The Briefing by Weintraub Tobin

The Terrifier franchise is one of the most unlikely independent horror success stories of the last 25 years. But a new lawsuit challenges how the first film was made and raises serious questions about performer consent and on-set protections. In this episode of The Briefing, Weintraub Tobin partners Scott Hervey and Matt Sugarman break down actress Catherine Corcoran’s lawsuit against the film’s producers and what it reveals about SAG-AFTRA requirements for nudity and simulated sex scenes. In this episode, they cover: What a SAG nudity rider is and why it is legally required How consent must be disclosed, documented, and respected on set Why filming nudity without a signed rider can be deemed nonconsensual The risks producers face when still images or footage are reused without permission How intimacy coordinators and detailed riders protect both performers and productions This case is a reminder that nudity riders are not a formality. They are a core safeguard in film and television production. Tune in here for a clear look at how SAG protections, performer consent, and production liability intersect.  

Did Coca-Cola cross the line by using a Johnny Cash soundalike in its nationwide “Fan Work is Thirsty Work” campaign? In this episode of The Briefing, Weintraub Tobin attorneys Scott Hervey and Richard Buckley unpack the Cash estate’s lawsuit and what it reveals about the evolving law of soundalikes. In this episode, they cover: How Tennessee’s new Elvis Act expands protection for voices and vocal imitation Why the Cash estate is also asserting a Lanham Act false endorsement claim How Midler v. Ford and Waits v. Frito-Lay continue to shape soundalike disputes The line between imitating a musical “style” and misappropriating a distinctive voice What brands and agencies should consider before using tribute artists or AI vocals Tune in here for a clear look at where right of publicity, soundalike law, and advertising practice collide.

Can a car, a superhero, or even a cartoon sidekick be protected by copyright? In this episode of The Briefing, Scott Hervey and Matt Sugarman break down how fictional characters earn legal protection — and when they don’t.   From DC Comics v. Towle (the “Batmobile” case) to Carroll Shelby Licensing v. Halicki (the “Eleanor” case), Scott and Matt explore the three-part test for character copyrightability, how trademark rights can extend protection, and what creators and studios can do to safeguard their most valuable IP assets.   🎧 You’ll learn:   ● What makes a fictional character “especially distinctive” under copyright law   ● Why consistency across stories matters for protection   ● How trademark rights protect character names and merchandise   ● The difference between creative expression and brand identity   Watch this episode on YouTube and learn how to keep your characters safe from copycats.

