The Briefing by the IP Law Blog

Netflix has been ordered to pay GoTV Streaming $2.5 Million in damages for infringing one of its wireless technology patents. Scott Hervey and Eric Caligiuri discuss this update on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: I'm Scott Hervey with Weintraub Tobin. In a prior discussion with my colleague, Eric Caligiuri, earlier this year, we talked about a case where a federal court denied discovery requests aimed at uncovering details surrounding the financing of a plaintiff's patent litigation. That case was GoTV Streaming LLC versus Netflix in the Central District of California. In response to some inquiries and requests for further updates from some of our viewers and listeners, we wanted to give you an update on the broader outcome of this case. That's coming up on this installment of The Briefing by Weintraub Tobin. Eric, welcome to another episode of the Briefing. Thanks for joining us today. Eric: Great to be here, Scott. Scott: Eric, what can you tell us about what's happened in the GOTV streaming versus Netflix case since we last spoke? Eric: Well, Scott, California jury has found that Netflix did in fact, infringe one of GOTV Wireless's technology patents with its television and movie streaming platform, and found Netflix owes GOTV Streaming 2.5 million for the infringement. In the verdict, the jury said that Netflix should pay GOTV the damages in one lump sum as a penalty for infringing US patent number 898715. But the jury did find that Netflix did not infringe a second patent that was also included in the suits. Both patents generally covered methods for rendering content on a wireless device. Scott: So, 2.5 million is not really a lot of money for Netflix. But I do have a technical question for you, and maybe you might not know, based on the judgment, does the judgment include ongoing royalties? In other words, will Netflix be able to continue to use this technology if it continues a particular royalty payment? Or does that $2.5 million include ongoing use of the patent, or is this just for past use, and Netflix can't use this technology without further infringement? Do you know? Eric: Yeah. So, that judgment was just for past infringement. It was a lump sum payment. There's nothing about ongoing royalties or future payments. There's probably a bit of an open question in terms know what Netflix can do in the future, and they may have to go and license the patent. But there was nothing specific in the jury verdict about going forward. It was simply damages for past infringement. Scott: Okay, so either Netflix has to enter into a commercial deal with GOTV, or they need to come up with a technology that doesn't infringe that particular patent. Interesting. Eric, can you tell us about some of the background of this case? Eric: Yeah, sure. So GOtV first sued Netflix in October of 2022, alleging certain parts of Netflix's streaming service infringed two of its wireless technology patents. Specifically, GOTV alleged Netflix's streaming service uses the methods covered by GOtV's patents to lay up content on its app and website, like its widgets, menu buttons, photo imagery. Netflix argued in response that it had no pre-filing knowledge of the patents, and without that knowledge, there couldn't be any indirect infringement or induced infringement. Instead, Netflix argued that GotV tried to create knowledge of the patents by filing suit, sorting the patents, and then alleging inducement and an amended complaint. But, according to Netflix, in order to claim induced infringement, there has to be proof that the infringer had knowledge of the patents in suit before the complaint was filed. Scott: Interesting. So what happened next? Eric: Well, after conducting discovery, including covering some of the issues into litigation funding that we discussed last time, the jury found that Netflix did in fact infringe ...

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,

As James Kachmar previously wrote on the IP Law Blog, the man who was photographed as a naked baby in 1991 for Nirvana's iconic "Nevermind" album cover is now suing the band for distributing child pornography. Scott Hervey and James discuss the Ninth Circuit's opinion on the case in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: James: In 1991, the grunge band Nirvana was one of the most popular musical acts in the United States with its anthem “Smells like Teen Spirit”, which was featured on its album Nevermind. Many will remember the cover of that album, which featured a naked baby swimming underwater and reaching for a dollar bill on a fishing hook. Three months after its release, Nevermind rose to the top of the Billboard 200 rankings and since then has sold over 30 million copies. The picture on the album was licensed for use on other merchandise, such as t-shirts, and was also the subject of various parodies. Now, 30 years later, Nirvana, its surviving members, and its record companies face a civil lawsuit for allegedly distributing child pornography by the now-grown man who was depicted on the album cover as a baby. I am James Kachmar from Weintraub Tobin, and I am joining Scott Hervey from Weintraub Tobin to talk about this case on the next installment of “The Briefing.” Scott: James, welcome back to The Briefing. This case, the case of Elden versus Nirvana, has been on my mind since I read your excellent article on the case. Can you give us some background? James: Sure. Scott, the baby in that photo, is now a gentleman. His name is Spencer Elden, and he was four months old at the time the photograph was taken. He turned 18 in 2009 12 years later in 2021, at the age of 30, he filed a lawsuit, and after two rounds of amended complaints, filed a second amended complaint in January 2022. Mr. Elden asserts a single claim against the defendants for a violation of 18 USC section 22 55, which allows victims of child pornography to bring a civil cause of action for their injuries. Scott: And, James, what is the nature of Mr. Elden's complaint? What's it based on? What is it based on? James: Mr. Elden's complaint alleges that the cover of Nevermind depicting him in the nude constitutes child pornography and that the defendants, quote, knowingly possessed, transported, reproduced, advertised, promoted, presented, distributed, provided, and obtained, end quote, this alleged child pornography depicting him. He further alleges that the image has been reproduced and redistributed during the ten years preceding his lawsuit, and since then, pointing out that Nevermind had been rereleased in September 2021, claimed that he had suffered personal injury as a result of the ongoing violations of section 22 55. Scott: So initially, the defendants moved to dismiss Mr. Elden's complaint, arguing that it was barred by the applicable tenure statute of limitations for such claims. The district court agreed with the defendants and dismissed the complaint with prejudice. Mr. Elden appealed that dismissal to the 9th Circuit. And what happened on appeal, James? James: Well, Scott, just days before Christmas last year, the 9th Circuit issued its opinion in Elden versus Nirvana, LLC, and reversed the dismissal of his claims. Importantly, the 9th Circuit, in its decision, did not decide whether the album cover, in fact, constituted child pornography. Rather, it only decided whether his claims were timely. The issue of whether the album cover constitutes child pornography will be decided on remand by the lower court. Scott: So, what was the basis for the 9th Circuit's reversal of the district court's dismissal? James: Well, the 9th Circuit began by examining the text of the statute of limitation provisions in section 22 55, which set forth two pertinent time frames. First, the plaintiff must have been a minor when victimized by the violation,

