James: Thanks for having me. Scott. Scott: James, you wrote an extremely insightful article about the holding in Martinez versus Zoom Info Technologies, Inc. Can you give us some background on the case? James: Sure, Scott. Zoom Info is a website. It boasts a database of approximately 125,000,000 business professionals and contains their relevant information. When someone searches for a person or a business person, either through a web search or through Zoom Info's website, they can view a teaser profile of Zoom Info with some information about that person, such as their photo, maybe some limited business information, but most of the information is redacted. This teaser profile then contains the subscription buttons that invite the viewers to subscribe to Zoom info for a fee to access more information about that person and do other searches. The plaintiff in the case, Kim Martinez, is a political and legislative director of a labor union representing California public sector employees. Zoom Info has a profile dedicated to her that includes information regarding her job title, her employment at the union, contact information, and names of several of her business colleagues. Her teaser profile included options for a viewer to subscribe to Zoom Info, including, apparently, an option for a $10,000 annual subscription. Ms. Martinez alleged she never used Zoom Info and had not consented to the use of her profile by Zoom Info for marketing purposes. In September 2021, Ms. Martinez filed a lawsuit against Zoom Info in federal court on behalf of herself and a proposed class of California citizens whose profiles might have been used without their consent, like hers. She claimed that Zoom info violated California law, particularly the right of privacy statute, by unlawfully profiting from her intellectual property of herself and the class. Members, such as the use of her name, photo and employment information and Zoom. Scott: Info responded to this filing by filing a motion to dismiss under California's anti-SLAPP laws, correct? James: Yes. It filed two motions, a motion to dismiss saying that the lawsuit had no merit, and a motion to strike under the anti-SLAPP law in California. California's anti-SLAPP laws, designed to protect against lawsuits brought primarily to suppress free speech and petition rights while encouraging participation in matters of public significance. The district court denied Zoom Info's motions, including the motion to strike under the anti-SLAPP, which led Zoom Info to file an immediate appeal to the 9th Circuit. Scott: Now, California's anti-SLAPP law includes several exemptions or exceptions where the anti-SLAPP statute may not apply. These exemptions are designed to ensure that the law is appropriately applied in cases where there are legitimate concerns or disputes that go beyond free speech and public participation. If the alleged conduct falls under one of these exem...
Merry Litigation: All I Want for Christmas is a Copyright Infringement Lawsuit
Dec 22 2023
Merry Litigation: All I Want for Christmas is a Copyright Infringement Lawsuit
Country singer Andy Stone, A.K.A Vince Vance, has renewed his lawsuit against Mariah Carey, which claims that her holiday hit 'All I Want for Christmas Is You' infringes the copyright of his song with the same name. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Andy Stone, known professionally as Vince Vance, is suing Mariah Carey and Sony Music Entertainment for copyright infringement. Vance claims that the decades-old Christmas hit ‘All I Want for Christmas is You’ infringes his 1989 song ‘All I Want for Christmas is You.’ I'm Scott Hervey with Weintraub Tobin, and I'm joined today on this holiday edition of The Briefing by my partner Tara Sattler to discuss this Christmas-themed copyright infringement dispute on this next installment of The Briefing by Weintraub Tobin. So, Tara, I think nothing rings in the holiday like a good copyright infringement lawsuit. Tara: Yeah, who doesn't want to spend the holidays with their lawyers in court? Scott: I know I certainly do. So, Tara, according to the complaint, Stone and his co-writer Troy Powers claim that in 1989, they co-wrote a country music hit also titled ‘All I Want for Christmas is You.’ That song was recorded by Stone's band Vince Vance and the Valiants, and apparently, it went to number 23 on Billboard's Hot 100 airplay list. He claims that he has performed this song over 8000 times in concerts across 20 countries. He also claims that this song was licensed by Kelly Clarkson, who recorded her version of it in 2021. Tara: In the complaint, Stone alleges the unique linguistic structure of his song was copied and that his song is about a person disillusioned with expensive gifts and seasonal comforts, wants to be with their loved ones at Christmas, expresses that wish to Santa, and that the loved one and unnamed you standing under the Christmas tree would be a dream come true. Stone also identifies the phrase 'All I want for Christmas is You' as an element that was infringed. Lastly, the plaintiff claims that similarities in the melody support its claim. Scott: So, let's take a look at these claims and see how Carey and her team may respond and also how a court, right here in the Central District of California, may analyze the