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The Briefing by Weintraub Tobin — Business
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:

Writers, Actors, AI The AI Centric Changes to the WGA and SAG Agreements — Writers, Actors, AI: The AI Centric Changes to the WGA and SAG Agreements Mar 02, 2024
Show notes

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. And it’s a replica that’s created using digital technology with the performer’s physical participation, and is for the purpose of portraying the performer in photography or on a soundtrack in which that performer did not actually perform.

Jamie
If a studio wants to use an actor in the creation of an employment-based digital replica, the studio must give 48 hours of advance notice prior to the services and get written consent, which must be clear and conspicuous.

Scott
It is also important that the producer gets written consent where the producer desires to use an employment-based digital replica. Now, the scope of consent and the manner in which it can be obtained is the same for the creation because you have to get consent for creation and consent for use. So, I would think it would be best practice to get both required consents in the same document. This consent it can be contained in either a section in the performer’s employment contract that’s separately signed or initialed by the performer, or it can be an entirely separate writing that is signed by the performer, like a writer or a side letter, whether it’s a provision in the talent agreement or it’s a side letter. This language, the language that must be in there, must include a reasonably specific description of the intended use. Now, once the consent is granted, it’s good for the life of the performer, and it can also continue after that performer’s death unless it is expressly limited within the consent document itself.

Jamie
And there are special rules addressing compensation to be paid to the actor in connection with creating the digital replica, but no additional compensation is due if the performer participates in the creation of the digital replica on the same day that the performer is providing other services to the producer. If the performer participates in the creation of the digital replica on a day that the performer is not providing other services, then the producer would have to pay one day at performer’s pro rata daily salary, but not less than day performer’s minimum. Now, if the work on the digital replica was scheduled on a separate day to accommodate the performer, the producer would only owe one-half of the performer’s pro rata daily salary for a four-hour session. Over 4 hours would be at the full day rate. However, no pay would be due for schedule f players or if the work happens during the player’s guarantee.

Scott
There are also compensation rules attached to the use of the digital replica. If a producer wants to use a digital replica in a motion picture or program episode for which the performer was employed, the producer would have to pay the performer’s pro rata daily rate or the minimum rate, the scale minimum rate, whichever is higher for the number of production days that the producer determines the performer would have been required to work had the performer worked instead of using the digital replica. Now, the producer must make a good faith effort to estimate the number of production days that the live person, the live performer, would have rendered services utilizing objective criteria. Now, no additional compensation is due if, based on the performer’s form of engagement, their compensation would have covered the work had it been performed by the performer. For example, where overscale compensation is applied to this type of work at the minimum scale daily rate or the digital replica is used in a scene in which the performer actually performed in person.

Jamie
So, for example, if a digital replica was used instead of a retake.

Scott
Right! And also, no additional compensation is due where the performer is under schedule f. So an employment digital replica could be used in a scene where an actor is playing multiple characters in the same scene, like the barbershop scene in “Coming to America,” where Eddie Murphy is playing almost every character, or if for some reason, the performer isn’t available at that time.

Jamie
For example, if AI was around when Paul Walker died, an employment digital replica could have been used to finish “Fast and Furious.”

Scott
Right! So the 2023 SAG changes, they also addressed when the studio can use a digital replica in a program for which the performer was not employed. Those rules say that the studio has to get written consent for this type of use at the time of use and not at the initial employment.

Jamie
That’s true. However, there is an exception, right?

Scott
Right. Yeah. Consent for use in another project may be obtained at initial employment if one, the project or projects are specifically identified and there is a reasonably specific description of the intended use that’s provided for each of the identified projects, and two, the performer is also employed in those other identified projects, or the performer is deceased at the time the other identified projects commence production. So this may be something to look at for principal cast members where the studio has options for additional seasons.

Jamie
The compensation payable for the use of a digital replica in a program for which the performer was not employed is similar to the compensation payable for the use of a digital replica in a program for which the performer was employed. It’s the daily rate, or if the use is in a field or medium covered by another SAG after collective bargaining agreement, it’s no less than the minimum wages and residuals in that agreement, and if the artist is schedule f, no additional compensation is due.

Scott
The 2023 SAG rules also provide for an independently created digital replica. This is a digital replica of a performer that is used in a project that the performer is not employed in. The rules require written consent that includes a reasonably specific description of the intended use, and fees are left for the parties to bargain.

Jamie
The 2023 SAG rules also left open the potential for producers to use a synthetic performer. This is a completely made-up digital performer that is not voiced by a natural person. The producer does have to give notice to the union, and there’s language about a good faith negotiation over lost compensation.