Brandy Melville 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:

As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Jack Daniels Properties v. VIP Products Rogers v. Grimaldi Punch Bowl v. AJ Press 20th Century Fox Television v. Empire Distribution, Inc. Show Notes: Scott: The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel's dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I'm Scott Hervey from Weintraub Tobin, and I'm joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing. Jamie: Thanks, Scott. It's good to be back after a little bit of a hiatus. Scott: Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case. Jamie: That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity's name in the title of the work. Scott: The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can't be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California's 9th Circuit. Jamie: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test. Scott: On appeal, the Supreme Court said that the issue really was not whether the dog toy was an expressive work but rather the nature of the use of Jack Daniel's mark by VIP products. The Supreme Court found that VIP's use of the marks, while humorous for sure, was for the purpose of serving as a source identifier, trademark use. In other words, the Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it's also used to perform some expressiv...

Fruity Pebbles failed to attain a trademark for the various colors of its cereal. Scott Hervey and Jessica Marlow discuss the TTAB's decision to reject the trademark application on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: A trademark examiner refused to register a trademark for the various colors that make up the colors of Fruity Pebbles Cereal on the grounds that the proposed color mark fails to function as a trademark. The applicant, Post Foods, could not stomach the refusal, and it appealed it to the Trademark Trial and Appeal Board. On January 4, 2024, the TTAB upheld the examiner's refusal. This case exemplifies the difficulty of securing a color trademark. And there's some other takeaways, important takeaways, too. We're going to discuss this on this next installment of The Briefing by Weintraub Tobin. Welcome back to The Briefing. I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by my law partner, Jessica Marlow. Jessica, welcome back to The Briefing. Jessica: Thank you. Happy to be back. Scott: So, Jessica, I know that you're a fan of fruity pebbles, right? Jessica: I am. Scott: Okay. Jessica: At all ages. Scott: Yeah, this case is right up your alley. So Post Foods applied to register a trademark for the various colors that make up the colors of Fruity Pebble Cereal. Understanding just how difficult it would be to register the color mark, the application included a declaration from the applicant's counsel supporting the two-f claim, which is a claim of acquired distinctiveness and allegations of long use, extensive advertising and, unsolicited media coverage and significant product sales. Supporting this claim of acquired distinctiveness. The examining attorney refused to register the mark because it consisted of a nondistinctive product design or nondistinctive features of a product design that are not registerable on the principal register without sufficient proof of acquired distinctiveness. And while the applicant's two-f claim and all the evidence that the applicant submitted in support of the two-f claim was an attempt of establishing acquired distinctiveness, the trademark examiner said that the section two-f claim showing was insufficient to demonstrate acquired distinctiveness. Jessica: Right. And in response to the office actions, the applicant submitted additional evidence of the mark's acquired distinctiveness, including the results of a consumer survey, long use of the mark, significant advertising expenditures and sales revenue, extensive media coverage, and customer statements. Despite all of this, the examiner found the additional evidence insufficient to show acquired distinctiveness and continued to refuse registration on the grounds that the mark failed to function as a trademark. Post appealed this refusal to the TTAB. Scott: Now, color marks are never inherently distinctive when used on products or on product designs. Where a color mark is not functional, it may be registered on the principal register if it is shown to have acquired distinctiveness. The TTAB noted that the burden of proving that a color mark has acquired distinctiveness is substantial there are six factors that are considered in determining whether a color mark has acquired distinctiveness, and those six factors are the association of the trade dress with a particular source by actual purchasers, and usually that's measured by customer surveys, the length, degree, and exclusivity of use the amount and manner of advertising the amount of sales and the number of customers, intentional copying and unsolicited media coverage of the product embodying the mark. No single factor is determinative, and all six factors are to be weighed together in determining the existence of secondary meaning. Jessica: In response to the evidence submitted by the applicant, which included product history and length of us...

The FTC recently made changes to its guide concerning the use of endorsements and testimonials in advertising. Scott Hervey and Jessica Marlow discuss these changes and their expected impact on the influencer marketing industry in this episode of The Briefing.  Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: It's a new year, and some changes are in place for those in the influencer marketing business, whether it's on the brand side or on the talent side. We'll be covering recent changes to the FTC's guide concerning the use of endorsements and testimonials in advertising on this installment of The Briefing by Weintraub Tobin. Happy New Year, and thank you for tuning in to today's installment of The Briefing. I'm Scott Hervey of Weintraub Tobin, and today, I'm joined by a first-time guest to The Briefing, my law partner, Jessica Marlow. Jessica, welcome to the briefing. Jessica: Thank you, Scott. Happy to be here. Scott: So, Jessica, can you give us a little background on the FTC's involvement in endorsements and testimonials and the endorsement guide? Jessica: Absolutely. So, the FTC has the authority to investigate and bring cases related to endorsements made on behalf of an advertiser under section five of the FTC Act, which generally prohibits deceptive advertising. The endorsement guide is intended to give insight into how the FTC perceives various marketing activities involving endorsements and how the FTC's acts prohibition against deceptive advertising might apply to those particular activities. The guides do not have the force of law, but they are considered to reflect safe practices, meaning that if your marketing activities are inconsistent with the guides, that could result in law enforcement actions alleging deceptive advertising, which could include fines or restitution. Scott: That's a great summary. So, I understand that the guides have been around since, believe it or not, 1979, with the biggest update occurring in 2009, which addressed bloggers. Remember those celebrity endorsers and UGC user-generated content. Since then, the guides have continued to be updated to address the evolution of social media advertising. So, what's new? Or what's new in this most recent update to the guide? Jessica: Well, the FTC has provided some new guidance on what is an endorsement and who is an endorser. The historical definition of endorsement is any advertising, marketing or promotional message for a product that consumers are likely to believe reflects the opinions beliefs finding experiences of a party other than the sponsoring advertiser. So, the FTC has now included tags and social media posts in the list of things that can be considered. Scott: Endorsement and the FTC's position on who is an endorser. Now that changes. A reflection of the proliferation of AI influencers. The FTC now defines an endorser as that which quote appears to be an individual, group or institution. The FTC did make it clear that this language does not just apply to virtual or fabricated influencers. It also applies to writers of fake reviews and nonexistent entities that purport to give endorsements. So, let's talk about something that I'm sure everybody loves talking about. That's liability. Jessica: Oh, yes, liability. So, let's dive into that a little bit further. Everyone likes talking about how they can be sued. So, the previous language about advertiser liability said that advertisers are subject to liability for misleading or unsubstantiated statements made through endorsements. When there is a connection between the advertiser and the endorser, the FTC has deleted the wording. When there is a connection between the advertiser and the generally, there's a connection between the advertiser and the endorser because it is, after all, a marketing or promotional message. However, the FTC has pointed out that a connection is not always needed for an advertiser to be lia...

