The Briefing by Weintraub Tobin

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**The Briefing by Weintraub Tobin**

In The Briefing by Weintraub Tobin, 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.

Latest Episodes:

**Trademark Turbulence – Oakland vs SFO in Trademark Showdown** Dec 06, 2024
Show notes

Oakland’s attempt to rename its airport didn’t take off. On this episode of The Briefing, Scott Hervey and Jamie Lincenberg discuss the trademark dispute between San Francisco and Oakland over airport naming rights.

Watch this episode on the Weintraub YouTube channel.

Show Notes:

**Scott:** When Tony Bennett sang about leaving his heart in San Francisco, he wasn’t singing about Oakland. There are no little cable cars climbing halfway to the stars in Jack London Square, as charming as it is. Essentially, that’s why the City and County of San Francisco sued the city of Oakland and the operator of the Oakland International Airport, the Port of Oakland, to stop Oakland from renaming its airport to San Francisco Bay Oakland International Airport.

I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my colleague Jamie Lincenberg. Fasten your seat belts and put your seats in the upright and locked position. It’s SFO versus OAK in today’s installment of The Briefing.

Jamie welcome back. Thank you for joining me today.

**Jamie:** Thanks, thanks. Thanks for having me, Scott.

**Scott:** Let’s let’s see how many airline airport puns and bits of humor we can spontaneously include in this story here.

**Jamie:** Sounds good.

**Scott:** Okay, so, are you ready for takeoff?

**Jamie:** I’m ready.

**Scott:** Okay, so this case is about the Port of Oakland’s attempt to rename its airport and include San Francisco in its name. And this is also about the city of San Francisco’s claim that such use would create consumer confusion and constitute trademark infringement. But the reason Oakland wanted to include San Francisco, at least it claims, isn’t just about the desire to trade off of San Francisco’s goodwill.

**Jamie:** Okay, so please tell us, why did Oakland want to include San Francisco in the new name of its airport?

**Scott:** Well, as you know, whether we have to travel into our office in San Francisco, which is right in the heart of the financial district or otherwise fly into downtown San Francisco. We don’t always fly into SFO. Those who have to fly into San Francisco know that flying into Oakland is most often the better bet. It’s fairly common to have weather delays in San Francisco, but that’s not the case in Oakland. And also, you can catch the Bart right into San Francisco, right from the Oakland airport. And if you need a car. Oakland Airport is just right across the Bay bridge from downtown San Francisco. And apparently this was not well known to people outside of the Bay area or travelers who travel regularly in the San Francisco.

**Jamie:** That’s true.

**Scott:** So, you know, apparently the Port of Oakland conducted some studies that concluded that Oakland’s Oakland’s proximity to San Francisco isn’t really well known outside of the Bay area and completely unknown outside of California. And the port believed that this lack of awareness, this lack of awareness of the, you know, geographical proximity created challenges from the port in serving travelers.

**Jamie:** Yeah. And I can understand why Oakland would want to do this, but I’m sure that San Francisco was not on board, so.

**Scott:** True. Very true. San Francisco claimed that this would cause consumer confusion, and a few airlines also objected to the purported name change, saying that it would cause confusion for their travelers. The port went through with its internal requirements to implement the name change, and then the city of San Francisco sued, claiming trademark infringement. San Francisco claimed that consumers would believe that there was some association or affiliation between the two airports, and San Francisco also argued that consumers would buy tickets to the wrong airport or go to the wrong airport.

**Jamie:** And so I guess this brings us to the heart of the case. Did Oakland’s use of San Francisco constitute trademark infringement.

**Scott:** So in determining that, the court applied the standard likelihood of confusion test, which considers factors such as the strength of the mark, the similarities between the marks, evidence of actual confusion, and the defendant’s intent in selecting the mark. The court said that San Francisco’s Mark San Francisco International Airport, although it is descriptive, it’s commercially strong due to its long standing use and recognition right.

**Jamie:** And the court also found that the two marks are similar in appearance and sound and meaning. Although Oakland’s mark includes other elements, San Francisco’s mark is entirely subsumed in Oakland’s mark. The court said that because the two airports offer identical services, the near identity of the marks then makes them confusingly similar.

**Scott:** The court then looked at evidence of actual consumer confusion that was presented by San Francisco. So SFO presented evidence of instances where travelers and even businesses mistook Oakland Airport for SFO because of the name change. For example, there were reports of flight bookings and shipments intended for SFO that ended up at okay. However, the court found this showing of actual confusion was de minimis or trivial when it considered that 19 million travelers flew in and out of San Francisco between the applicable time frame.

**Jamie:** As to the theories of confusion advanced by SFO, the court looked at the degree of care exercised by a typical consumer, and found that consumers exercise a high degree of care when purchasing online tickets, which, along with other factors, made the point of sale confusion unlikely.

**Scott:** That’s true. But the court also found that consumers exercise a low degree of consumer care over whether neighboring airports are affiliated with each other, according to the court. Travelers rarely research airport ownership or management.

**Jamie:** Yeah, and I think that’s right. I don’t think I’ve ever looked up the airport owners or management.

**Scott:** I certainly haven’t.

**Jamie:** No. Um, but Scott, did Oakland advance any defenses against its use of San Francisco? It seems that Oakland, you know, may have had a fairly good argument that it was using the words just descriptively.

**Scott:** That’s a good point, Jamie. Uh, Oakland argued that San Francisco Bay is a descriptive term, and that Oakland used that term fairly and in good faith to describe the geographic nature of its airport services, namely its proximity to San Francisco. This argument relies on a provision in the Lanham Act, which allows the use of a term otherwise than as a mark if it is used descriptively and used fairly and in good faith to describe the goods or services or their geographic origin.

**Jamie:** But the court rejected Oakland’s fair use defense. Right. Yeah.

**Scott:** That’s correct. So the court reasoned that the defense only applies if the term is used otherwise than as a mark. The court noted that the Lanham Act defines a trademark as something used to identify goods and indicate their origin or their source. The court considered the port’s prior trademark registration for Oakland International Airport, which had been initially rejected for being primarily geographically descriptive, but later accepted after the port argued that it had acquired secondary meaning in that mark through exclusive and continuous use. The court believed that the port was using the new name in the same way that it had used the old name to acquire secondary meaning and function as a trademark. The court saw the new name as a direct replacement for the old one, and predicted that the court would continue to use the new name exclusively and continuously in order to establish secondary meaning. This, the court decided, is using the term as a trademark and does not meet the requirements for the fair use defense under the Lanham Act.

**Jamie:** So what did the court ultimately decide here?

**Scott:** Well, the court ended up siding with SFO, finding that Oakland’s use of San Francisco in the name of its airport was likely to cause confusion. The ruling prohibits Oakland from adopting or otherwise using the name San Francisco Bay Oakland International Airport.

**Jamie:** That’s a pretty significant decision, Scott. So what does this now mean for Oakland and for other regional airports?

**Scott:** Well, for.

**Jamie:** Oakland, it’s a major setback in their marketing efforts, they’re going to need to find another way to compete and informing travelers about their geographic proximity to San Francisco without infringing on established trademarks for other regional airports. And I’m thinking primarily of Burbank and Long Beach here in Los Angeles. It’s a cautionary tale about the risks of adopting names closely tied to more prominent neighbors. While the Port of Oakland intended to use San Francisco Bay descriptively to clarify the airport’s location, the court found that this use created a false impression or affiliation with SFO and its established trademarks. This case underscores the importance of careful consideration of trademark implications when choosing names and brands for businesses and organizations, especially when leveraging geographically descriptive terms.