Scott
So I think, Jamie, I think the question will be, that producers and that talent reps will struggle with what does this consent actually look like and what actually has to be in it? What does a reasonably specific description of the intended use look like? What does it mean, and what do I actually have to disclose, and what if there are conceptual changes that later change the intended use? Does that mean that the initial consent is no good, and we have to go through an entirely new round of negotiated consent? You know, this does answer a number of questions with regard to when compensation is due to an actor for both the creation and the use of a digital replica. And it seems that from the actor’s perspective, they get paid. They get paid if a digital replica is used, and they get paid in connection with the creation of a digital replica, just like they would get paid where they’re providing post-production services, if they’re schedule f, or if it’s during their guarantee period, they’re not going to get paid anymore, but they’re already being paid over scale, so that amount is applicable to them. With regard to the use of a digital replica in a new episode, that performer has to get paid for that episode anyway. So it’s interesting to see how producers may use this, how it may become a tool to use where a performer isn’t available for travel due to travel conflicts or conflicting productions. And instead of kind of rejiggering the entire production schedule for that one scene, the producer may just elect to use an employment-based digital replica, pay the talent that rate for that particular episode, and move on.

Jamie
Right.

Scott
We’ll see. One thing is for certain: I think last year, digital, moving digital AI generative content wasn’t really quite ready yet, but I think it is now.

Jamie
Yeah, I agree with you, Scott. The AI technology is changing every day.

Scott
Right, I mean, just recently, at least on the date that we recorded this, just recently, OpenAI released Sora, which, if you look at it, it’s pretty amazing. It’s AI-generated graphic content. It still has its problems, for sure. It’s not ready for primetime yet. But looking at this as the beginning of where we’re going to go for video generative AI content, it will be ready for primetime really, really soon. So I guess it was a really good thing that SAG spent so much time in negotiating these terms for the 2023 changes to the NBA, because if they would have waited, they might have been behind the eight ball.

Jamie
Thanks for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. 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 that we covered today, please leave us a comment.

Tag, You're Sued: Graffiti Artists Sue Over Use of Their Tags — Tag, You’re Sued: Graffiti Artists Sue Over Use of Their Tags Feb 23, 2024
Show notes

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, goods, or services without that person’s prior consent, or in the case of a minor, the prior consent of the parent or legal guardian shall be liable for any damages sustained by the person or persons injured as a result thereof. So, the plaintiffs claim that Guess is using their name and their signature on merchandise, and they also claim that Macy’s is using their name and their signature in advertisements to sell Guess’ merchandise.

James:
Seems to be a very straightforward claim. Scott, what about the copyright claim? Normally, the Copyright Office will not recognize a copyright using short words or phrases.

Scott:
That’s true, James. The Copyright Office generally does not recognize a copyright in short words or phrases. Now, this claim is advanced by Bates only the depiction of Bates’ signature. It does have a very unique design elements, design element. Nekst does as well, but I think the reason why this is advanced by Bates only is because it seems that Bates has secured a copyright registration in the graphic depiction of his signature. And we know that a copyright registration is a prerequisite to the filing of a copyright infringement claim. So, it might be possible that Nekst just had not secured a copyright registration for the graphic depiction of his signature. So, to me, it seems like Bates has sufficiently pled a copyright claim, right?

James:
And it’s not readily apparent to me what defenses Guess may rely on. I guess we’ll have to wait and see and maybe do another briefing on this topic in the future.

Scott:
Yeah, we’ll definitely wait and see what happens. I suspect, though, this case is going to be settled rather quickly. That’s my guess. Thank you for listening to this episode of “The Briefing.” We hope that you enjoyed this episode. 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.

Nirvana Stuck in Lawsuit Over Nevermind Album Cover — Nirvana Stuck in Lawsuit Over “Nevermind” Album Cover Feb 16, 2024
Show notes

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, such as the distribution of child pornography. And two, the plaintiff must have suffered personal injury as a result of the violation, regardless of whether the injury occurred when the plaintiff was a minor or as an adult. The 9th Circuit made clear that while the violation of the criminal law must have initially occurred while the plaintiff was a minor, the plaintiff could pursue a claim for personal injury that did not occur until after he or she became an adult.

Scott:
Okay, and how does the tenure statute of limitations apply to the violation? Then when can the plaintiff bring a claim either? Well, the plaintiff can bring a claim that was based on an injury that occurred either before or after the plaintiff was an adult.

James:
Well, Scott, a plaintiff can bring a claim within ten years after the date of which the plaintiff reasonably discovers the violation that forms the basis of the claim.

Scott:
Okay, but this album was released in the early nineties, and that’s well over 30 years ago. So how is it that the 9th Circuit found the statute of limitations, a ten-year statute of limitations, had not yet run?