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,

In the case of Martinez v. Zoom Info Technologies, the Ninth Circuit addressed the "Public Interest" exemption to California's anti-SLAPP law. Scott Hervey and James Kachmar talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: The 9th Circuit was recently asked to address the public interest exemption to California's anti-SLAPP law in a proposed class-action lawsuit brought by a plaintiff whose photo and personal information were used without her consent to advertise subscriptions to the website Zoom info. The case is Martinez v. Zoom Info Technologies. My colleague James Kachmar recently wrote an article exploring the interesting substantive and procedural issues concerning the interplay between one's intellectual property rights and California's anti-SLAPP law that arose in this case. James is joining me today to talk about this case on this installment of The Briefing by Weintraub Tobin. James, welcome back to The Briefing. James: Thanks for having me. Scott. Scott: James, you wrote an extremely insightful article about the holding in Martinez versus Zoom Info Technologies, Inc. Can you give us some background on the case? James: Sure, Scott. Zoom Info is a website. It boasts a database of approximately 125,000,000 business professionals and contains their relevant information. When someone searches for a person or a business person, either through a web search or through Zoom Info's website, they can view a teaser profile of Zoom Info with some information about that person, such as their photo, maybe some limited business information, but most of the information is redacted. This teaser profile then contains the subscription buttons that invite the viewers to subscribe to Zoom info for a fee to access more information about that person and do other searches. The plaintiff in the case, Kim Martinez, is a political and legislative director of a labor union representing California public sector employees. Zoom Info has a profile dedicated to her that includes information regarding her job title, her employment at the union, contact information, and names of several of her business colleagues. Her teaser profile included options for a viewer to subscribe to Zoom Info, including, apparently, an option for a $10,000 annual subscription. Ms. Martinez alleged she never used Zoom Info and had not consented to the use of her profile by Zoom Info for marketing purposes. In September 2021, Ms. Martinez filed a lawsuit against Zoom Info in federal court on behalf of herself and a proposed class of California citizens whose profiles might have been used without their consent, like hers. She claimed that Zoom info violated California law, particularly the right of privacy statute, by unlawfully profiting from her intellectual property of herself and the class. Members, such as the use of her name, photo and employment information and Zoom. Scott: Info responded to this filing by filing a motion to dismiss under California's anti-SLAPP laws, correct? James: Yes. It filed two motions, a motion to dismiss saying that the lawsuit had no merit, and a motion to strike under the anti-SLAPP law in California. California's anti-SLAPP laws, designed to protect against lawsuits brought primarily to suppress free speech and petition rights while encouraging participation in matters of public significance. The district court denied Zoom Info's motions, including the motion to strike under the anti-SLAPP, which led Zoom Info to file an immediate appeal to the 9th Circuit. Scott: Now, California's anti-SLAPP law includes several exemptions or exceptions where the anti-SLAPP statute may not apply. These exemptions are designed to ensure that the law is appropriately applied in cases where there are legitimate concerns or disputes that go beyond free speech and public participation. If the alleged conduct falls under one of these exem...

Country singer Andy Stone, A.K.A Vince Vance, has renewed his lawsuit against Mariah Carey, which claims that her holiday hit 'All I Want for Christmas Is You' infringes the copyright of his song with the same name. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Andy Stone, known professionally as Vince Vance, is suing Mariah Carey and Sony Music Entertainment for copyright infringement. Vance claims that the decades-old Christmas hit ‘All I Want for Christmas is You’ infringes his 1989 song ‘All I Want for Christmas is You.’ I'm Scott Hervey with Weintraub Tobin, and I'm joined today on this holiday edition of The Briefing by my partner Tara Sattler to discuss this Christmas-themed copyright infringement dispute on this next installment of The Briefing by Weintraub Tobin. So, Tara, I think nothing rings in the holiday like a good copyright infringement lawsuit. Tara: Yeah, who doesn't want to spend the holidays with their lawyers in court? Scott: I know I certainly do. So, Tara, according to the complaint, Stone and his co-writer Troy Powers claim that in 1989, they co-wrote a country music hit also titled ‘All I Want for Christmas is You.’ That song was recorded by Stone's band Vince Vance and the Valiants, and apparently, it went to number 23 on Billboard's Hot 100 airplay list. He claims that he has performed this song over 8000 times in concerts across 20 countries. He also claims that this song was licensed by Kelly Clarkson, who recorded her version of it in 2021. Tara: In the complaint, Stone alleges the unique linguistic structure of his song was copied and that his song is about a person disillusioned with expensive gifts and seasonal comforts, wants to be with their loved ones at Christmas, expresses that wish to Santa, and that the loved one and unnamed you standing under the Christmas tree would be a dream come true. Stone also identifies the phrase 'All I want for Christmas is You' as an element that was infringed. Lastly, the plaintiff claims that similarities in the melody support its claim. Scott: So, let's take a look at these claims and see how Carey and her team may respond and also how a court, right here in the Central District of California, may analyze the plaintiff's claims. So, as we know, a court will analyze the complaint by applying the extrinsic test, which, as we've discussed before, is used in the determination of substantial similarity. After the plaintiff has identified specific criteria that it alleges to have been copied, the court separates the unprotectable elements, such as facts or ideas, from those elements that are protectable. And then it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the plaintiff's work. So, let's look at two of the elements the plaintiff identifies as being infringed: the linguistic structure and the phrase 'All I want for Christmas is You.' Tara: Sure? There are many songs that express the sentiment of wanting to be with a loved one during the Christmas season, and I can think of a few songs that draw on the theme of expressing wishes to Santa, such as Ariana Grande's 'Santa, Tell Me,' 'My Grown-Up Christmas List' by Amy Grant, and even 'Santa Baby' by Earth A. Kitt. Scott: That's right, and I suspect that Carrie's team will argue that the theme of expressing the desire to be with a loved one for Christmas is too common of a theme for Christmas songs to be protectable. They will argue that the concepts of love, longing to be with a loved one at Christmas, and expressing desires to Santa are frequently present in Christmas songs, and that places them outside of the protection of copyright law. Tara: Similarly, I think that Carrie's team will argue that 'All I w...