**Scott:** Yeah, I, I think I agree with the court’s finding here. Um, you know, I’m thinking about Burbank trying to change their name to Burbank Los Angeles International Airport. I don’t think that that would fly with LAX.

**Jamie:** Could you imagine it would be the John Wayne Burbank Los Angeles International Airport? That what a mouthful.

**Scott:** People are already confused with all of the different with the different airports. Like.

**Jamie:** Right, right.

**Scott:** Thanks for joining me today, Jamie.

**Jamie:** Thanks for having me.

**Scott:** Well, thank you for flying. Today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative, enjoyable, and maybe just a touch humorous, but I mean, there’s really nothing funny about trademark infringement, but if you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.

**Turkey, Trademarks, Copyright, and Cranberry Sauce – IP and Recipes** Nov 27, 2024
Show notes

This Thanksgiving, we’re diving into the world of intellectual property and recipes. Can chefs own their culinary creations? Can a recipe be copyrighted? From Turducken trademarks to creative cookbooks, we’re discussing the legal side of your favorite holiday dishes. Tune in to The Briefing’s milestone 200th episode with Scott Hervey and Tara Sattler for all the tasty legal details.

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

**Scott:**
There are numerous ways to cook a turkey and thousands and thousands of recipes for turkey. Some are old fashioned like roasting with stuffing, some are newer like Tandoori Style, and some, well, I still just don’t get like the turducken. But who exactly owns all of these turkey recipes, not to mention all the recipes for stuffing and cranberry sauce.

I’m Scott Hervey, a partner with the law firm of Weintraub Tobin. And today I am joined by my partner, Tara Sattler. We’re going to talk about IP protection for recipes on this special Thanksgiving episode of the Briefing.

Tara, welcome back to the Briefing. Happy Thanksgiving to you.

**Tara:**
Thanks, Scott. Thanks for having me. And this is an exciting topic to dig into.

**Scott:**
Yes, I see we both have our like, fall themed backgrounds up, despite the fact that it’s 71 degrees here today in Los Angeles.

**Tara:**
Well, not for much longer.

**Scott:**
Yeah. Well, so today we’re diving into the fascinating and often murky world of intellectual property protection for recipe recipes. So can a chef actually own their culinary creation? And what about their cookbooks? And what happens when recipes are copied and shared?

**Tara:**
All great questions. So let’s start with the basics. Protection of a recipe. So some famous chef creates a dish that is huge and a really big hit. But legally, how much protection does a recipe actually get?

**Scott:**
Well, that’s a great question. So U.S. copyright law protects any original work of authorship that’s fixed in a tangible medium of expression. So one would think that an original recipe that a chef creates and writes down and may include in the cookbook or online is protected by copyright. However, that is not necessarily the case. In the United States, recipes generally don’t receive strong intellectual property protection. Copyright law does not cover lists of ingredients or basic instructions on how to use setting ingredients. In 1996, the SEC, the Seventh Circuit case of Publications International Limited versus Meredith Corporation involved claims of copyright infringement of a number of recipes. And in that case, the court said that recipes that were involved in that case comprised merely of the list of required ingredients and the directions for combining those ingredients to achieve the final product. The recipes contained no expressive elaboration upon either the functional components or how to create the end result. And as a result, the court found the recipes to be not protectable. Now, this is as opposed to recipes that might spice up functional derivatives by weaving in creative narrative.

**Tara:**
But digging into what the court said, if a recipe included expressive elaboration, then that may be protectable. This probably explains why some cookbooks and food bloggers weave personal stories into Their recipes.

**Scott:**
That is true, and probably the case. But regardless how creatively a cookbook may lay out a recipe filled with stories from the chef’s childhood pictures, et cetera, the ingredients and the process for making the dish itself are not protectable.

**Tara:**
Okay, so this probably accounts for the thousands of Turducken recipes that we can find on the Internet.

**Scott:**
It probably does. But speaking of Turducken, let’s talk about what can be protected. And that’s a trademark. So, Tara, did you know that Turducken is a registered trademark?

**Tara:**
I did not know that.

**Scott:**
Yes, it is. So that mark was registered in 1986, and it covers the combination of turkey, duck, and chicken entree for consumption on or off the premises. And it was originally registered by Chef Paul Prudhomme and his his company entity. Now, I couldn’t find any evidence of the chef suing over the use of Turducken, but that trademark is still registered. It’s on the principal register. And it has prevented other potential registrants from registering similar trademarks covering similar food items.

**Tara:**
So if a chef comes up with a unique and distinctive name for a dish, that can be protected as a trademark. And the chef can, if he or she wants to prevent others from using that mark in a competitive manner.

**Scott:**
That’s true. Think of the Big Mac and how much strength that trademark has. However, if a trademark begins to be used by the public at large to describe the food product like Turducken, I think that mark runs the risk of becoming generic.

**Tara:**
But just because the chef owns a trademark doesn’t mean that he or she can stop others from making the dish. Trademarks are more about branding. A chef can trademark the name of a dish, like Traducan or Big Mac or the Bloomin Onion, as long as it’s distinctive and tied to their business. But trademarking won’t stop someone from recreating the dish and just using a different name.

**Scott:**
That’s right, Tara. Since we’re talking about what can be protected now, let’s talk about cookbooks. A cookbook can be protectable as a compilation if the selection, arrangement, and the coordination of the included recipes is creative. Also, everything other than the list of ingredients and the instructions on how to create the dish are protectable. So all the photographs are protectable under copyright law, as well as all of the other text content.

**Tara:**
So with the lack of protection around recipes themselves, it is a bit odd that chefs so readily share recipes. However, I can see that by doing so, it may raise the profile of.

**Scott:**
The chef that’s true. I mean, it’s also a great way to sell cookbooks. Right. And I know from my own experience, while I might go to a website and print out a specific recipe from a specific chef to try if it’s a chef that I know and if it’s a recipe I like, and even if it isn’t a chef that I know and it turns out to be a recipe that I love, I’m more likely to seek out more of those recipes from that chef and buy a cookbook or two from that chef.

**Tara:**
Yeah, I think that’s right. And I also like to buy cookbooks that have a particular theme, so from notable restaurants or acclaimed restaurants around Los Angeles. And that is all very chef-driven as well.

**Scott:**
Right. And I think, I don’t know, chefs have kind of become the new celebrity, so to speak. So you may buy a cookbook or two that actually might sit on your coffee table and you may open it maybe once or twice in the entire time that you own it, but you might not even use it for any of the recipes, lest you get the book itself messy. At least you would if you cook the way I cook with stuff all over the place.

**Tara:**
Yeah. Cookbooks as a form of art.

**Scott:**
Yeah. So I guess we can close out this Thanksgiving episode by being thankful that copyright law allows for the sharing of recipes, because where would we be if it didn’t? And that we’re lucky enough to have a culture where chefs share their recipes, including Paul Prudhomme’s famous Cajun recipe, a turducken, so we can try making them at home. So with that, Happy Thanksgiving, Tara.

**Tara:**
Happy Thanksgiving, Scott. And good luck with cooking your turducken.

**Scott:**
Well, yes, my I won’t be cooking at Turducken because, as you know, we’re pescatarian. How very California of us. So we’ll find some other thing to shove inside of a fish. So Happy Thanksgiving, everybody.

**Tara:**
Happy Thanksgiving.

**Scott:**
Well, that’s all for today’s Thanksgiving episode of the Briefing. Thanks to Tara for joining me today and thank you, the listener, for viewing or tuning in. We hope you found this episode informative and enjoyable, and if you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.