James:
Well, the 9th Circuit examined various types of personal injury the victim of child pornography may sustain, such as injury to the child’s reputation and other injuries, such as emotional wellbeing or emotional distress. The 9th Circuit continued by drawing an analogy to reputational harm that a plaintiff who is the victim of a defamatory statement may suffer. In using this analogy, the 9th Circuit pointed out that victims of child pornography, like someone who has been defamed, may suffer a new injury. Upon the republication of the offensive material, the 9th Circuit concluded that with regard to Mr. Elden’s claims, quote, we hold that if a predicate criminal offense occurred when the plaintiff was a minor, the statute of limitations does not run until ten years after the victim reasonably discovers a personal injury resulting from the offense, which may include republication of the child pornography. That was the basis of the predicate criminal offense, end quote.

Scott:
So, the first prong of the statute would require Mr. Elden to bring his claim within ten years after the date on which he discovered the use of the photos. There was no dispute that Mr. Elden was aware of the distribution of the Nevermind cover at a very young age, and thus, he could reasonably discover any additional violations of the statute as they occurred. So, to the extent a violation occurred in 2009 when Mr. Elden turned 18, he would have to bring his actions by 2019 to avoid the ten-year bar under the first prong of the statute of limitations. Had the statute only contained that type of statute of limitations, Mr. Elden’s claim would have likely been barred, right?

James:
That’s correct, Scott. However, the second prong of the statute of limitations provision allows a complaint to be brought within ten years from the date on which the plaintiff reasonably discovers the personal injury that forms the basis for his or her claim. Under this prong, the 9th Circuit concluded that Mr. Elden had timely alleged a claim for violation of section 22 55. While he alleged that the violations began in 1991 when the photograph was taken, and he was still a minor, it wasn’t until the rerelease of Nevermind in 2021 that he had sustained additional personal injuries that formed the basis of his claim. The 9th Circuit concluded that because of that rerelease and other republications after 2011, which could give rise to personal injuries under the second prong, Mr. Elden had ten years from those dates to file his complaint. And under this approach, the 9th Circuit concluded that his complaint had been timely.

Scott:
The 9th Circuit was very clear in its rejection of the defendant’s claim that the statute of limitations for violations of section 22 55 should run against a particular offender when a plaintiff, quote, knows that a particular offender is responsible for the predicate offense and subsequent injuries. The 9th Circuit said that this was not supported by the statute’s text, and logically, the child pornography victim suffers the same injury when a new individual or the original creator redistributes the image.

James:
Right, and the 9th Circuit also rejected the defendant’s argument that the plaintiff’s claim should be treated like those other cases in which a plaintiff may not have discovered all of the latent or the full extent of his or her injuries from the initial violation, which would not normally amount to a new injury. Rather, the 9th Circuit found that Mr. Elden was alleging new injuries that stemmed from each redistribution or republication of the album covered during the ten years prior to his filing of the lawsuit, and the court concluded those would be within the statute of limitations.

Scott:
Additionally, it’s important to point out the 9th Circuit rejected the defendant’s argument that Congress’s codification of a discovery rule in this specific statute displaces any common law discovery principles. The 9th Circuit reason that Mr. Elden was not arguing that he had belatedly discovered injuries arising from the initial violations of section 22 55, but rather he discovered new injuries caused by the defendant’s new actions, the 2021 rerelease of Nevermind within the limitations period. The 9th Circuit concluded that because the district court had erroneously determined that the statute of limitations barred Mr. Elden’s claim, the district court had erred. Thus, the 9th Circuit reversed the district court’s dismissal and remanded the case back to the district court. So, James, it seems that Mr. Elden will now have an opportunity to finally litigate whether the Nevermind album cover is child pornography and whether he is entitled to at least some amount of damages resulting from the redistribution of the album in 2021.

James:
That’s correct, Scott.

Scott:
And so, James, what’s the lesson? There’s got to be a lesson from this case. What’s the lesson here?

James:
I think the Elden case is a good reminder for potential plaintiffs to consider whether the republication of offending material can give rise to a new claim within the applicable statute of limitations. This approach may be useful in pursuing claims for copyright infringement where the initial infringement may have occurred years ago, but there may be acts of recent republication that could give rise to new causes of action for infringement.

Scott:
That’s true, James, and a very good point raised. James, thanks for joining us today to discuss this case.

James:
Thank you for listening to this episode of “The Briefing”. We hope you enjoyed the episode. 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 feel free to leave us a comment.

Brandy Melville v Redbubble: Navigating Contributory Infringement Feb 09, 2024
Show notes

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:
Support of Brandy Melville’s argument during oral arguments last year, an attorney for Brandy Melville said that even after the lawsuits were filed, Redbubble continued to sell infringing products on its website and required companies to notify it of the infringement in order to take down the products, and it kept certain features up on the website that allowed sellers to sell infringing products in the future. The attorney compared Redbubble’s conduct with infringing products to that of an exterminator who shows up to a house and kills insects once, but not the eggs. Then, three months later, of course, all the insects are back. The justices haven’t considered the standard for contributory trademark infringement under the Lanham Act since 1982. Given the rapid growth of the Internet and e-commerce in recent years, the petition states that it’s really time that the Supreme Court revisits this issue. I would personally have to agree that this is an issue that deserves attention given the landscape of today’s commerce marketplace, and especially in light of this Circuit split.