plaintiff's claims. So, as we know, a court will analyze the complaint by applying the extrinsic test, which, as we've discussed before, is used in the determination of substantial similarity. After the plaintiff has identified specific criteria that it alleges to have been copied, the court separates the unprotectable elements, such as facts or ideas, from those elements that are protectable. And then it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the plaintiff's work. So, let's look at two of the elements the plaintiff identifies as being infringed: the linguistic structure and the phrase 'All I want for Christmas is You.' Tara: Sure? There are many songs that express the sentiment of wanting to be with a loved one during the Christmas season, and I can think of a few songs that draw on the theme of expressing wishes to Santa, such as Ariana Grande's 'Santa, Tell Me,' 'My Grown-Up Christmas List' by Amy Grant, and even 'Santa Baby' by Earth A. Kitt. Scott: That's right, and I suspect that Carrie's team will argue that the theme of expressing the desire to be with a loved one for Christmas is too common of a theme for Christmas songs to be protectable. They will argue that the concepts of love, longing to be with a loved one at Christmas, and expressing desires to Santa are frequently present in Christmas songs, and that places them outside of the protection of copyright law. Tara: Similarly, I think that Carrie's team will argue that 'All I w...
Jingle Brawl: The Battle for ‘Queen of Christmas’
Dec 15 2023
Jingle Brawl: The Battle for ‘Queen of Christmas’
Mariah Carey has widely been referred to by fans as the 'Queen of Christmas,' but when she attempted to trademark the title last year, it was met with pushback from another singer and songwriter who claimed to hold the same title. Scott Hervey and Tara Sattler discuss this dispute on this Holiday edition of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In 2022, Mariah Carey sought to register the trademark ‘Queen of Christmas’ for a wide variety of goods and services. Her application was opposed by a singer-songwriter who claimed she was known as the Queen of Christmas. I'm Scott Hervey with Weintraub Tobin, and I'm joined today by my partner Tara Sattler to discuss this holiday trademark dispute on this next installment of The Briefing, Christmas edition, by Weintraub Tobin. Tara, welcome to The Briefing. You have a great holiday sweater on. Tara: Thanks for having me, Scott, and so do you. Scott: So, as you know, Tara, Mariah Carey is extremely well known for her 1994 holiday hit "All I Want for Christmas is You", which has reportedly made more than $60 million in royalties alone. In 2022, her company filed a trademark registration application for Queen of Christmas, covering a wide variety of goods and services. In the prosecution of her trademark application, while the United States Patent and Trademark Office trademark examiner assigned to the application raised a few issues, the application pretty much sailed through to publication. Tara: Then, later that year, singer-songwriter Elizabeth Chan filed an opposition to the registration of the mark. The basis of Chan's opposition was likelihood of confusion. In her filing, Chan claimed that she is pop music's only full-time Christmas singer-songwriter and has herself been repeatedly dubbed the Queen of Christmas. She claims to have prolifically written, composed, and performed only original Christmas holiday-themed songs for more than a decade, and due to the notoriety that she's attained for this singular and specific achievement, Elizabeth Chan has been referred to as the Queen of Christmas by multiple media, including in 2018 by the New Yorker Magazine. Scott: In her opposition, Chan claims to have been in continuous use of the Mark Queen of Christmas since at least 2014. Chan further argued that Queen of Christmas should not be owned or controlled by Ms. Carey's company since Ms. Carey herself has admitted that she did not create the title or moniker Queen of Christmas, and she does not even consider herself the Queen of Christmas. Tara: So, with the opposition filed, Ms. Carey's company was required to file an answer by a date certain, which did not happen. As a result, a default was entered against Ms. Carey's company, and the application to register the mark was deemed abandoned by the TTAB. So Scott, do you think that Carey was being Scrooge in filing her trademark application? Scott: I don't think so. She was represented by a highly reputable law firm and she certainly could have pressed her rights if she desired to do so. Maybe she was moved by the opening paragraph in Chan's petition, which said Christmas is big enough for more than one queen. Over the decades, several recording artists have been dubbed with the nickname Queen of Christmas, including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come. I mean, whatever Carey's motivation was not to defend against the petition and to allow her application to go abandoned. This thing we can be certain of, as certain as there is a Santa Claus, that there will be more than one queen of Christmas. Tara: Well, that's a really interesting case study and example. Scott, thanks for telling us about this one. Scott: Thank you for listening to this episode of The Briefing.