**The Briefing: Based on a (NOT) True Story – The Baby Reindeer Defamation Case** Nov 22, 2024
Show notes

Did Netflix push the boundaries of “based on a true story”? Scott Hervey and Jamie Lincenberg discuss Harvey v. Netflix, the risks of docudramas, and explain how truth and fiction collide in this high-stakes lawsuit on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel.

**Cases discussed:**

Fairstein v. Netflix

Williams v. Netflix

Harvey v. Netflix

**Show Notes:**

**Scott:**
It seems like every good docudrama results in a defamation lawsuit. There is the recently settled lawsuit, Fairstein versus Netflix, which is a defamation claim over the portrayal of Linda Fairstein, former New York City prosecutor in the Netflix series, ‘When They See Us.’ Then there’s Williams versus Netflix, a defamation lawsuit brought by then Vanity Fair photo editor, Rachel Williams, whose friendship with Anna Delvey is highlighted in the Netflix series, ‘Inventing Anna.’ Then there’s the defamation case du jour, and for some reason, the one that seems to have Hollywood’s current attention, Fiona Harvey versus Netflix, the defamation case surrounding the Emmy Award-winning series, ‘Baby Reindeer.’ Earlier this month, a California federal court hearing the dispute denied Netflix’s anti-slapp motion and allowed the plaintiff’s defamation case to go forward.

I’m Scott Hervey, a partner with the Entertainment and Media Group at Weintraub Tobin, and today I’m joined by my colleague, Jamie Lincenberg. We We are going to talk about this case and the lessons in the court’s opinion for avoiding claims like this on today’s episode of The Briefing. Jamie, welcome back. It’s good to have you.

**Jamie:**
Thanks, Scott. Great to be here again.

**Scott:**
Let’s get into this, Jamie. Can you give us a little rundown of what happened in this case?

**Jamie:**
Absolutely. This lawsuit stems from the Netflix series, Baby Reindeer, if you’ve seen it, inspired by the real-life experiences of comedian Richard Gad, following his early career as a stand-up comic in Scotland. The series depicts a character named Martha, who is a stalker of Gad’s character. Martha is portrayed as a troubled individual, a convicted criminal who spent five years in prison for stalking, a violent individual who sexually assaults Gad in a public setting, and a relentless stalker who harasses Gad at his home and workplace.

**Scott:**
Jamie, have you seen this Have you seen Baby Reindeer yet?

**Jamie:**
I have.

**Scott:**
Okay. I haven’t. So Jamie, it’s on my list to watch, but feel free to add color commentary as we’re going through. So Fiona Harvey, she’s the plaintiff in this case. She claims that the The character of Martha is clearly based on her and that these portrayals are entirely false and defamatory. Harvey asserts that this serious portrayal of Martha goes far beyond the actual events and fabricates serious criminal acts she never committed. This, she argues, has caused severe damage to her reputation and her emotional well-being, which led her to file this lawsuit against Netflix for defamation and other claims.

**Jamie:**
Netflix fired back with two key legal endeavors. First, they filed a special motion to strike, also known as an anti-slap motion, aiming to have the entire case dismissed. Second, they filed a motion to dismiss, seeking to to go out the individual claims that Harvey brought against them.

**Scott:**
We’re going to focus on the anti-slap motion and Harvey’s defamation claim here. And by the way, those were… Her defamation claim was the only claim that actually survived. So anti-slap laws are designed to protect individuals from frivolous lawsuits aimed at silencing their free speech, especially when they speak out on matters of public concern. In California, where this case was filed, an anti-slap motion requires the defendant to first demonstrate that the plaintiff’s claims arise from a protected activity. If the defendant meets this burden, then the burden shifts to the plaintiff to prove that the plaintiff has a probability of prevailing on the merits of their claim.

**Jamie:**
And here, Netflix was able to successfully argue that this case involved a protected activity.

**Scott:**
That’s right. The court agreed with Netflix that the series and the statements made about Martha are protected speech under the First Amendment. The court reasoned that the series touches on important social issues like stalking and sexual harassment matters that are frequently debated in public forms.

**Jamie:**
Furthermore, the court recognized that this series isn’t presented as a strict documentary or a news report. It’s a fictionalized retelling of Gad’s life, taking creative license with events and characters for dramatic effect. The court even pointed to a disclaimer in the series, acknowledging that certain elements had been fictionalized.

**Scott:**
That’s right. However, even though Netflix was able to show that their actions fall under protected speech, the burden then shifts to the plaintiff, and the plaintiff can still move forward if they can demonstrate a probability of prevailing on the merits of their claim. Now, this is where the court’s analysis of Harvey’s defamation claim becomes crucial.

**Jamie:**
So let’s dive into that. What were the key elements that Harvey had to prove for her defamation claim to survive?

**Scott:**
So for a defamation claim to be successful in California, a plaintiff must generally prove that, one, the defendant made a false statement of fact of and about the plaintiff. Two, the statement was published to a third party, three, the statement caused harm to the plaintiff’s reputation, and four, the defendant acted with at least negligence or actual malice if the plaintiff is a public figure.

**Jamie:**
So let’s focus on the court’s analysis regarding whether character traits attributed to the character Martha were of and about Fiona Harvey.

**Scott:**
So the court says that this is not the case where a plaintiff can be one of hundreds of people that match a fictional character’s broad characteristics. Specifically, Martha and the plaintiff, Fiona Harvey, are both Scottish lawyers living in London. They’re both about 20 years older than Dawn Gad. They’re both accused of stalking a lawyer in a newspaper article, and they both communicated with Dawn and Gad on social media. Now, while there may be numerous Scottish lawyers living in London of the same approximate age as Fiona Harvey, The court said it is very likely that only Fiona Harvey has been accused of stalking a lawyer in a newspaper article while also communicating with Gad on social media.

**Jamie:**
Netflix argued that despite these similarities, a reasonable person would not have identified Harvey as Martha because it required some degree of research to come to this conclusion. However, it seems that the court believed that it required little effort to put those pieces together. Gad had an interview with GQ where he stated that Martha is based on a real stalker, which the court says could be seen as an invitation to locate Fiona, with Fiona’s public post on Gad’s social media referencing a joke featured in the series. It also didn’t help that the series was portrayed as being a true story.

**Scott:**
No, that’s correct. The court also pointed out that there were other character traits, personality traits, that were shared between the character Martha and Harvey. So once the court decided that these character traits attributed to Martha were of and about Fiona, the court went through the remaining elements to find defamation. The court found that the offending statements, notably that Martha was a twice-convicted criminal that spent five years in prison for stalking, that Martha violently attacked Donny, and that Martha previously stalked a police officer, and that Martha stalked Donny by waiting outside his home every day for up to 16 hours a day, the court found those were assertions of fact and not the producer’s opinion.

**Jamie:**
The court also found that the statements were not substantially true. The court noted significant differences between the series Portrayal of Martha and the documented facts of Harvey’s actions. The court also found that Fiona Harvey was not a liable proof plaintiff.