Scott:
Yeah, I think I may have to agree with you. So, let’s take a look at this alleged circuit split. So in Omega versus Canal LLC, this is a case where, and this is a case cited by Randy Meldville in their petition. This is a case where the Second Circuit held a landlord liable for contributory trademark infringement for leasing space to businesses that sold counterfeit Omega watches. The Omega court rejected Canal’s argument that the district court erred by not instructing the jury that Omega had to prove that Canal continued to lease space to a specific identified vendor that it knew or should have known was selling counterfeit omega goods. Brandy Melville contends that the 9th Circuit’s holding that contributory infringement occurs when a defendant continues to supply its product to a specific party whom it knows or has reason to know is engaging in trademark infringement conflicts with the Second Circuit’s holding in Omega.

Jamie:
Scott, do you think that the Supreme Court will take this case, and if so, where do you think this all ends?

Scott:
Well, circuit splits are ripe for review, and this does seem to be an interesting one. I do agree that requiring knowledge of specific infringers as a condition of willful blindness would require the mark owner to take a whack-a-mole type of approach to trademark enforcement. Where a defendant is aware of consistent infringement on its platform or in its facilities, it seems reasonable to require some degree of affirmative policing in order not to be willfully blind. So Omega is based on the second Circuit case of Tiffany versus eBay. In that case, the Second Circuit found eBay not liable for contributory infringement based on private sellers using the eBay platform to sell counterfeit Tiffany products. In that case, the court noted eBay had promptly removed listings that the plaintiff identified as selling counterfeit goods and that eBay had also formed a team to identify and remove such listings proactively.

Jamie:
Right? It seems that the proactive efforts taken by eBay after it became generally aware of infringement activities on its platform was key in finding that eBay was not willfully blind. Based on language in the petition for Cert, it seems that Redbubble did not have a counterfeit investigations team like eBay did. Let’s see if the court takes up the petition. Otherwise, we may see a lot of forum shopping in the future.

Scott:
I agree with you, Jamie. If the Supreme Court does not take this case, the petition for Cert, we definitely will see a lot of form shopping. Jamie, thanks for bringing this case to our attention.

Jamie:
Thank you for listening to this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review and share this episode with your friends and your colleagues. If you have any questions about the topics that we covered today, please leave us a comment. Samuel.

Ninth Circuit Pulls Back Rogers Test in Light of Jack Daniels Decision — Ninth Circuit Pulls Back Rogers Test in Light of Jack Daniels Decision Feb 02, 2024
Show notes

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 expressive function.

Jamie:
So why don’t we talk about Punch Bowl versus AJ Press?

Scott:
Sure. So, Punch Bowl is an online technology company whose product is online invitations and online greeting cards. Punch Bowl has been using the Mark Punch Bowl since 2006, and it has a couple of federal registrations covering the mark. Now, AJ Press was founded by two journalists who used to work for Politico, and AJ Press operates Punch Bowl News, which is a subscription-based online news publication that covers topics in American government and politics. Given the publication’s focus on politics, AJ Press chose Punchbowl because, well, that’s the nickname the Secret Service uses to refer to the US Capitol. I never knew that before reading this case, but there you go. So, the title Punch Bowl News was selected, at least according to AJ Press was selected to elicit the theme and geographic location of the publication, Washington, DC Punchbowl. The tech company sued for trademark infringement and the district court granted AJ Press’s motion to dismiss on the grounds that AJ press’ use of Punchbowl did not give rise to liability under the Rogers test because it constituted protected expression. The use, the newsletter constituted protected expression and it was not explicitly misleading as to the source.

Jamie:
The 9th Circuit affirmed the district court’s holding in November 2022, and in the week following the 9th Circuit’s opinion in this case, the Supreme Court granted cert for Jack Daniels. The 9th Circuit stayed its original decision to await the Supreme Court’s decision. Subsequent to the Supreme Court’s holding in Jack Daniels, the 9th Circuit vacated its original ruling and then held that the Rogers test does not apply to this case because AJ Press uses punch bowl to identify its news products.

Jamie:
So previously, the 9th Circuit would apply Rogers anytime there was an attempt to apply the Lanham Act to First Amendment protection or First Amendment-covered uses. One of the previous cases the court mentions was 20th Century Fox Television versus Empire Distribution, Inc., Which involved a trademark lawsuit by Empire Distribution, a record label that recorded and released albums in the urban music genre that includes hip hop and r and d. And the lawsuit, Empire distribution lawsuit was based on Fox’s use of Empire as the name of a television series about a fictional New York record label. There, the 9th Circuit held that the use of the Empire Mark as a brand, as a trademark by Fox, did not take the case outside of Rogers. Now, based on Jack Daniels, that’s not going to be the case.