Netflix to Pay $2.5M to GoTV for Patent Infringement
Dec 8 2023
Netflix to Pay $2.5M to GoTV for Patent Infringement
Netflix has been ordered to pay GoTV Streaming $2.5 Million in damages for infringing one of its wireless technology patents. Scott Hervey and Eric Caligiuri discuss this update on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: I'm Scott Hervey with Weintraub Tobin. In a prior discussion with my colleague, Eric Caligiuri, earlier this year, we talked about a case where a federal court denied discovery requests aimed at uncovering details surrounding the financing of a plaintiff's patent litigation. That case was GoTV Streaming LLC versus Netflix in the Central District of California. In response to some inquiries and requests for further updates from some of our viewers and listeners, we wanted to give you an update on the broader outcome of this case. That's coming up on this installment of The Briefing by Weintraub Tobin. Eric, welcome to another episode of the Briefing. Thanks for joining us today. Eric: Great to be here, Scott. Scott: Eric, what can you tell us about what's happened in the GOTV streaming versus Netflix case since we last spoke? Eric: Well, Scott, California jury has found that Netflix did in fact, infringe one of GOTV Wireless's technology patents with its television and movie streaming platform, and found Netflix owes GOTV Streaming 2.5 million for the infringement. In the verdict, the jury said that Netflix should pay GOTV the damages in one lump sum as a penalty for infringing US patent number 898715. But the jury did find that Netflix did not infringe a second patent that was also included in the suits. Both patents generally covered methods for rendering content on a wireless device. Scott: So, 2.5 million is not really a lot of money for Netflix. But I do have a technical question for you, and maybe you might not know, based on the judgment, does the judgment include ongoing royalties? In other words, will Netflix be able to continue to use this technology if it continues a particular royalty payment? Or does that $2.5 million include ongoing use of the patent, or is this just for past use, and Netflix can't use this technology without further infringement? Do you know? Eric: Yeah. So, that judgment was just for past infringement. It was a lump sum payment. There's nothing about ongoing royalties or future payments. There's probably a bit of an open question in terms know what Netflix can do in the future, and they may have to go and license the patent. But there was nothing specific in the jury verdict about going forward. It was simply damages for past infringement. Scott: Okay, so either Netflix has to enter into a commercial deal with GOTV, or they need to come up with a technology that doesn't infringe that particular patent. Interesting. Eric, can you tell us about some of the background of this case? Eric: Yeah, sure. So GOtV first sued Netflix in October of 2022, alleging certain parts of Netflix's streaming service infringed two of its wireless technology patents. Specifically, GOTV alleged Netflix's streaming service uses the methods covered by GOtV's patents to lay up content on its app and website, like its widgets, menu buttons, photo imagery. Netflix argued in response that it had no pre-filing knowledge of the patents, and without that knowledge, there couldn't be any indirect infringement or induced infringement. Instead, Netflix argued that GotV tried to create knowledge of the patents by filing suit, sorting the patents, and then alleging inducement and an amended complaint. But, according to Netflix, in order to claim induced infringement, there has to be proof that the infringer had knowledge of the patents in suit before the complaint was filed. Scott: Interesting. So what happened next? Eric: Well, after conducting discovery, including covering some of the issues into litigation funding that we discussed last time, the jury found that Netflix did in fact infringe ...