**Scott:**

Now, that’s an interesting argument that was advanced by Netflix. Let’s just talk about that for a little bit. Under the liable proof doctrine, a plaintiff’s reputation with respect to a specific subject may be so badly tarnished that he or she cannot be further injured by allegedly false statements on that subject. But that doctrine has been sparingly applied. I’ve actually looked into this doctrine for a couple of studio clients when we were looking at potential defamation issues. And even where this doctrine has been applied, its application has to be limited to the same subject for which the reputation was tarnished. With regard to Harvey, the court said that even though her public reported stalking tarnished her reputation, it was reported only a handful of times, and it was over 20 years ago. The court said that it’s difficult to imagine that such scant publicity would render her reputation so badly tarnished that she could not be defamed 20 years later. The court said further that even if plaintiff could be considered liable proof on the subject of stalking, it seems unlikely that this would apply to false statements of sexual assault and physical violence.

**Jamie:**
Netflix also argued that Harvey was a public figure and that she couldn’t establish actual malice. The court found that she qualified as a limited purpose public figure because of her involvement in a public controversy surrounding her stalking charges and her attempt to seek political office. If a plaintiff qualifies as a public figure, he or she must demonstrate that the defamatory statement was made with actual malice, meaning knowledge that it was false or with reckless disregard of whether it was false or not. This is a higher standard of proof than the negligence standard required for a private individual.

**Scott:**
So this is the court’s rationale for finding actual malice. The court found that the statements were made with actual malice. This is what the court The court said, The series was adapted from Gad’s Theater Play, which stated that it was, quote, based on a true story, close quote. According to the court, this disclaimer put Netflix on notice that certain details were likely false. Yet, according to a Sunday Times article that was introduced into evidence, apparently, Netflix insisted on adding, This is a true story line to the series despite Gad’s concern. But the court found that this suggests a reckless disregard of whether statements in the series were false and thus establishes actual malice. Now, this is as an aside. If a litigator in our audience wants to explain to me how this Sunday Times newspaper article was introduced into evidence, given that newspaper articles generally are hearsay, I would appreciate that very much.

**Jamie:**
This is not a good outcome for Netflix. Scott, what are the key takeaways from this case for our listeners? Really, what should the producers have done differently here?

**Scott:**
Yeah, that’s a great question. We can start with the statement that Baby Reindeer was a true story when it wasn’t. Gad’s Play, which was the basis for this series, said that it was based on a true story, so they probably should have stuck with that. Also, there are similarities between Harvey and Martha, and the producers maybe should have paired them back. Could she been an Australian or an American lawyer or maybe an accountant. But I have to say, I really think that the assertion that Baby Reindeer was a true story hurt Netflix the most. If the producers hadn’t made that statement and included the disclaimer at the end, which they apparently did include, and the other traits remained the same, I think there would have been an entirely different outcome in this case.

**Jamie:**
Yeah, I agree, Scott. I think that the true story piece was really the cherry on top of the plaintiff’s argument.

**Scott:**
Yeah, I agree. But I still think that the court finding that the statements, the character attributes of Martha were of and about Fiona, I do think they were thin. But we now have to deal with that, and we have to understand that when we’re representing our studio and production company clients who are producing docudramas, we have to now appreciate that the risk associated with only a few shared character attributes between a real-life person and a character on the screen could be the basis for a defamation lawsuit, which really shows why you should fictionalize your characters, because I don’t know, I think you could still tell the story. I think Baby Reindeer would still be just as great. I mean, you tell me, would Baby Reindeer be just as great if Fiona was an architect or an accountant? Sure. Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or viewer, for tuning in. We hope that you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues.

And if you have any about the topics we covered today, please leave us a comment.

**Millions at Stake: How 2 Live Crew Beat Bankruptcy to Reclaim Their Music** Nov 15, 2024
Show notes

The 90s hip-hop group 2 Live Crew won big in their copyright case against Lil’ Joe Records. Scott Hervey and Jamie Lincenberg break down termination rights, bankruptcy, and what it means for artists reclaiming their work on this episode of *The Briefing*.

Watch this episode on the Weintraub YouTube channel.

Show Notes:

**Scott:**
In mid-October, a Miami federal jury handed a win to Luther Luke Campbell and the heirs of Mark Ross and Christopher Wong Won of the 2 Live Crew in their long-running copyright reclamation lawsuit against Lil’ Joe Records. The Master Sound recordings were transferred in 1990 to Skywalker Records, the label that once released the iconic 2 Live Crew albums. The court case had its twists and turns, including a ruling earlier this month that copyright termination rights survive bankruptcy. I’m Scott Hervey with the Entertainment and Media Group at Weintraub Tobin, and I’m joined today by Jamie Lincenberg, and we’re going to talk about this case on this installment of The Briefing.

Jamie, welcome back to the briefing. It’s been a little while.

**Jamie:**
Yeah, thanks for having me.

**Scott:**
Jamie, before we get into this, I don’t know. I thought we’d chat about what’s on your desk. Is there anything interesting that you’re working on?

**Jamie:**
There’s a lot on my desk, always. But let’s see. Lately, I’ve been working on some production legal for a feature film that is going to start principal photography on Sunday. So, it’s been tying up all the loose ends, making sure that we have all of the financing in place, and getting ready to roll camera.

**Scott:**
It’s always busy right before the start of principal photography, for sure. Yeah. All right. Well, let’s get into this. Just some quick background. So, Skywalker Records was formed by Luther Luke Campbell, and it was the record label that owned the master recordings to all five. I didn’t know they had that many, but all five of the 2 Live Crew albums. Now, the name Campbell and Skywalker should ring a bell with those of you that follow copyright law, because Campbell was one of the name parties in a case that transformed copyright law, literally. Campbell versus A Cuff Rose, which introduced the concept of transformative use into the lexicon of copyright law and fair use. Skywalker later changed its name to Luke Records.

**Jamie:**
In 1995, Luke Records then filed for bankruptcy. Joseph Weinberger, a tax lawyer that served as Luke Records’ CFO and In-House Counsel, bought the rights to 2 Live Crew’s master recordings out of bankruptcy for $800,000, and he then formed his own label, Lil Joe Records, to distribute them.

**Scott:**
In 2020, Luke Campbell, Mark Ross, and the heirs of Chris Juan, served a notice of termination on Little Joe Records and others purporting to terminate the transfer of the rights to the various 2 Live Crew albums that were transferred to Skywalker Records via a 1987 recording agreement, and then the subsequent transfer from Skywalker/Luke records to Little Joe records pursuing to a bankruptcy court purchase.

**Jamie:**
Scott, as we know, Section 203 of the Copyright Act permits authors, or if the authors are not alive, their surviving spouses, 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 first, 1978, when certain conditions have been met.

**Scott:**
On the effective date of termination, all rights in the work that were conveyed by the terminated grant revert to the author.

**Jamie:**
Copyright termination rights were created by Congress in the 1976 Copyright Act. They allow authors or their heirs to terminate or cancel a prior grant of copyright, even if they previously sold or licensed it. This gives them a chance to recapitulate capture control over their work after a set period. The idea behind this really is simple. The initial value of a work is often really hard to determine, and artists can therefore be at a disadvantage. These rights are considered inaliable, which means they really can’t be signed away or contracted out.

**Scott:**
So the 2 Live Crew argued that the Section 203 termination terminated the initial transfer from the band to Skywalker Records/Luke Records, and that the recapture effected a termination of Little Joe’s ownership of the master. Little Joe, who filed the lawsuit challenging the recapture, argued that, one, all five albums were created as a work for hire for Luke Records, and two, that Luke Records’ bankruptcy proceeding terminated the band’s recapture rights under Section 203.

**Jamie:**
The work for hire argument is a viable defense to a recapture claim.

**Scott:**
Yeah, that’s correct. Copyrighted works that are works made for hire or works for hire are specifically excluded from Section 203. But that argument from Little Joe Records didn’t fly. The jury ultimately found that the albums were not works for hire, but the bankruptcy argument was something new.