The 9th Circuit said, to the extent that any previous cases held, that Rogers applies when an expressive mark is used as a mark and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to an expressive work, those cases are incorrect and are now no longer good law.

Scott:
So, under Jack Daniels, because AJ press uses punch bowl as a trademark, regardless of the fact that there is an expressive purpose for the use of punch bowl and that its use is not expressly misleading, the Rogers test cannot be applied here. Now, the court did note that the expressive nature of AJ Press’s use of the punch bowl mark and the fact that Punch bowl is a common word will certainly be relevant in the likelihood of confusion analysis that will be the focus of the case going forward.

Jamie:
Scott, I know that you regularly look to the Rogers test for guidance with your creative clients who may include third-party brands in their programs or when you determine whether a production company can use a specific title for its program. So, how do you think this case impacts them?

Scott:
Yeah, that’s a good question, Jamie. So as a threshold matter in determining whether Rogers applies, we will ask, is this use trademark use? Are we using it as a source identifier? So, for example, where a production company films a character getting into or out of a Ferrari. A Ferrari, and where that’s done to establish some characteristic about that character. For example, they’re rich, stylish, a risk taker, et cetera, Italian. That’s not going to be used as a source identifier. So, as such, we would just apply the Rogers test. However, where we are looking at the potential title of a television series or even a single motion picture, where there is the remote possibility of merch or a sequel, we will no longer just apply the Rogers test, and instead, we’re going to have to analyze that use under the multi-part trademark infringement test.

Jamie:
Thanks for bringing this to our attention, Scott. It’s really interesting and know impacts conversations that we’ll be having with our clients and that our clients should be having themselves.

Scott:
Yeah, I agree with you. Thank you for joining me today. Jamie, thank you for listening to this episode of The Briefing. We hope you enjoyed this episode. 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.

It’s Not Yabba-Dabba-Delicious – TTAB Denies Color Mark for Post Fruity Pebbles! Jan 26, 2024
Show notes

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 use, product pictures, advertising samples, sales volume and revenues, advertising expenditures, unsolicited third-party references, and two consumer recognition surveys, the trademark examiner submitted examples of third-party multicolored cereals in the form of puff rice balls, ring shapes, and other shapes. Lexus Nexus printouts has seven articles discussing rainbow-colored cereals and various articles discussing the color evolution of fruity pebbles from three colors in 1973 to the seven colors that presently exist.

Scott:
That someone would write an article about the evolution of the colors of fruity pebbles is just a head-scratcher.

Jessica:
It must have been fun to write, though. From the TTAB opinion, it seems that the TTAB found extremely persuasive the pictures of cereal boxes that show similar multicolored cereal combinations, which were submitted as evidenced by the trademark examiner. This includes some of my personal favorites: Captain Crunch, All Berries, Fruit Loops, Trix, Fruity Shapes, Cascadian Farm Organic Fruitful O’s, Trader Joe’s, Fruity O’s Best Choice, Frosted Berry O’s Best Choice, Fruit Crisp Rice Cereal, Wegman’s Fruity Rice Crisps, and seven others. 15 in total, most of which I’ve tried.

Scott:
The review podcast of the multicolored cereals will be a later episode. I agree with you. I think this evidence was the key factor in Post’s loss. The TTAB said that this evidence contradicts applicants claim that its use of the claimed colors was substantially exclusive, and it significantly increased the applicant’s burden to establish that the claimed colors had acquired distinctiveness and identify a single source of breakfast cereal, and Post just wasn’t able to satisfy that.

Jessica:
Scott, there’s also a very technical aspect to Post’s inability to secure its registration, right?

Scott:
Yeah, that’s right. So, there was an issue related to exactly what Post claimed to be the mark. The Post argued that its application covered the combination of the colors as applied to crisp rice cereal pieces, thus making the shapes of the cereal part of the application. However, Post’s amended drawing had dotted lines showing the configuration of the cereal. When depicting a physical part of a mark, like, for example, part of a product packaging or part of a product design, like a Coke bottle, the portion of the physical thing that is intended to be part of the trademark must be displayed in solid lines, not broken lines, and the configuration of the product packaging or the product design intended to comprise part of the trademark must be identified and set forth in the description of the mark. Here, the applicant’s description of the mark explained that the quote broken lines depicting the shape of the crisp cereal pieces indicates placement of the mark on the crisp cereal pieces and are not parts of the mark. So essentially, they disclaimed or said that the shapes of the rice cereal pieces are not a part of the trademark, and thus the trademark trial Appeal Board was not able to consider any of the applicant’s evidence as it related to the shapes or the configuration of the cereal. They could only consider color.