Once Upon A Time – SCOTUS Rejects Trademark Infringement Claim Against Quentin Tarantino Film
Dec 1 2023
Once Upon A Time – SCOTUS Rejects Trademark Infringement Claim Against Quentin Tarantino Film
The Supreme Court rejected a trademark infringement claim against the producers of the Quentin Tarantino film ‘Once Upon a Time… in Hollywood’ over its portrayal of the late actor Christopher Jones. Scott Hervey and Tara Sattler discuss this decision in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: The laws surrounding false endorsement claims in the United States are rooted in section 43 A of the Lanham Act. There's quite a bit of case law that analyzes false endorsement claims brought by celebrities who claim that a company or brand used a lookalike or soundalike to promote the brand in advertising or marketing campaigns without the celebrity's permission. Recently, the U.S. Supreme Court refused to review a California case about this exact topic. This time, the case was brought by the partner of the late actor Christopher Jones concerning the popular 2019 Quentin Tarantino film ‘Once Upon a Time in Hollywood.’ This is what we will be discussing in today's installment of the Briefing by Weintraub Tobin. Scott: I'm Scott Hervey from Weintraub Tobin. Tara, thanks for joining me today. So you're right that celebrities bring these types of false endorsement claims under section 43 A of the Lanham Act relatively frequently. So, let's talk about the specific language in the Lanham Act that addresses false endorsement. Tara: That's a great place to start. Section 43 A imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol or, device, or any combination thereof, or any false designation of origin. False. Or misleading description of fact or false or misleading representation of fact, which is likely to deceive consumers as to the affiliation, connection, association sponsorship, or approval of another person's goods or services. Scott: Right. And courts have held that a celebrity's physical likeness, voice, or other unique or distinguishing characteristics does constitute a symbol or device as specified in section 43 A of the Lanham Act. So, this is the usual basis for a celebrity false endorsement claim. These types of claims often arise in marketing and advertising campaigns where a brand or a service will use a lookalike or a sound alike of a celebrity. And I've even seen cases where they've used photographs of a celebrity to market that brand. Vanna White from Wheel of Fortune and the pop culture and music icon Ariana Grande, to name just a few, have brought false endorsement claims in the past. Tara: This recent case that went up to the U.S. Supreme Court concerns the likeness and unique physical attributes of the late actor Christopher Jones. Jones was a popular actor in the 1960s, starring in both TV and movies. Jones passed away in 2014 and assigned the rights in his likeness to his partner, Paul McKenna. Sony released Quentin Tarantino's film Once Upon a Time in Hollywood in 2019. The film is loose historical fiction based in the 1950s and centers around fictional characters played by Leonardo DiCaprio and Brad Pitt. It also touches on the Manson family murder of Sharon Tate McKenna. Scott: The executor of Jones's estate brought both a false endorsement claim and a trademark infringement claim against the producers of Tarantino's film. The plaintiff cited a few examples as the basis of the claim. First, Jones's name was mentioned in Tarantino's film. Second, a television advertisement and a marquee advertisement that mentions Jones's name and one of Jones's films. Three in The Addict are shown on screen in Tarantino's film. And third, Jones was used as the inspiration for the fictional character played by Brad Pitt and Leonardo DiCaprio. While these characters interacted with commercial brands. Tara: In Tarantino's film, the trial court evaluated the merits of McKenna's claim. While evaluating the defendant's anti-slapp motion on the false endorsem...