**Jamie:**
It is. So in addition to Luke Records’ bankruptcy filing, Campbell, individual individually filed for personal bankruptcy protection. As part of that reorg plan, all copyright rights to 2 Live Crew’s music and compositions were transferred to Little Joe, free and clear of any and all lean’s claims, encumbrances, charges, set offs, or recoupments of any kind. As part of the reorg plan, Luke Records and Campbell agreed to receive no royalties, whether as an artist, producer, writer, publisher, or in any other capacity on any of those masters or compositions.

**Scott:**
The reorganization plan did not mention future termination rights, and neither of the remaining members of the 2 Live Crew filed any claims in bankruptcy, asserting that they owned any rights or were entitled to any rights appurtenant to any of the 2 Live Crew copyrights that were transferred to Little Joe. However, subsequent to the bankruptcy filing, Ross filed for bankruptcy, and he settled a claim brought by Little Joe in the Bankrupt Matter, whereby Ross acknowledged that other than the writer’s performance rights, Ross had no rights, master or publishing rights, to any previous recording’s owned by Little Joe records.

**Jamie:**
Lil’ Joe also sued Wong Won. In settling that claim, Won agreed that Little Joe owns all right title and interests to all copyrights in the albums conveyed to Little Joe in the bankruptcy of Luke Records and Luther Campbell. So it seems that Lil Joe has tied up all ownership rights to the albums with all of the band members. Why then did the court find that the Campbell bankruptcy and the settlement agreements entered into by Ross and Juan did not prevent the band members from bringing a termination claim?

**Scott:**
Yeah, that’s an interesting question. So in bankruptcy, a debtor’s property is generally transferred into an estate that creditors can access. Little Joe argued that a copyright termination right could fall under, quote, property of the estate in bankruptcy, meaning that those rights could be used to satisfy creditors. But the question of whether a copyright termination right could constitute, quote, property of the estate, close quote, which typically includes most of the debtor’s legal and equitable interest at the time of filing hadn’t been decided before. So the big question was, whether copyright termination rights, being personal and inalienable, fit that definition?

**Jamie:**
In order to answer that question, the court had to look at the intent of Section 203. The Court said that Congress established termination rights specifically to protect artists, not to create assets for creditors. The House report that accompanied the 1976 Copyright Act made it clear termination rights are designed to protect authors from unremunerative deals due to unequal bargaining positions. So under federal law, these rights are more of a personal safeguard for the author rather than a traditional property interest. So the court finds that the termination rights aren’t property in the traditional sense because they’re personal to the author and generally non-transferable in bankruptcy. But what about the settlement agreements by Juan and Ross, which memorialized Lil Joe’s ownership of the copyright in the albums.

**Scott:**
Section 203 of the Copyright Act mentions that termination rights exist, notwithstanding handing any agreement to the contrary. In other words, even if an author signs something in bankruptcy court or a settlement agreement or other type of agreement waiving these rights, that waiver wouldn’t likely hold up.

**Jamie:**
So, Scott, is the takeaway here that termination rights are resilient against bankruptcy claims?

**Scott:**
To an extent. The court does leave open that a termination right can be relinquished during a bankruptcy. The court notes that there is no evidence in the record to support a finding that Campbell, Ross, or Juan relinquished their termination rights to the two Little Joe during the bankruptcies or as part of the settlement agreements. Neither the bankruptcy filings nor the settlement agreements mention a transfer of these termination rights. So there’s no indication that either Ross, Campbell, or used their termination rights as leverage during negotiation. And the court found that there’s no evidence that they were even aware of these termination rights during the bankruptcy proceeding and during the settlement proceeding. The court notes that even if a copyright termination right can be divested, it was not done properly here. So that leaves it open to the possibility that termination rights can be transferred if they are are specifically transferred and specifically mentioned and referenced in whatever document the parties are entering into to affect a transfer of those termination rights.

**Jamie:**
Right. This is really interesting, Scott. I’ve never really looked too far into the transfer of termination right, but I think this is definitely interesting and good to bring to everyone’s attention.

**Scott:**
Yeah, I Jamie. Thanks for joining me today. That’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today, and thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

**Bad Spirits – How a Dog Toy Changed TV Title Clearance** Nov 08, 2024
Show notes

Clearing titles for creative projects has become more challenging after the Supreme Court’s decision in Jack Daniels v. VIP Products. In this episode of The Briefing, Scott Hervey and Tara Sattler explore the evolution of the Rogers test and the new hurdles studios face in title selection.

**Cases Discussed:**

Jack Daniels Properties, Inc. v. VIP Products LLC

HomeVestors of America, Inc. v. Warner Brothers Discovery

Rogers v. Grimaldi

Punchbowl, Inc. v. AJ Press

Watch this episode on the Weintraub YouTube channel.

Show Notes:

**Scott:** One of the things we do for our production company and studio clients is clear the titles to their projects. Now, ever since the Supreme Court case of Jack Daniels Properties versus VIP products, clearing titles have become a little bit more challenging. And last year’s district Court case of Home Investors of America versus Warner Brothers shows exactly how challenging it’s become. I’m Scott Hervey from the Entertainment and Media Group at Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We’re going to talk about the impact of Jack Daniels on clearing titles for creative works on this installment of The Briefing. Tara, welcome back to the briefing. It’s good to have you back, especially on this topic, because this is something you and I deal with quite frequently.

**Tara:** Absolutely. It’s great to be here, and thanks for having me back.

**Scott:** All right. So, let’s provide a quick recap of the Rogers test and the impact that Jack Daniels had on the Rogers test.

**Tara:** That’s a great place to start. The Rogers test comes from the 1989 Second 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 in 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 a work. The District Court and the Second Circuit on appeal both said no, and from that case, the Rogers test was created.

**Scott:** Under the Rogers test, First, 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. If the title has some artistic relevance, the use does not violate the Lanham Act unless the title explicitly misleads as to the source or content of the work. Now, the first line of inquiry is whether the use of the third-party mark has some artistic relevance. Now, that threshold is extremely low. Basically, if the level of artistic relevance is more than zero, this is enough. Now, the second line of inquiry is to whether the use of the third-party mark explicitly misleads as to the source of content or work. Now, the Rogers test has been widely adopted by other circuits, including California’s Ninth Circuit.

**Tara:** On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties Inc. Versus VIP products. The dispute involves the 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 Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test.

**Scott:** That’s right. But on appeal to the Supreme Court, the Supreme Court said that the issue was not whether the dog toy is an expressive work, but rather the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, was for the purpose of serving as a source identifier. So, trademark use, in other words. The Supreme Court held that the Rogers test does not apply to instances where a third-party mark is used as a source identifier, regardless of whether it’s also used to perform some expressive function.

**Tara:** So, Scott, how has this impacted the way you advise studio and production company clients when you’re advising them on whether or not they can use specific series titles?

**Scott:** Previously, titles to expressive works like movies and TV series enjoyed protection from infringement claims under the Rogers test. Now, the title of a single artistic work generally does not function as a trademark because the title does not identify the source of the work. However, the title of a series of works, like a book series or, a TV series or a movie series, can and does function as a trademark since it serves to identify the source of the work. And since the title to a TV series functions as a trademark and acts as a source identifier, we can’t apply the Rogers test. So, ever since I was in the VIP products case, I have expressed concern that the Rogers test can no longer be applied when analyzing a TV series title. Last year’s case of Home Investors of America, Inc., Versus Warner Brothers Discovery proved my concern to be well-founded.