Jessica:
Interesting. And I understand there was also an issue with the description of the goods the applicant applied for breakfast cereal, and that’s understandable since it’s always advisable to get the broadest possible coverage for a trademark. However, the evidence submitted by the applicant focused only on one type of cereal, specifically rice cereal. As a result, the TTAB found the applicant’s evidence flawed and held that it did not provide any evidence that the claimed colors have acquired distinctiveness for the identified goods. That is, all breakfast cereal, including other noncrisp rice cereals in other shapes. So, Scott, what’s the takeaway from this?

Scott:
Yeah, so there are a few. The first is that all trademark applicants should recognize that color marks are very tough to get. That’s not to say that it’s impossible, as we, our firm, have obtained color marks for clients as applied to their goods in the past. The second is that when applying for a color mark because a color mark is inherently non-distinctive, it’s probably a good idea to include the color claim as part of a mark that covers product packaging or product design, as well as the color. If Post included the configuration of its cereal pieces as part of the mark, and also limited its mark to cover rice breakfast cereal, it may have had a better chance of securing a registration.

Jessica:
Well, that’s really great advice, Scott. And now I’m also hungry. But thank you for having me today. Thank you for listening to this episode of The Briefing. We hope you enjoyed the episode. 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. Thanks for listening.

Beyond the Hashtag: FTC Revises Guidelines for Endorsement Use in Advertising Jan 19, 2024
Show notes

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 liable for an endorsement. If, for example, an advertiser retreats a positive statement by an unrelated third party, or let’s say, republishes in an advertisement, a positive review by an unrelated third party, then that statement or review becomes an endorsement for which the advertiser may be liable despite the lack of any such connection.

Scott:
That’s an interesting potential trap for liability. And I know lots of brands that do that, and they have no insight into whether or not the original poster or tweeter is being truthful in what they’re saying.

Jessica:
Right?

Scott:
Yeah, like, oh, this is my favorite thing. I use it all the time, and they repost it. That could not be true. Right. We’ll talk about best practices at the end, but I definitely can think of one thing that brands and advertisers probably need to be very thoughtful of when they’re reposting and retweeting posts from third parties that they have no relationship with. Right? There’s a new section in this part of the guide that also talks about who may be liable and for what. And this new section addresses the liability of intermediaries, namely advertising agencies, PR firms, review brokers, and other similar entities.

Jessica:
The focus of this new section is to hold libel, those parties that had a role in creating deceptive ads in the first place. So, based on an FTC comment about not holding libel, production company that merely provides production services and didn’t have any knowledge about the accuracy of the statements in an endorsement, it appears that purely passive parties that have no actual knowledge about the deceptive or false nature of an ad would likely escape liability.

Scott:
So, agents and managers, you’re okay; there’s a new requirement about performance claims. It seems that the standard your results may be different might not be enough. If the claim performance is not the typical result, the advertiser must clearly and conspicuously disclose the generally expected performance in the depicted circumstances. And to be effective, this disclosure must alter the net impression of the advertisement so that it’s not misleading.

Jessica:
Wow, lots of changes coming our way. The FDC has also made some changes to the section of the guides addressing the disclosure of material connections between the endorser and the seller of the promoted product. This is what usually triggers the inclusion of hashtag and and similar sorts of tags, hashtag sponsored things like that. It’s always been clear that a financial relationship is a material connection that must be disclosed. A material connection now includes a business, family or personal relationship. It can also include a situation where the endorser is provided with free or discounted products, including products that are unrelated to the actual endorsed product, regardless of whether the advertiser requires an endorsement in return. So, material connection may also include other benefits, such as early access to a product or an event receipt of prize appearing on TV. So, it’s something that’s not necessarily as obvious as a paid endorsement for a particular product.

Scott:
So, Jessica, you do a lot of work in this space. Do you think any of these changes or revisions to the guide are a big surprise?

Jessica:
I do think that it’s a bit of a change, and I think that FTC is going broader in terms of who they’re considering an endorser. What you talked about knowing your results may differ, not necessarily being enough. So I think with the amount of money that’s being spent and the amount of advertising that exists on social media, the FTC is really just trying to sort of hone in and make the average buyer aware that there’s a lot of sponsored content out there and to try to provide a little bit more of a roadmap. But this is certainly something that everyone should be paying attention to. Content creators, agents, managers, lawyers, everyone that’s sort of on the team should be aware of these new guides that are in place and should be abiding by these accordingly to avoid getting into trouble.

Scott:
Yeah, that’s some really great advice. Jessica, thank you for joining us today.

Jessica:
My pleasure. Thanks for having me.

Scott:
Thank you for listening to this episode of the Briefing. We hope you enjoyed this episode. 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 Protectability of Short Phrases (Archive) — The Protectability of Short Phrases (Archive) Jan 12, 2024
Show notes

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, it’s probably not original enough to suffice for copyright. I kind of liken it, too. Is, is it a quote or is it a stanza or a poem? And if it’s just a quote, then it’s not copyrightable and it is okay to be used. But if it’s longer than that, then it requires clearance. But also, we’re only talking about U.S. copyright law. We’re not talking about protection under foreign law, which, granted, I’m not an expert on, but there is the implication of moral rights and attribution under moral rights in certain foreign territories. When you have the use of phrases like this, and it’s questionable, I don’t know if French copyright law has the same or Australian copyright law has the same rules or the same requirements that we have such that short phrases like this are not protectable.