Mariah Carey has widely been referred to by fans as the 'Queen of Christmas,' but when she attempted to trademark the title last year, it was met with pushback from another singer and songwriter who claimed to hold the same title. Scott Hervey and Tara Sattler discuss this dispute on this Holiday edition of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In 2022, Mariah Carey sought to register the trademark ‘Queen of Christmas’ for a wide variety of goods and services. Her application was opposed by a singer-songwriter who claimed she was known as the Queen of Christmas. I'm Scott Hervey with Weintraub Tobin, and I'm joined today by my partner Tara Sattler to discuss this holiday trademark dispute on this next installment of The Briefing, Christmas edition, by Weintraub Tobin. Tara, welcome to The Briefing. You have a great holiday sweater on. Tara: Thanks for having me, Scott, and so do you. Scott: So, as you know, Tara, Mariah Carey is extremely well known for her 1994 holiday hit "All I Want for Christmas is You", which has reportedly made more than $60 million in royalties alone. In 2022, her company filed a trademark registration application for Queen of Christmas, covering a wide variety of goods and services. In the prosecution of her trademark application, while the United States Patent and Trademark Office trademark examiner assigned to the application raised a few issues, the application pretty much sailed through to publication. Tara: Then, later that year, singer-songwriter Elizabeth Chan filed an opposition to the registration of the mark. The basis of Chan's opposition was likelihood of confusion. In her filing, Chan claimed that she is pop music's only full-time Christmas singer-songwriter and has herself been repeatedly dubbed the Queen of Christmas. She claims to have prolifically written, composed, and performed only original Christmas holiday-themed songs for more than a decade, and due to the notoriety that she's attained for this singular and specific achievement, Elizabeth Chan has been referred to as the Queen of Christmas by multiple media, including in 2018 by the New Yorker Magazine. Scott: In her opposition, Chan claims to have been in continuous use of the Mark Queen of Christmas since at least 2014. Chan further argued that Queen of Christmas should not be owned or controlled by Ms. Carey's company since Ms. Carey herself has admitted that she did not create the title or moniker Queen of Christmas, and she does not even consider herself the Queen of Christmas. Tara: So, with the opposition filed, Ms. Carey's company was required to file an answer by a date certain, which did not happen. As a result, a default was entered against Ms. Carey's company, and the application to register the mark was deemed abandoned by the TTAB. So Scott, do you think that Carey was being Scrooge in filing her trademark application? Scott: I don't think so. She was represented by a highly reputable law firm and she certainly could have pressed her rights if she desired to do so. Maybe she was moved by the opening paragraph in Chan's petition, which said Christmas is big enough for more than one queen. Over the decades, several recording artists have been dubbed with the nickname Queen of Christmas, including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come. I mean, whatever Carey's motivation was not to defend against the petition and to allow her application to go abandoned. This thing we can be certain of, as certain as there is a Santa Claus, that there will be more than one queen of Christmas. Tara: Well, that's a really interesting case study and example. Scott, thanks for telling us about this one. Scott: Thank you for listening to this episode of The Briefing.

The Supreme Court rejected a trademark infringement claim against the producers of the Quentin Tarantino film ‘Once Upon a Time… in Hollywood’ over its portrayal of the late actor Christopher Jones. Scott Hervey and Tara Sattler discuss this decision in this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: The laws surrounding false endorsement claims in the United States are rooted in section 43 A of the Lanham Act. There's quite a bit of case law that analyzes false endorsement claims brought by celebrities who claim that a company or brand used a lookalike or soundalike to promote the brand in advertising or marketing campaigns without the celebrity's permission. Recently, the U.S. Supreme Court refused to review a California case about this exact topic. This time, the case was brought by the partner of the late actor Christopher Jones concerning the popular 2019 Quentin Tarantino film ‘Once Upon a Time in Hollywood.’ This is what we will be discussing in today's installment of the Briefing by Weintraub Tobin. Scott: I'm Scott Hervey from Weintraub Tobin. Tara, thanks for joining me today. So you're right that celebrities bring these types of false endorsement claims under section 43 A of the Lanham Act relatively frequently. So, let's talk about the specific language in the Lanham Act that addresses false endorsement. Tara: That's a great place to start. Section 43 A imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol or, device, or any combination thereof, or any false designation of origin. False. Or misleading description of fact or false or misleading representation of fact, which is likely to deceive consumers as to the affiliation, connection, association sponsorship, or approval of another person's goods or services. Scott: Right. And courts have held that a celebrity's physical likeness, voice, or other unique or distinguishing characteristics does constitute a symbol or device as specified in section 43 A of the Lanham Act. So, this is the usual basis for a celebrity false endorsement claim. These types of claims often arise in marketing and advertising campaigns where a brand or a service will use a lookalike or a sound alike of a celebrity. And I've even seen cases where they've used photographs of a celebrity to market that brand. Vanna White from Wheel of Fortune and the pop culture and music icon Ariana Grande, to name just a few, have brought false endorsement claims in the past. Tara: This recent case that went up to the U.S. Supreme Court concerns the likeness and unique physical attributes of the late actor Christopher Jones. Jones was a popular actor in the 1960s, starring in both TV and movies. Jones passed away in 2014 and assigned the rights in his likeness to his partner, Paul McKenna. Sony released Quentin Tarantino's film Once Upon a Time in Hollywood in 2019. The film is loose historical fiction based in the 1950s and centers around fictional characters played by Leonardo DiCaprio and Brad Pitt. It also touches on the Manson family murder of Sharon Tate McKenna. Scott: The executor of Jones's estate brought both a false endorsement claim and a trademark infringement claim against the producers of Tarantino's film. The plaintiff cited a few examples as the basis of the claim. First, Jones's name was mentioned in Tarantino's film. Second, a television advertisement and a marquee advertisement that mentions Jones's name and one of Jones's films. Three in The Addict are shown on screen in Tarantino's film. And third, Jones was used as the inspiration for the fictional character played by Brad Pitt and Leonardo DiCaprio. While these characters interacted with commercial brands. Tara: In Tarantino's film, the trial court evaluated the merits of McKenna's claim. While evaluating the defendant's anti-slapp motion on the false endorsem...