**Tara:** So HomeVestors of America, known for their We Buy Ugly Houses slogan, sued Warner Brothers Discovery, claiming that the title for an HDTV show, Ugliest House in America, infringed on their trademarks. Home Investors owns a family of trademarks, 30 of them actually, related to ugly houses, including the ugliest house of the year, which is used in connection with a yearly home renovation contest. Apparently, a production company, on behalf of HGTV, contacted HomeVestors regarding a possible collaboration on a show that features the largest Houses in America. Ultimately, those conversations went nowhere. However, in 2022, HGTV premiered a new show called The Ugliest House in America. Of course, Home investors then sued for trademark infringement, claiming that HGTV’s use of the show title was likely to cause confusion among consumers, leading them to believe that the show was affiliated with Homebusters.

**Scott:** Now, Discovery moved to dismiss the case primarily on Rogers. However, after briefing was completed on Discovery’s motion to dismiss, the Supreme Court decided the Jack Daniels case. Both Discovery and Home Investors filed supplemental briefing on the applicability of the Jack Daniels case to their case. Discovery argued that the court should continue to apply Rogers and that the Supreme Court opinion in Jack Daniels does not meaningfully alter the analysis because the holding in Jack Daniels concerned branded consumer products and not the descriptive title of a television series. Unfortunately for discovery, the court did not read Jack Daniels in the same manner. The court said as follows: I do not read Jack Daniels to be compatible with a blanket rule that any title alleged to infringe another’s mark is necessarily entitled to a Rogers analysis or is necessarily non-infringing. Instead, Jack Daniels makes clear that a First Amendment defense under Rogers does not apply if an alleged infringer’s use of the mark is source-identifying.

**Tara:** So, the court essentially said that even a television show title could potentially serve a source-identifying function.

**Scott:** Yeah, they Exactly said that, Tara. So the court, following the Jack Daniels guidance, conducted a thorough analysis of whether the ugliest house in America was used by discovery in a source-identifying manner. The court considered all the relevant factors alleged by Home Festers in their complaint, and they ultimately concluded that the allegations were sufficient to move the case forward.

**Tara:** Discovery did try to argue that the title was solely for artistic expression and not meant to identify a source. It argued that using a mark in an expressive work is inherently not source-identifying. However, the court disagreed, emphasizing that Jack Daniels’ requires an initial inquiry into source identification before applying Roger’s test.

**Scott:** That’s right, Tara. The court did emphasize that Jack Daniels requires an initial inquiry into whether or not the use of the mark functions as a trademark use before they will apply the Rogers test. And I think the reason why Warner Brothers Discovery would have a hard time and did have a hard time eventually having Roger’s why this was applied here and why other cases that I’ve read post-Jack Daniels dealing with the titles to a series of artistic works, whether it’s a television show or a series of video games, is I think because titles to a series of artistic works are deemed to function as trademarks, at least pursuant to trademark law. So what does this mean? So this means that, at least in in this case, it’s going to go forward, and the parties are going to have to engage in discovery, and they may potentially go to trial. The court’s going to analyze whether consumers are likely to be confused about the source of ugliest house in America based on home vestor’s family of ugly house trademarks.

**Tara:** Yeah, and I can understand why the court denied Discovery’s motion to dismiss, it was literally just following the guidance set forth in Jack Daniels. Nowhere in the Jack Daniels’ opinion does it say or even allude that its reasoning is limited to consumer good.

**Scott:** Right. I think the struggle has always been the idea of a TV series title as a source identifier, at least for entertainment services. I can see it as a source identifier for merch, for sure. But to be a source identifier for entertainment services, namely a television series, this means that an identification of the entity that controls the right in the work must be triggered by the use of the title. So in order to be a source identifier, a TV series title must convey the impression that it comes from, say, Paramount as opposed to Sony. I don’t think TV series titles ever do that. I mean, maybe in the past when we’ve had a limited number of television networks, but I mean, certainly not now.

**Tara:** Yeah, I agree with you. We really don’t see that now. But we also know that the USPTO will allow a trademark application for the title of a TV series. And if that has happened, the Rogers test will automatically not apply. You discussed this in the episode on the Punch Bull Inc. Versus AJ Press case.

**Scott:** Right. That’s right.

**Tara:** So, what does this mean for studios and production companies looking to clear a title?

**Scott:** It literally means that it’s going to be a lot more challenging for studios to find a title. Prior to Jack Daniels, there was a heavy reliance on the Rogers test. But now there’s going to be a greater scrutiny of any commercial association, not just with other show titles, but also with trademarks. And the results were probably going to take a lot more conservative risk assessment in clearing titles.

**Tara:** I agree with you, Scott. And so what does this mean if the title report identifies other TV programs with the same or very similar title?

**Scott:** Yeah, I was just dealing with that. The other day for another client. It presents an interesting challenge. If both programs are still commercially available, then I think it presents an issue. While you may be able to argue differences based on the genre of the program and where they are available for viewing, I think that might be just too thin to rely on entirely in order to clear a title.

**Tara:** I agree with you, especially because there are many different options these days for older titles to be revitalized on different platforms and viewing services. It’s an interesting thought about what impact it may have if an older title gets a new life on a new platform and is viewed by more viewers now than when the analysis was conducted.

**Scott:** Right. And not just new life in its original form, like suits, but new life in a new form, like a sequel, like suits.

**Tara:** Exactly. What are your thoughts on how a studio or a production company may be able to get ahead of this title conundrum?

**Scott:** Yeah, that’s a… Well, one, title conundrum is a great reference. It’s a great thing to call That’s a great question, too. Before a preliminary title is proposed to the network and before the network’s creatives fall in love with it, the producer should involve the legal team early in title brainstorming and have the legal team conduct frequent preliminary knockout searches before making any creative investment in the title. Have a few backup titles and be prepared for the time and cost of multiple full title searches.

**Tara:** I think that’s really good advice. I think as lawyers, we will be reviewing these reports with a lot more scrutiny, especially really digging into the trademarks that are identified in the report and specifically the registrants of those trademarks and what goods and services those trademarks are associated with.

**Scott:** Right. Remember, it’s not just the registered trademarks. Because you can have trademark rights in a mark that you don’t necessarily register with a patent and trademark office. It just opens a much bigger can of worms. Like I said, I think it’s going to make it a lot more difficult for studios to find good titles for their television series. Definitely. That’s all for today’s episode of The Briefing. Thanks to Tara Sattler for joining me today. Great conversation. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.

**The Dark Side of Halloween – Unlicensed Costumes and the Legal Haunt** Oct 31, 2024
Show notes

Halloween is here, but beware! That killer costume might come with a lawsuit instead of candy. Scott Hervey and Tara Sattler discuss the legal threats associated with unlicensed costumes on this spooky episode of *The Briefing*.

Watch this episode on the Weintraub YouTube channel.

Show Notes:

**Scott:** With Halloween just around the corner, we’re diving into a Spooktacular topic. This is the dark side of Halloween, the side where you get a lawsuit instead of a Kit Kat bar. I’m Scott Hervey from the Entertainment and Media Group at the Law Firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. Today, we’re talking about how the unlicensed use of famous movie characters for Halloween costumes could lead to a copyright and trademark lawsuit. On this installment, the spooky installment of The Briefing.

Tara, thank you for joining me today. Oh, look, look, both of us have our Halloween-themed background here. How cute.