Tara:
That’s right. Copyright law in different countries. Really, there’s quite a wide variety among all the different countries out there.

Scott:
Yeah. And when you’re making a product like a television show or a motion picture that’s going to air all over the world, you kind of have to think about that. You have to think about clearance from a global perspective as well because just because something might not be actionable in the United States or protectable in the United States or be in the public domain in the United States does not mean that it’s not protectable or in the public domain in other countries.

Tara:
Yeah, exactly. Like always, there’s a lot for us to think about.

Scott:
Right. Thanks for joining me today, Tara.

Tara:
Well, Scott, I think that’s a wrap. And I really enjoyed talking with you about this today. I hope everyone enjoyed this installment of the briefing by Weintraub Tobin. We have a lot more content, over 100 episodes. If you want to subscribe to, listen and hear more, you can find us on your podcast, app or YouTube. Thank you.

IP Rights and the “Public Good” Exemption to California’s Anti-SLAPP Law: An Update Jan 05, 2024
Show notes

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 exemptions, it may not be protected by the anti-SLAPP statute. For example, one exemption is commercial speech. If the lawsuit is related to advertising, marketing, or other purely commercial activities, the anti-SLAPP protection may not apply. So, the 9th Circuit initially considered whether it even had jurisdiction to review the district court’s denial of Zoom Info’s anti-SLAPP motion to strike. So what happened there?

James:
This is the interesting procedural issue you mentioned in the introduction. So, under California’s anti-SLAPP law, if a court denies an anti-SLAPP motion on one of the statutory exemptions, such as the public interest exemption or commercial speech exemption, that denial may not be immediately appealed. However, here, the district court denied the motion based on its determination that Zoom Info had failed to establish the elements for anti-SLAPP relief and was not based on any of the exemptions. As such, the 9th Circuit concluded that it had jurisdiction to consider the appeal because the district court hadn’t found any applicable exemptions.

Scott:
There was a concurring opinion by two justices on that 9th Circuit ruling, right? James?

James:
Yes, Scott, there were actually two concurring opinions, but for basically the same reason. Both justices agreed with the result of the outcome that the anti-SLAPP had properly been denied. What they questioned was whether it was proper for the appellate court to consider an immediate appeal of the denial of the motion under California law. We discussed that there is, in certain cases, an immediate right to appeal. These justices decided that’s more of a procedural issue, and the federal courts aren’t necessarily bound by California procedural law.

Scott:
Interesting. But having established jurisdiction, the 9th Circuit then went on to determine whether the district court had appropriately denied Zoom Info’s anti-SLAPP motion to strike. So what happened there?

James:
So, ironically, the 9th Circuit, to get jurisdiction, found that the district court hadn’t considered an exemption. And what they really focused their opinion on then is determining that an exemption did apply. To find that the trial court had properly denied the anti-SLAPP motion, the 9th Circuit recognized that under California law, before you engage in an analysis of the merits of an anti-SLAPP motion, you should consider whether any of the claims brought by the plaintiff are subject to a statutory exemption, the public interest exemption, or the commercial speech exemption. Essentially, what the 9th Circuit found was that the district court had put the cart before the horse by failing to address the exemptions. In its ruling denying the motion to strike, the 9th Circuit noted that if a complaint satisfies an exemption to the anti-SLAPP law, it cannot be subject to being stricken under that statute, and the.

Scott:
9th Circuit looks specifically at the public interest exemption. Correct?

James:
Right. Under California law, if a lawsuit is not subject to the under California law, a lawsuit is not subject to anti-SLAPP statute if it is brought solely in the public interest or on behalf of the general public. The exemption requires a plaintiff to plead three criteria that the plaintiff’s relief sought should not differ from that which is sought for the general public. The lawsuit should further an important right affecting the public interest, and private enforcement should be necessary and not disproportionately burdensome. Zoom info in arguing that the exemption should not apply focused primarily on the plaintiff’s claim that she was seeking personal relief, I. E. Damages, for herself as part of the lawsuit, they argued this would require an individualized determination and therefore was not in the public’s interest. The 9th Circuit rejected this argument. Citing California cases that allowed individualized relief within class action lawsuits. The 9th Circuit concluded that she was not seeking any relief in addition to what she was also seeking on behalf of the class members, and therefore, the public interest exemption should apply.

Scott:
The 9th Circuit then examined the other two elements of the public interest exemption. What did the court find for those last two elements?