The creator of a LEGO brick Second Holy Temple product is accusing another LEGO creator of copyright infringement for their interpretation of the same temple. Scott Hervey and Eric Caligiuri discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here or read Eric's article about this case here. Show Notes: Scott: I'm Scott Hervey from Weintraub Tobin. My colleague Eric Caligiuri wrote an interesting article for The Briefing about a recent copyright ruling involving competing LEGO sets. And we're not talking about just any old LEGO set, but a LEGO Brick interpretation of the Second Holy Temple. We are going to talk about this case, the case of JBrick versus Chazak Kinder, Inc, on this installment of The Briefing by Weintraub Tobin. Eric, welcome back to the podcast. Eric: Thanks, Scott. Good to be here. Scott: Great. Can you give us a rundown of the case? Eric: Yeah, sure. Of course. The founders of Plaintiff JBrick created a LEGO brick Second Holy Temple product that was based on independent research and at least three years of studying of historical teachings. Plaintiff also consulted with various rabbis as part of the design process. According to the court, the Second Holy Temple product is a tangible, sculptural interpretation of what the Second Holy Temple may have looked like in real life, based on the written words and interpretations of Hebrew scholars and philosophers. Scott: And JBrick even went so far as to obtain copyright registrations for its Second Holy Temple product, along with the copyright registrations for the product's photographs, right? Eric: Yes, that's correct. And now the plaintiff, JBrick, alleged that the defendant's product was almost an exact replica of its own Second Holy Temple product, containing all the unique features that set JBrick's product apart from its competitors. Accordingly, JBrick filed a complaint in May of 2021, citing claims for copyright infringement and unfair competition against these defendants. The defendants responded by claiming or by filing counterclaims for non-infringement of copyright, copyright invalidity, torture's interference with prospective economic advantage, and false advertising. Scott: And let's forward to the recent court ruling. And in that ruling, the court addressed the plaintiff's motion for summary judgment on the defendant's counterclaim for copyright invalidity. So, under the Copyright Act, a copyright registration creates a rebuttal presumption that the copyright is valid. This presumption of validity may be rebutted where other evidence casts doubt on that question. So, given what we have here, given that JBrick has copyright registrations, the burden it shifted to the defendant to come forward with evidence that the works in question were copied from the public domain. Eric: Yes, that's exactly right. So, the defendants argued that because the information concerning the Second Holy Temple is in the public domain, the plaintiff's copyrighted works are not original. As a result, the defendants contended that the plaintiff's second Holy Temple product can be copied and used in derivative works. The defendants further argued that a historically accurate replication does not constitute a new and original work. Scott: So I can see that Eric being a fairly compelling argument. How did J Brick respond to this? Eric: The plaintiff responded that there's no evidence to support the defendant's depiction of the Second Holy Temple in the public domain, that there's no evidence that plaintiff's depiction is a historically accurate replication because the Second Holy Temple was destroyed almost 2000 years ago and there are no images from before when the building was destroyed. In order to create the Second Holy Temple product, the plaintiff had to read numerous textual descriptions and translated words into a 3D sculpture, further supporting its claim. Originality.

The Supreme Court recently heard oral arguments in the case of Vidal v. Elster to determine whether the USPTO’s refusal to register the trademark “Trump Too Small” violates the applicant's First Amendment rights. Scott Hervey and Eric Caligiuri discuss this case on this installment of The Briefing.  Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Today, November 1, 2023, the Supreme Court will hear oral arguments on whether the Trademark Office's refusal to register the trademark “Trump Too Small” on the grounds that it violates Section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual's consent violates the applicant's First Amendment rights. We are going to talk about this case on this installment of The Briefing by Weintraub Tobin. The case is Vidal v. Elster. The facts are relatively simple. Elster sought to register the mark "Trump Too Small" for T-shirts. The USPTO refused to register the mark based on section Two C of the Lanham Act, which bans the issuance of trademarks that include the names identifying a particular individual without that individual's consent. Elster appealed this refusal to the Federal Circuit, where Judge Timothy B. Dyke held for a unanimous panel that the government's interest in protecting the privacy and publicity rights of President Trump did not outweigh Elster's First Amendment right to criticize that public figure. Eric: USPTO suspended the examination of applications of trademarks that cover phrases that are critical of government officials or public figures and petitioned the Supreme Court for review? Scott: That's right. The question for review by the Supreme Court is whether the Section Two C Bar of the Registerability of trademarks that identify a particular individual without their consent, including those that are critical of government officials or public figures, is a condition of a government benefit, the trademark registration, or a restriction on speech. Eric: So let's talk about this in light of Matal vs. Tam, which struck down a ban on trademarks that may disparage groups of people, which included marks that incorporated racist or demeaning terms on First Amendment grounds, and also Iancu v. Brunetti that invalidated a ban on profane or lewd trademarks, also on First Amendment grounds. Scott: That's a good point, Eric. In its petition to the Supreme Court, the USPTO distinguished these two cases from this instant case. The USPTO argued that the restrictions at issue in Tam and Brunetti were viewpoint-based restrictions. The USPTO contends that Section Two C is viewpoint neutral, meaning it doesn't matter whether the application is for a mark that is critical of a live person, complimentary of a live person, or neutral. If the mark contains the name of a live individual, it can't be registered without their consent under section two C. Eric: So, Scott, putting aside the argument that Section Two C is a viewpoint neutral, do you think that the trademark Office's refusal to register Chill's political speech? Scott: I don't remember. Registered trademark is a protectable right. So what happens if this applicant was granted registration? Then, others who want to express a similar political sentiment on a T-shirt or a bumper sticker would be prohibited from doing so. The granting of a trademark registration to Marx that includes political criticism of notable figures would actually limit that kind of speech. Specifically, the office stated that it is the registration of marks like the respondents, not the refusal to register them, that would chill such speech. Eric: Thanks, Scott. Very interesting. Be sure to update us when the Supreme Court issues a ruling. Scott: I certainly will. Thank you for listening to this episode of the Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe,