**Tara:** Thanks for having me, Scott, and for sharing the background. This is definitely a timely topic. It’s not It’s not all bobbing for apples when it comes to infringement claims.\

**Scott:** No, it certainly is not bobbing for apples when it comes to infringement claims. Every Halloween, people dress up as characters from their favorite movies or their TV shows, whether it’s superheroes, villains, cartoon characters, you name it. Let’s talk about how costumes, as these characters, could potentially be problematic.

**Tara:** Sure. The issue centers around intellectual property rights, both copyright and trademark. Movie studios and companies often hold copyrights over the characters and their distinctive designs, and they use trademarks to protect the names and logos associated with those characters. If you’re producing or selling costumes based on these characters without permission, you’re infringing on those rights.

**Scott:** Yeah, that’s right. The way a court will determine whether a character from an artistic work, like a movie or a television show or a comic book or a book is deserving of its own copyright protection. This is protection separate and apart from the artistic work in which that character is brought to life is by applying the character delineation test. This test is a legal standard that’s used to determine whether a fictional character is sufficiently developed and distinctive enough to qualify for copyright protection. Over the years, courts have applied this test in a variety of cases involving iconic characters. This includes Godzilla, the Batmobile, James Bond, and Rocky Balboa. This means that if you take elements from these kinds of iconic characters, whether it’s their physical look, a vehicle, or even their specific costume, and start selling them as part of a Halloween costume set without a license, you could be infringing both copyright and trademark rights.

**Tara:** Let’s talk about how this could apply to, let’s say, someone selling a Joker costume without DC comics permission.

**Scott:** Sure. Yeah, absolutely. I mean, the Joker is a heavily protected character under both copyright and trademark law. Anyone selling costumes based on the Joker’s likeness without a proper license would face a copyright infringement lawsuit because that costume would be considered a derivative work derived from the Joker character. The court would apply the character delineation test, and they would certainly find that the Joker character is sufficiently developed and distinctive enough to qualify for its own copyright protection. So aside from the copyright issue, there’s also the trademark issue, and the same goes for the use of the trademarks like the Batman logo or the name Joker. The unlicensed use of these elements could also cause consumer confusion. People might think that the costumes are officially sanctioned by DC comics when they’re not.

**Tara:** So if you’re selling or even just marketing Halloween costumes with logos or designs that are close If it comes enough to the original, a company could claim that you’re infringing their trademark and you might be on the hook for damages.

**Scott:** That’s definitely something for people to think about before grabbing their favorite superhero costume. But time for a reality check. People who just want to dress up as their favorite characters for fun are really not going to be facing a lawsuit.

**Tara:** I think you’re right. In all likelihood, probably not. For personal use, like wearing a costume to a Halloween party or around your neighborhood, you’re generally not not going to get sued. The issue really arises when someone starts selling or mass-producing unlicensed costumes. Personal use falls more within the realm of fair use, where there’s no commercial gain involved. But once he enters the picture, that’s when legal troubles can begin.

**Scott:** No, that’s right, Tara. I agree with you 100%. So thanks for joining me today on this spooktacular episode of The Briefing, Tara. Happy Halloween.

**Tara:** It was my pleasure. Thanks, Scott. Happy Halloween to you and everyone else.

**Scott:** Well, that’s all for this spooky edition of The Briefing. Thanks to Tara Sattler for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