James:
Sure. First, it determined that Ms. Martinez’s lawsuit would enforce an important right affecting the public interest, namely the right to control the use of one’s name and likeness and that it would also confer a significant benefit to the general public in doing so. As you know, Scott, under or California has long declared a policy of protecting artists and other individuals’ rights, to control the use of their Persona.

Scott:
Yeah, California certainly does, as does New York, by the way, and some other states as well. What about the final element of the public interest exemption?

James:
As to the third element, the 9th Circuit concluded that the public interest exemption should apply because private enforcement is both necessary and disproportionately burdensome. The court reasoned that as a non-celebrity, Miss Martinez may struggle to demonstrate economic value of the use of her name or likeness and may only recover the minimum statutory damages which would not cover the cost of the litigation itself. On the other hand, by allowing the case to proceed as a class action lawsuit, her personal recovery would be dwarfed by the total recovery for the putative class, which she had alleged could number in the millions of potential class members. Thus, the 9th Circuit concluded that the public interest exemption should apply and provided an adequate basis for the trial court’s denial of the anti-SLAPP motion by Zoom Info, even though the trial court had never reached this issue.

Scott:
Interesting. So to me, when I read this case, there’s a couple of interesting things that came out to me. The first is that the 9th Circuit basically reached the same result as the district court, but the district court went about it in the wrong way. And I guess the 9th Circuit’s opinion is important because it’s important both for district courts and practitioners to first look at the exemptions and make sure that they are either applicable or not applicable before you go on to examining the elements of the SLAPP statute itself, or whether or not the party seeking the motion to strike under the anti-SLAPP laws has satisfied the elements of the anti-SLAPP law. The second thing that stood out to me was we talked a little bit about the commercial speech exemption, which to me seemed to be a layup. But the court’s analysis of the public interest exemption really seems to be like a three-point from the top of the keys. Do you have any understanding as to maybe why the court addressed what to me seemed to be the more analytical and probably maybe more challenging exemption to apply?

James:
I don’t. Scott, the court notes in its opinion that having decided the public interest exemption applied, it needed to turn to the commercial speech. All I can suggest is possibly the public interest exemption subsection comes right before the commercial speech. So having decided the first subsection, it didn’t need to turn to the second one.

Scott:
I mean, that’s probably the reason why the court did it that way. So interesting. And maybe it felt that it needed some clarification on what is or is not a public interest exemption and that class-action lawsuits may, in fact, fall under that in the, there’s, there’s a great takeaway from this case. What should businesses take from this?

James:
Well, I think the Martinez case serves as a cautionary tale for businesses that use individual photos or personal information for marketing purposes, especially without the person’s consent. The case demonstrates both their potential legal exposure if they do so, as well as the likely obstacles they face in trying to take advantage of California’s anti-SLAPP law to seek early dismissal of these types of lawsuits.

Scott:
Really interesting. James, keep writing those really great articles, and we’ll have you back again.

James:
Thanks, Scott.

Scott:
Thank you for listening to this episode of The Briefing. We hope you enjoyed this episode. 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.

Merry Litigation: All I Want for Christmas is a Copyright Infringement Lawsuit Dec 22, 2023
Show notes

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 want for Christmas’ is you is a short phrase. And as we have discussed before, short phrases lack copyright protection.

Scott:
Yeah, that’s right. According to the copyright office circular, short phrases are unprotectable because they contain an insufficient amount of authorship.

Tara:
Vance seems ready to argue this point, though. In his complaint, he states that the phrase ‘All I want for Christmas is You’ may seem like a common phrase today, but in 1988, it was, in context, distinctive. What about the claim alleging melodic similarities? Vance alleges that the combination of the specific chord progression in the melody paired with the verbatim Hook was a greater than 50% clone of Vance’s original work in both lyric choice and chord expression.

Scott:
The determination of melodic similarities are really for the musical experts, and this is probably why the case won’t be dismissed on an early motion. However, I will note here that chords and standard chord progressions are not copyrightable, and pairing two unpredictable elements together does not transform that combination into something protectable.

Tara:
That’s right, Scott, so I anticipate a strong and aggressive response from Perry’s defense team. This song is a huge money maker for Mariah Carey and Sony. One article estimated royalty earnings of about 3 million each year just from this song, which is in addition to the 60 million in royalties that Mariah Carey earned when the song was first released in 1994.

Scott:
Agreed. However, Vance’s lawyer, Gerald Fox, is no slouch. He’s the same attorney that represented the two songwriters who accused Taylor Swift of stealing the lyrics to shake it off. As you may remember, that case went on for five years and ended in a confidential settlement in 2022.

Tara:
This certainly will be a good case to watch as it goes forward, and I’m interested to see what happens as a fan of this song; I agree.

Scott:
But one thing is for sure, this lawsuit certainly was not on Mariah Carey his Christmas list.

Tara:
Thank you for listening to this episode of the Briefing. We hope you enjoyed the episode. 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.

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