Thomson Reuters sued Ross Intelligence for using its content to train its AI technology. Scott Hervey and Tara Sattler talk about this copyright dispute on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Thompson Reuters, the provider of the Westlaw Legal Research Platform, sued Ross Intelligence for copyright infringement based on Ross's use of Westlaw content to train Ross's IP technology. This court ruling on a motion for summary judgment may provide guidance for future similar cases, and it even provides some additional guidance into the application of a post-Warhol fair use defense. We're going to talk about this case on the next installment of The Briefing by Weintraub Tobin. These are the basic facts underlying this lawsuit. Ross is an AI legal startup. Ross hired a subcontractor to create memos with legal questions and answers. The questions were meant to be those that a lawyer would ask, and the answers were direct quotations from legal opinions. Those memos were used to train Ross's AI tool. Thompson Reuters contends that these questions were essentially Westlaw case Headnotes. Ross denies that the Westlaw Headnotes were copied but also raises a fair use defense. As the case went forward, both sides moved for summary judgment on Ross's fair use defense. The court denied the party's motions for summary judgment on Ross's fair use defense, but there are a few points in this opinion that may shape the way future AI training cases play out. Tara: Before we get into the analysis of Ross's fair use defense, the court spent a significant amount of time talking about the scope of Westlaw's copyright. Westlaw's copyright extends to its Headnotes and its arrangement of the Headnotes and opinions, but its copyright does not extend to the opinions itself. Scott: That's right, and the reason the court spent so much time talking about the scope of Westlaw's copyright was because Ross challenged Westlaw's copyright claim in the Headnotes. Ross claims that the Westlaw Headnotes follow or closely mirror the language of the judicial opinions. And if a Headnote merely copies a judicial opinion, it's not copyrightable. But if it varies more than a trivial amount, then Westlaw owns a valid copyright. The court found that this leaves a genuine factual dispute about how original the Headnotes are. If the Headnotes are mere regurgitation of parts of an opinion, this will severely impact the strength and the extent of Westlaw's copyright case and Westlaw's copyright in its whole, including in the Headnotes. And it also goes to whether Ross was copying the Headnotes or the opinions themselves. Tara: So, how do you see this applying to other copyright cases involving AI training? Scott: Well, this analysis is part of the extrinsic test, which is used in the determination of substantial similarity after the plaintiff has identified specific criteria which it alleges have been copied. The court separates the unprotectable elements, such as facts or ideas, from the elements that are protectable. And then, it sorts out whether there is enough similarities between the works as to the elements that are protectable, such that a reasonable jury could find that the defendant's work is substantially similar to the protected elements of the plaintiff's work. This analysis is part of any copyright case, and it certainly will be part of an AI training case as well. Tara: Okay, so back to Ross's fair use defense, because the court finds that Ross actually copied the head notes. So fair use balances four factors: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for the copyrighted material. The first factor assesses whether the use is transformative,

A tattoo artist is suing Netflix for showing one of her tattoos in the series "Tiger King" without her permission. Scott Hervey and Tara Sattler discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: On this installment of The Briefing, we're going to talk about yet another post-Warhol fair use case. However, in this case, the Court finds the secondary use to be transformative. This case also makes me think that fair use, grounded in use as a biographical anchor, isn't quite as dead as I may have thought it is. We're going to talk about Molly Cramer vs. Netflix on this installment of the Briefing. The case is Molly Kramer vs. Netflix. It arises from a tattoo artist's lawsuit against Netflix due to the portrayal of her Joe Exotica tattoo, actually, a picture of her Joe Exotica tattoo as tattooed on her husband's arm that she posted on Facebook, and the use of this image in the first episode of the second season of Tiger King. The context of the display of this photo and the tattoo is relevant to the Court's analysis. So the opening of the episode, this is the first episode of the second season, is meant to be reflective of the popularity of Tiger King and Joe Exotica and how it spread like literal wildfire during the first half of COVID The montage shows approximately 27 TikTok videos depicting dancers dressed as Joe Exotica are wearing animal print clothing and a clip from a Trump press conference where he asks, is that Joe Exotica? Then there are about 58 seconds into the episode, an eight-way split-screen montage appears with all types of images of or relating to Joe Exotica, and this includes the photo of the tattoo in the lower left-hand corner. And this appears on screen for about 2.2 seconds. The barrage of images and videos continue on for about three minutes in total, all of which is to show how Joe Exotica, Carol Baskin, and the other cast of characters from Tiger King became a huge part of the cultural zeitgeist for that specific moment in time. Tara: So the tattoo artist here, Molly Kramer, obtained a copyright registration covering the tattoo and then sent Netflix a demand letter. The court opinion says that she demanded $10 million to settle the infringement claim. Scott: So, let's talk about that demand for a second. If, as a plaintiff in a case like this, you come out with such a huge demand number, a number that, at least as far as I'm concerned, has no relation to the amount of damages that you would likely be awarded. I think it only pushes the defendant to defend the case because it says that you either aren't reasonable or that you don't understand how damages in a copyright case are to be assessed. So, yes, I mean, Netflix has a lot of money, but it isn't handing out bags of money to plaintiffs who have a potentially defensible claim. Tara: And it seems like that's probably what happened here, because it seems that Netflix and Kramer's attorney did exchange further letters, and Kramer eventually offered to settle for $50,000 instead of 10 million. But Netflix continued to insist that their use was fair use. Kramer eventually filed a copyright infringement lawsuit, and Netflix filed a twelve B six motion to dismiss the case on the grounds that Netflix's use of the tattoo image was fair use. Scott: So, to determine whether a work constitutes fair use, courts engage in a case-by-case analysis and a flexible balancing of relevant factors. Those factors are the purpose and character of the use, including whether the use is of commercial nature or is for a nonprofit educational purpose. The second factor being the nature of the copyrighted work that's copied, the third factor being the amount and substantiality of the portion of the work that's used in relation to the copyrighted work as a whole. And the fourth factor is the effect of the use upon the potential market for or value of the copyrighted w...