The Supreme Court sidestepped a major copyright showdown—again. What does it mean when infringement claims surface decades later? In this episode of The Briefing, Scott Hervey and Tara Sattler break down the latest in the discovery rule debate, RAD Design’s rejected petition, and how this uncertainty affects creators, businesses, and copyright holders across the country. Watch this episode on YouTube. Show Notes: Scott: In Warner Chapel Music versus Neely, the Supreme Court acknowledged without resolving a major question in copyright law, should plaintiffs be allowed to bring infringement claims years or even decades after the alleged violation happens if they say they just recently found out about it? That question was front and center in Rad Design versus Michael Greckeau Productions. And while many expected the court to finally address it, they declined to take the case. What does this mean for copyright holders, digital content creators, and the businesses defending against those claimed? I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my colleague Tara Sattler. We are diving into the Supreme Court’s decision to leave the discovery rule untouched, at least for now. On in this episode of The Briefing. Tara, welcome back to The Briefing. It’s good to have you back. Tara: Thanks, Scott. Glad to be here, and glad to be getting into some important copyright strategy with you here today. Scott: Right. Yeah. So let’s start by defining what we’re actually talking about, the discovery rule. It’s a judgment doctrine that allows plaintiffs to file a copyright lawsuit within three years of discovering the infringement, even if the infringement happened long before that. Tara: Right. And for years, courts have disagreed on whether the Copyright Act actually allows this. The text of the Copyright Act says that actions must be brought within three years after the claim accrued. But it doesn’t say whether accrual starts at the time of infringement or at the time of discovery. Scott: And that ambiguity is at the heart of the issue. Some courts, like the Second Circuit, have embraced the discovery rule. Others are skeptical. That split was one reason the Supreme Court agreed to hear Neely in the first place. So before we get deeper into the implications of the Supreme Court denying Cert and Rad Design, we should revisit the Warner Chapel Music versus Neely decision because that case really set the stage for all of this. Tara: Absolutely. That case started back in 2018 when music producer Sherman Neely sued Warner Chapel Music and Artist Publishing Group. He claimed that Flowrida’s 2008 song, In the Air, contained an unauthorized sample from a 1984 track Neely co-owned the rights to. Now, that’s a fairly typical copyright infringement claim, but what made this case different was the timing. Scott: Right. So Neely had been incarcerated for a number of years, and apparently, they don’t allow radios in the jail or prison that he was in. And he argued that he only discovered the alleged infringement shortly before his filing of his lawsuit, even though the infringement happened decades earlier. The question that ended up before the Supreme Court was whether under the discovery rule, as applied by some circuit courts, a plaintiff could recover damages for acts of infringement that happened more than three years before the lawsuit was filed. Tara: And that was a hotly contested issue. Some circuits, like the Second Circuit, applied a very strict three-year cap on damages, even when a claim was deemed timely under the discovery rule. That rule came up from the Supreme Court’s prior language in Petrela versus MGM, where Justice Gainsberg wrote that a successful plaintiff can gain retrospective relief only three years back from the time of suit. In contrast, the ninth and 11th circuits had taken the opposite view. They allowed damages to go all the way back to the first act of infringement, so long as the claim itself was timely under the discovery rule. Scott: And in Neely, the Supreme Court resolved that split, writing for the majority, Justice Kagan held that if a plaintiff’s claim is timely under the discovery rule, then there’s no statutory cap on damages. So the court said that the Copyright Act’s remedial provisions, Section 504 and Section 505, do not impose a time-based limit on damages. They simply state that an infringer is liable for either statutory damages or actual damages and profits without any mention of a three-year time limit on those damages. Tara: And the court also criticized the logic of the Second Circuit’s hybrid approach, where a plaintiff could file suit based on discovery but still not recover damages beyond three years. Kagan basically said, That’s incoherent. If a claim is timely, it’s timely, and the plaintiff should be entitled to full relief. Scott: But, and this is a big but, the court explicitly declined to decide whether the discovery rule itself is valid under the copyright Act. Justin Kagan noted that both sides had assumed that the discovery rule applied, so the court didn’t reach the question of whether that assumption was legally correct. That’s where Justice Gorsuch came in. Tara: Yeah, Gorsuch wrote a sharp dissent, and that was joined by Justice’s Thomas and Olito. He argued that the discovery rule has no place in copyright law unless there’s fraud or concealment by the defendant. He pointed out that the Copyright Act contains no discovery language and that for most of its history, courts applied a straightforward rule. The clock starts taking when the infringement happens. Gorsetch essentially said the court should have dismissed the case and waited for one that properly raised the discovery rule issue. Scott: That’s why RAD Design was seen as the next shoe to drop. Rad Design directly asked the court to decide the validity of the discovery rule itself, which the court had ducked in nearly. But instead of taking taking that opportunity, the court decided to duck that one again, and they just let it go. Tara: Let’s talk about the RAD Design case. Scott: Sure. In RAD Design versus Michael Greckeau Productions, it was a professional photography company, sued RAD Design for allegedly using its copyrighted images without permission. Rad Design argued that the claims were time barred. Tara: The Second Circuit applied the discovery rule, saying the case could go forward if the plaintiff only recently discovered the use. Rad Design then petitioned the Supreme Court to rule that the discovery rule has no place in copyright law. Scott: And what did the court do? Nothing. It denied certiority, effectively passing on the opportunity to resolve the circuit split or the question as to the applicability of the discovery rule or legitimacy of the discovery rule. So now we’re left with conflicting rules in different parts of the country. Tara: And we’re left with uncertainty. Businesses with a national online presence could be sued under very different standards depending on where a plaintiff files the case. Scott: But there’s more at stake here than just legal theory. Several amakey, including MBA teams like the Pacers, Nuggets, and Magic, filed briefs supporting RAD Designs, warning that the discovery rule is being abused. Tara: These teams pointed out that they’ve been sued for old social media content, videos posted years ago with arena back background music. The lawsuits allege infringement based on music barely audible in the clips, and yet plaintiffs are seeking damages years after the fact. Scott: And that’s what makes the discovery rule dangerous in practice. It allows plaintiffs, sometimes opportunistic copyright enforcers or trolls, as they’re pejoratively referred to, to delay their claims, drive up damages, and strike when the defendants are least prepared. Tara: And it’s one thing when the rule protects a genuinely unaware plaintiff. But in the digital age, when tools like the wayback-machine make it easy to find online content, it’s hard to justify a rule that allows indefinite delay. Scott: Yeah. Based on all my viewings of prison movies. I’m darn sure that Neely had music in whatever prison he was in. All right, all jokes aside, let’s take a moment to explore how we got here. The discovery rule originated in general tort law, especially in fraud cases. Courts recognize that it would be unfair to timebar claims when a plaintiff didn’t know that they had a claim. Tara: And over time, courts started applying that logic to copyright cases, too, particularly where the infringement wasn’t obvious. But the Copyright Act does not codify this rule, and that’s the problem. Scott: The Petrella versus MGM decision made things even murkier. Justice Gainsberg wrote that Latches isn’t a defense to damages under the Copyright Act, but she also reaffirmed the three-year limitation on damages. Then the discovery rule crept back in through the lower courts. Tara: And Neely really cracked that door wide open by allowing damages going back decades, as long as the claim was timely under the discovery rule. That’s why Justice Gorsuch was so frustrated. He sees the situation where the court’s past statements were being being undermined by a rule it never really endorsed. Scott: All right, so let’s talk about practical implications. So here’s a practical question. What does all this mean for copyright enforcement and for copyright defense? Tara: If you’re a copyright owner, the discovery rule, at least in some circuits, gives you more flexibility. But don’t abuse it. Courts can still look at whether you should have discovered the infringement earlier. And if your delay looks strategic, then that could blackfire. Right. Scott: And I joke about Neely in the music in prisons, but that’s going to be an issue in discovery, right? Whether or not that particular prison allowed radios, whether radios were played, And that’s all about, if you’re a defendant, document everything. A