Show notes

Donald Trump is facing another lawsuit from a musician who objects to the use of their music at campaign events and rallies. Scott Hervey and Jamie Lincenberg discuss this latest challenge on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Cases Discussed: Isaac Hayes Enters. v. Trump Show Notes: Scott: Donald Trump’s presidential campaign has faced a number of challenges from musical artists that object to the use of their music in connection with his political campaign. We’ve previously covered the copyright infringement case related to the Trump campaign’s use of Isaac Hayes’ song, ‘Hold on, I’m Coming.’ I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Jamie Lincenberg. We’re going to talk about the Court’s order in Eddie Grant’s lawsuit regarding the Trump campaign’s use of Electric Avenue on today’s episode of The Briefing. Jamie, welcome back to The Briefing. Jamie: Thanks for having me back, Scott. I’m excited to dive into this interesting case. Scott: It is interesting. Let’s start with the basics. Can you give us a quick overview of what this case is about? Jamie: Certainly, this case involves a copyright infringement claim by musician Eddie Grant against the former President, Donald Trump, and his campaign. The dispute centers around the use of Grant’s song, Electric Avenue. I think we all know that one in the campaign’s 55-second video posted on Trump’s Twitter account during the 2020 presidential election. The video contains an animation of a high-speed red train bearing the words Trump pence, Keep America Great, 2020, in stark contrast to a slow-moving hand car bearing the words Biden President, your hair smells terrific. The hand car is empowered by an animated likeness of President Biden. Scott: In August 2020, Grant’s lawyer sent the Trump campaign a cease and desist letter. Neither the video nor the tweet were removed. And on September 2020, Grant filed suit. The Trump campaign contended that the use of the song constituted fair use. Now, this recent ruling comes as a result of both parties filing motions for summary judgment. Jamie: There were two key issues here. First, whether the plaintiffs had a valid copyright registration for the sound recording of Electric Avenue. And second, whether the use of the song in the campaign video constituted fair use under copyright law. Scott: So the first issue was, there’s a real interesting one. That’s whether or not Eddie Grant had a valid copyright registration in the sound recording of Electric Avenue. So as you know, a plaintiff is not allowed or able to file a lawsuit for copyright infringement unless the allegedly infringed the work has been registered. Without a valid copyright registration, a plaintiff cannot bring a viable copyright infringement action. So the question was whether the registration of the album, Eddie Grant, The Greatest Hits in 2002, which included Electric Avenue amongst the other Eddie Grant hits, also affected registration of that specific sound recording for Electric Avenue. Jamie: That’s right. And the Court ruled in favor of the plaintiffs on this issue. It found that the registration of the compilation album, Eddie Grant, The Greatest Hits, in 2002, effectively registered the sound recording of Electric Avenue contained within it. The district Court noted that courts in the Second Circuit have held that the registration of a collective or a derivative work covers registration of the constituent parts if the registrant has copyright ownership of those constituent parts as well. Scott: Now, let’s talk about the fair use question, which seems to be the core of the case. So, the Court analyzed the four statutory factors of fair use: the purpose and character of the use, the nature of the copyright-decided work, the amount and substantiality of the portion used, and the effect on the potential market. Ultimately, the Court found that none of these factors favored the defendant. Jamie: Let’s talk about the first fair use factor, which asks us Whether the new work merely supersedes the objects of the original creation, supplanting the original, which would not support fair use, or does the use instead add something new with a further purpose or different character, thereby making that use justified because the copying is reasonably necessary in order to achieve this new purpose. A use that has a further purpose or different character is then said to be transformative. The Trump campaign argued that its use of the song was transformative. The Court was, however, not so receptive to this claim. Scott: No, that’s right. The Court was not receptive to that argument. The Court found that the video has a very low degree of transformativeness, at least as it relates to the song. The Court said that the video is best described as a wholesale copying of music to accompany a political campaign ad. The Court noted that the song plays for more than two-thirds of the animation and that the song itself plays no discernible role in communicating the video’s overarching political commentary. Jamie: In assessing the first fair use factor, the Court must also consider whether the allegedly infringing use is of a commercial nature. The question of whether the work is commercial is not whether the sole motive of the use is monetary gain but whether the user stands to profit from the exploitation of the copyrighted material without paying the customary for it. Scott: And in this case, the Court found that the Trump campaign benefited commercially from using Electric Avenue without paying a license fee. The Court noted that there is a well-established market for music licensing, and the Trump campaign sought to gain an advantage by using Grant’s very popular song without paying Grant the customary licensing fee. Jamie: That’s right. And the second factor favored the plaintiffs because Electric Avenue is a creative work. And looking at the third factor, that also went against the defendants because they used a substantial portion of the song. The fourth and final fair use The Court of Justice, the Court of Justice, asks whether if the challenged use becomes widespread, it will then adversely affect the potential market for the copyrighted work. Analysis of this factor requires the courts to balance the benefit the will derive if the use is permitted, and the personal gain that the copyright owner will receive if the use is denied. Scott: The Court found that this factor favored Eddie Grant because widespread, uncompensated use could harm the potential market for licensing the song, and there would not be any public benefit that is lost from not allowing the use of the song in the Trump campaign video since the campaign, at least the Court said the campaign could have used any song, created a new song, or used no song at all to convey the same political message in the video. Denying the Trump campaign’s fair use defense in this case, the Court said, will not chill legitimate public satire. Jamie: I think that the Court got it right here. Scott, what do you think are the broader implications, though, of this ruling for political campaigns and their use of music? Scott: I think this ruling sends a clear message that a political campaign’s use of a song or other content in a political ad or otherwise as part of political speech does not, without more, automatically transform that original work. At least the Court seemed to say that there needed to be more than just the use of a song as background for a political ad or a work of political satire. The Court seemed to say that in order for the used to be transformative, the work that was used, in this case, the song, needed to somehow help convey the political message or the political satire that was being conveyed by the video or ad itself. Jamie: Right. Yeah, I agree on that reading of what the Court decided here and an analysis of their opinion I also think it’s interesting we didn’t really get into it here in this discussion or what the Court discussed as far as following the different factors. But I think this becomes an issue also with artists then being specifically associated with a certain campaign. If they don’t have any rights of approval, that would come with licensing the song. If there was a licensing agreement, they could choose not to license their song to a specific campaign. I think that’s come up in the past, and it’s also an important piece that’s not really addressed here, but it’s the association of a piece of music with a political campaign, and I think that’s important as well. Scott: Yeah, that was an issue, actually. I was talking to Tara about the Isaac Hayes case, and we mentioned it at the top of the reading here. But that was an issue that was raised by the Court in granting the Isaac Hayes entity a temporary restraining order against the Trump campaign for the use of Hold on, I’m coming in connection with political events. Apparently, the Trump campaign was using Hold on, I’m coming in political campaign events. And BMI grants a blanket license for all of the songs within its library, but it’s allowed to pull a particular song if an artist or publisher objects. And Isaac Hayes had his the entity controlling his rights had objected and then filed suit because the Trump campaign continued to use the song. And in granting Isaac Hayes’ entity the temporary restraining order, or sorry, preliminary injunction, The Court noted that as potential harm, that the continued association with the campaign is a measure of potential harm. It’s definitely something that the courts do take into account. Well, thanks for joining me today, Jamie, as always. I appreciate having the opportunity to banter with you and talk about cases like this. Jamie: Thanks for having me, Scott. Always good to be here. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment. Grant v. Trump Isaac Hayes Enters. v. Trump Show Notes: Scott: Donald Trump’s presidential campaign has faced a number of challenges from musical artists that object to the use of their music in connection with his political campaign. We’ve previously covered the copyright infringement case related to the Trump campaign’s use of Isaac Hayes’ song, ‘Hold on, I’m Coming.’ I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Jamie Lincenberg. We’re going to talk about the Court’s order in Eddie Grant’s lawsuit regarding the Trump campaign’s use of Electric Avenue on today’s episode of The Briefing. Jamie, welcome back to The Briefing. Jamie: Thanks for having me back, Scott. I’m excited to dive into this interesting case. Scott: It is interesting. Let’s start with the basics. Can you give us a quick overview of what this case is about? Jamie: Certainly, this case involves a copyright infringement claim by musician Eddie Grant against the former President, Donald Trump, and his campaign. The dispute centers around the use of Grant’s song, Electric Avenue. I think we all know that one in the campaign’s 55-second video posted on Trump’s Twitter account during the 2020 presidential election. The video contains an animation of a high-speed red train bearing the words Trump pence, Keep America Great, 2020, in stark contrast to a slow-moving hand car bearing the words Biden President, your hair smells terrific. The hand car is empowered by an animated likeness of President Biden. Scott: In August 2020, Grant’s lawyer sent the Trump campaign a cease and desist letter. Neither the video nor the tweet were removed. And on September 2020, Grant filed suit. The Trump campaign contended that the use of the song constituted fair use. Now, this recent ruling comes as a result of both parties filing motions for summary judgment. Jamie: There were two key issues here. First, whether the plaintiffs had a valid copyright registration for the sound recording of Electric Avenue. And second, whether the use of the song in the campaign video constituted fair use under copyright law. Scott: So the first issue was, there’s a real interesting one. That’s whether or not Eddie Grant had a valid copyright registration in the sound recording of Electric Avenue. So as you know, a plaintiff is not allowed or able to file a lawsuit for copyright infringement unless the allegedly infringed the work has been registered. Without a valid copyright registration, a plaintiff cannot bring a viable copyright infringement action. So the question was whether the registration of the album, Eddie Grant, The Greatest Hits in 2002, which included Electric Avenue amongst the other Eddie Grant hits, also affected registration of that specific sound recording for Electric Avenue. Jamie: That’s right. And the Court ruled in favor of the plaintiffs on this issue. It found that the registration of the compilation album, Eddie Grant, The Greatest Hits, in 2002, effectively registered the sound recording of Electric Avenue contained within it. The district Court noted that courts in the Second Circuit have held that the registration of a collective or a derivative work covers registration of the constituent parts if the registrant has copyright ownership of those constituent parts as well. Scott: Now, let’s talk about the fair use question, which seems to be the core of the case. So, the Court analyzed the four statutory factors of fair use: the purpose and character of the use, the nature of the copyright-decided work, the amount and substantiality of the portion used, and the effect on the potential market. Ultimately, the Court found that none of these factors favored the defendant. Jamie: Let’s talk about the first fair use factor, which asks us Whether the new work merely supersedes the objects of the original creation, supplanting the original, which would not support fair use, or does the use instead add something new with a further purpose or different character, thereby making that use justified because the copying is reasonably necessary in order to achieve this new purpose. A use that has a further purpose or different character is then said to be transformative. The Trump campaign argued that its use of the song was transformative. The Court was, however, not so receptive to this claim. Scott: No, that’s right. The Court was not receptive to that argument. The Court found that the video has a very low degree of transformativeness, at least as it relates to the song. The Court said that the video is best described as a wholesale copying of music to accompany a political campaign ad. The Court noted that the song plays for more than two-thirds of the animation and that the song itself plays no discernible role in communicating the video’s overarching political commentary. Jamie: In assessing the first fair use factor, the Court must also consider whether the allegedly infringing use is of a commercial nature. The question of whether the work is commercial is not whether the sole motive of the use is monetary gain but whether the user stands to profit from the exploitation of the copyrighted material without paying the customary for it. Scott: And in this case, the Court found that the Trump campaign benefited commercially from using Electric Avenue without paying a license fee. The Court noted that there is a well-established market for music licensing, and the Trump campaign sought to gain an advantage by using Grant’s very popular song without paying Grant the customary licensing fee. Jamie: That’s right. And the second factor favored the plaintiffs because Electric Avenue is a creative work. And looking at the third factor, that also went against the…

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