Former New York prosecutor Linda Fairstein is suing Netflix over her portrayal in the limited series "When They See Us," which tells the story of the 1989 Central Park Five case. Scott Hervey and Tara Sattler discuss this dispute on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: There have been quite a few high-profile defamation cases making their way through the courts recently. One of those cases is Fairstein v. Netflix, a defamation case brought by attorney Linda Fairstein, the New York City prosecutor who ran the sex crimes unit and oversaw the prosecution of five African American men known as the Central Park Five, who were wrongly accused and imprisoned for a near-fatal rape in Central Park. Fairstein sued Netflix for defamation over her character's depiction in the limited series When They See US, that was released by Netflix and produced by The Streamer. Even though the case has not yet gone to trial, there have been several interesting pretrial rulings. In the most recent ruling, a federal judge in New York denied Netflix's motion for a summary judgment, which means that the case is one step closer to trial. On this installment of the briefing, we're going to talk about the recent ruling and the potential impacts that this ruling may have on the uber-popular film and television programming that's based on real events and real people. Scott: Since it has been a while since we've talked about this case, let's briefly talk through Fairstein's allegation of defamation. She alleges that she was incorrectly portrayed by actress Felicity Huffman as having a larger role in the Central Park Five's fate than was factually accurate. She mentions three specific episodes and that she is portrayed in a false and defamatory manner in nearly every scene in those episodes. Her original complaint claims that this series depicts her using her true name as a racist, unethical villain who is determined to jail innocent children of color at any cost. Tara: Decades of case law has established that in order to prevail in a defamation case, the plaintiff has the burden of proof to establish that the statements at issue were indeed false. And here, because the plaintiff is considered a public figure, the plaintiff also has to prove that the defendant acted with actual malice in making the statement at issue. While there are some other factors in defamation, these factors are the most interesting in this particular case. Scott: That's right. And the last element you mentioned, that the defendants acted with actual malice, was part of the recent ruling in the Fairstein case of Netflix's motion for summary judgment. In order to prove that the defendant acted with actual malice, the plaintiff has to prove that the defendant acted in reckless disregard for the truth. Here, we're dealing with dramatization, and courts have applied the actual malice standard to dramatized accounts of real events, often recognizing that the use of invented dialog or a condensed timeline may be necessary for storytelling and that those facts are not themselves evidence of actual malice. Here, Fairstein needed to prove with clear and convincing evidence that Netflix and the producers acted in reckless disregard for the truth when portraying her in the series. Tara: So Netflix filed for summary judgment, arguing that they did not act with actual malice. Because the filmmakers are very confident that their portrayal of Ferrise reflected the essence of truth based on their multiple trusted sources and research, including previously published books, news reports, the Ken Burns documentary, and extensive interviews with the five, their families, and their lawyers. The Court denied Netflix's motion for summary judgment, ruling that a jury could reasonably find that the producers recklessly disregarded the truth and that it is the job of a jury to evaluate all of the evidence in this case...

The Parmigiano Reggiano Consortium claims that Italy's renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. Scott Hervey and Jamie Lincenberg discuss how they plan to fight off these counterfeits on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Scott: The Parmigiano Reggiano Consortium claims that Italy's renowned Parmigiano Reggiano cheese is one of the most counterfeited cheeses in the world. And the consortium is seeking to fight off the cheap imitations through lawsuits and through technology. I'm Scott Hervey from Weintraub Tobin. I'm joined today by my colleague, Jamie Lincenberg. We are going to talk about when Parmesan cheese isn't Parmesan cheese on this next installment of the Briefing by Weintraub Tobin. For those who may not know, Parmigiano Reggiano traces its history back to the Middle Ages. In 1996, the European Union recognized a protective designation of origin, or a PDO, for Parmigiano Reggiano. According to the PDO, this cheese can only be produced in a small geographic area of northern Italy, which includes Parma and Reggiano. A PDO designation is used for agricultural products that traditionally have been produced in a particular geographic region. When used on a product, the PDO designation guarantees that the food product originates in that specific region or follows a particular traditional production process. Jamie: If I'm recalling correctly, there was a legal issue involving a challenge to Germany permitting the sale of cheese branded as Parmesan, but it didn't meet the PDO designation requirements. Germany argued that Parmesan was a generic term for a type of cheese often grated over food and could not be called uniquely Italian. A European Court of Justice, hearing the dispute, finally held that Parmesano Reggiano is the only type of cheese that can be called Parmesan within Europe and that Parmesan is not a generic term. Scott: That's right. And that's why when you go to Italy or other members of the European Union when you buy Parmesan, you're buying Parmesan or Reggiano. But that ruling and the PDO is only binding within the European Union. Now, the consortium is taking steps to try to prevent the sale of what it calls counterfeit Parmesan cheese outside of the European Union. This includes filing various certification marks with trademark offices throughout the world, which includes the United States. Under the Trademark Act, a certification mark is used to certify regional or other origin, material, motive, manufacture, quality, accuracy or other characteristics of goods or services or that the works of labor on the goods or services was performed by members of a union or other organization. With regard to the certification mark, Parmesan or Reggiano, it certifies that the cheese that is branded Parmigiano Reggiano originates in the Parma Reggiano region of Italy. Jamie: So what about Kraft? We all know that green can of Kraft Grated cheese. I assume Kraft has the right to use that mark. Scott: Kraft does have various registered trademarks in the US. Covering its product, but the consortium seems to be fighting Kraft's use of Parmesan. Last year, the consortium filed the equivalent of an opposition with the Australian Trademark Office challenging Kraft's application for its Parmesan cheesemarks in Australia. The consortium argued that Kraft's use will confuse consumers. Kraft argued that the term Parmesan is generic for a certain style of hard cheese Kraft's position that Parmesan is generic for a certain style of hard cheese is supported by the fact that Kraft has disclaimed the term parmesan in its trademark applications in and outside of the United States. Jamie: A mark owner trying to register its mark is required to disclaim the right to use a word that is part of the mark when that word is either descriptive or generic. The reason behind this is that merely descriptive or gen...

Amazon is suing two social media influencers for promoting the sale of counterfeit luxury goods on the platform. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Jamie: Last week, Amazon.com, Seattle-based tech and e-commerce giant, and its counterfeit crimes unit launched lawsuits in Seattle federal court against two social media influencers and their coconspirators, accusing the defendants of using their profiles to promote, advertise, and facilitate the sale of knockoff luxury brand products as part of a scheme with third-party counterfeit sellers. I'm Jamie Lincenberg of Weintraub Tobin, and we'll be joining my colleague Scott Hervey to talk about this case on today's episode of The Briefing. Scott: Thank you for joining me today, Jamie. Can you provide us with a quick recap of the lawsuits? Jamie: Sure. In the filed complaints, Amazon Alleges that Influencers Ashley Howett and Cameron Russell posted links on Instagram and other social platforms to direct their followers to dupes of Prada, Hermes, Chanel, Louis Vuitton, Christian Dior, and other designer accessories through hidden links leading to seemingly generic product listings in the Amazon store. The lawsuits say that both influencers collaborated with a series of retailers on, per the complaints, sophisticated campaigns of false advertising in an attempt to evade Amazon's counterfeit and infringement detection tools. Amazon alleges that both influencers use the same CD method to avoid getting caught through social media posts. The influencers make it very clear that they are promoting fake versions of the luxury brand items but then direct their followers to product listing pages in the seller's Amazon stores, where the items appear generic with blurred logos or pixelated images. Amazon's complaint against how it says that she openly acknowledged that the products were fake, informed her followers that they would receive products bearing luxury brand trademarks, and urged them to order the products before Amazon could take down the listings. According to the lawsuit against how Amazon, investigators ordered some of the products that she advertised and confirmed they spore the stolen brand names and logos. Scott: Both Howet and Russell, of course, received commissions for sales via the links they shared on their social media channels. Jamie: Yeah. The crux of the case against the influencers there are a number of charges against the manufacturers of the counterfeit goods, which are allegedly Chinese manufacturers located in various provinces of China. But the crux against the influencers is 15 USC. 1125 A, which is part of the Lanham Act. And that statute prohibits the use in commerce of any mark or false designation of origin, which can be a designation of the manufacturer in connection with goods that are false. Or misleading and which A are likely to cause confusion or to cause mistake or to deceive as to the affiliation, connection, or association of such person with another person or as to the origin, sponsorship, or approval of his. Or her goods, services, or commercial activities by that other person or b in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities. The lawsuits accuse the influencers of contributory violations of this statute. The complaint alleges that the influencers' liability stems from their knowing, facilitation, and assistance in the sale of counterfeit and infringing products offered by the manufacturers. But, Jamie, like you said, all of the Influencer social posts admitted and acknowledged that the products were counterfeit. Scott: The Influencers did not try to hold the products out as legitimate. And I'm curious about this from a legal standpoint. Jamie: Yeah, Scott, I am, too.

A recent article in The Hollywood Reporter explores TV and movie studios' potential use of AI for generating scripts. Scott Hervey and Jamie Lincenberg discuss this and other statements in the article on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: An August 23rd article in The Hollywood Reporter had the title, “Studio’s Offer to Writer May Lead to AI-created Scripts that are Copyrightable.” The article acknowledged that copyright law doesn't recognize works solely created by artificial intelligence, but the article theorized that by incentivizing writers to participate in the creation process, studios may have a better shot at getting that work protected. We are going to dissect some of the statements made in this article in light of the recent ruling by the D.C. District Court that AI works are not entitled to copyright protection on this installment of The Briefing by Weintraub Tobin. Let's set the stage with a recent ruling by Judge Howell in the lawsuit brought by Stephen Thaler against the Copyright Office based on the Office's rejection of his application to register their work. A recent entrance to paradise. The work was created by an AI technology called Creativity Machine and was submitted for copyright registration in 2018 by Stephen Thaler as a work made for hire, in which Thaler listed the Creativity Machine as the author and Thaler as the copyright owner. In his application, Thaler left a note from the Office stating that the work was autonomously created by a computer algorithm running on a machine, and he was seeking to register his computer-generated work as a work for hire as the owner of the Creativity Machine. Jamie: We previously covered the Copyright Office's rejection of Thaler's application in March of last year. Basically, the Copyright Office rejected Thaler's application because it lacked the human authorship necessary to support a copyright claim. Thaler appealed the rejection to the District Court for the District of Columbia, and the Court upheld the rejection of Thaler's application, holding that human authorship is an essential part of a valid copyright claim. Scott: Right. The single legal question before the Court was whether a work generated autonomously by a computer falls under the protection of copyright law upon its creation. The Court acknowledged that copyright is designed to adapt with the times and that copyright law has proven malleable enough to cover works created with or involving technologies developed long after the traditional media of writings memorialized on paper. But underlying that adaptability and that malleability has been a constant understanding that human creativity is at the core of copyrightability, even as that human creativity is channeled through new tools or into new media. Jamie: The Court cited the 1884 Supreme Court case of Borough Giles Lithographic Company versus Serenay, which upheld the constitutionality of an amendment to the Copyright Act to cover photographs. In that case, the Supreme Court reasoned that photographs amounted to copyrightable creations of authors despite being issued from a mechanical device that merely reproduced an image of what is in front of the device because the photographic result nonetheless represented the original intellectual conceptions of the author. Scott: The Court said that at its founding, copyright was conceived of as a form of property that the government established to protect. It was understood that recognizing exclusive rights in that property would further the public good by incentivizing individuals to create and invent the act of human creation and how to best encourage human individuals to engage in that creation and thereby promote sciences and the useful arts was and continues to be central to American copyright from its very inception. Jamie: The Court then cited to the numerous cases that stood for the pro...