Warner Music Group just sued DSW for using 200+ hit songs in social media ads—without permission. Those TikToks could now cost $30M. On this episode of The Briefing, entertainment and IP attorneys Scott Hervey and Tara Sattler break down the legal firestorm and what every brand needs to know before hitting “post.” Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: A major music label just did the legal equivalent of a mic drop on one of America’s best-known shoe retailers. Warner Music Group has filed a lawsuit against Designer Brands Inc, the parent company behind DSW, accusing them of using more than 200 hit songs by artists like Cardi B, Fleetwood Mac, and Lizzo in TikTok and Instagram videos without a license. And they’re not just suing for direct infringement, they’re going after DSW for contributory and vicarious infringement tied to the influencer content. I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. We’re going to talk about the DSW lawsuit and the lesson for brands that engage and Influencer Marketing on today’s installment of The Briefing. Tara, welcome back to The Briefing. We’ve got another, I don’t know, A scary piece of influence or marketing gone wrong here on the docket today. Tara: Yeah, we definitely do. I’m looking forward to talking about it with you. Scott: So earlier this month, Warner Music Group filed a federal lawsuit against DSW, claiming that over 200 of its copyrighted songs were used in social media ads on TikTok, Instagram, and other platforms without getting permission. Tara: Yeah, this isn’t about just one rogue post. The complaint alleges that DSW DSW’s marketing team, its influencers, and its in-house content creators, produced and shared branded videos that featured hit songs like Up by Cardi B and Barbi World by Nicki Minaj without securing proper licenses. Scott: The complaint alleges that DSW knows all about licensing music for advertising and that it had previously licensed music for use in its traditional ads. The complaint alleges that DSW knew exactly what it was doing when it skipped the licensing process for its influencer marketing ads. Tara: Right. In the complaint, Warner Music Group states that DSW, like many retailers, has shifted much of its marketing focus from traditional advertising to promoting its products through social media platforms like Instagram and TikTok, as well as through paid partnerships with well-known social media influencers. Scott: And as you and I discussed on a different episode, as we know, more than 50% of advertising spend has moved from traditional TV to social media. From my experience with my own brand clients, it seems that brands find social media advertising more effective and less expensive than traditional advertising. Well, I mean, less expensive when you don’t get named as a defendant in a claim like this. Tara: Right. Here’s what Warner Music Group is doing for. First, direct copyright infringement based on DSW’s posts. Second, contributory copyright infringement based on the content created for DSW by the influencers. And third, vicarious copyright infringement because DSW benefited financially from the infringing influencer content and had the ability to control or remove the content. Scott: Right. So this is where this type of advertising campaign gets more expensive than traditional media. Warner Music Group is asking for statutory damages of up to $150,000 per work. That’s $30 million if they win on the 200 songs. Now, the judge has discretion whether to award up to the full amount of statutory damages. But still, it’s a substantial… This is going to be a substantial bill to pay either way. Tara: Yeah, that definitely is expensive. So let’s take a step back and briefly talk about copyright infringement. Management and the different claims made by a Warner Music here. Scott: Sure. Copyright law protects creative works like music, videos, photos, and more. It gives the copyright owner the exclusive right to reproduce, distribute, publicly perform, and publicly display that work. When a brand or an influencer uses a copyrighted work, whether it’s a song or an image in a post without permission, technically, that’s infringement. And unless the use qualifies as fair use, which is very narrow in a commercial context, the copyright owner has a claim. Tara: And we’ve covered numerous cases of celebrities being sued for posting a photo that wasn’t taken by them, even where that post wasn’t part of an integration. Using a photo or music on TikTok or Instagram may seem casual or informal, but the Copyright Act doesn’t make exceptions for viral marketing or these types of posts. Scott: Right. No, that’s a really good point. All right, so let’s break down the three claims that Warner is making. Let’s start with the claim for direct copyright infringement. This is the most straightforward. Warner says that DSW itself posted videos on its own official social media accounts using the copyrighted music without a license. It’s similar to airing a commercial on TV with a Beyoncé track you didn’t pay for. If you post it, you’re liable. Tara: Yeah. The second claim is a claim for a contributory copyright infringement, and this covers the influencer angle. Warner Music alleges that DSW encouraged, collaborated with, and paid influencers to create videos featuring its products and the copyrighted music. Even if the influencer technically uploaded the video, if DSW helped plan or promote it and knew about the infringement, DSW can also be held viable. Scott: Right. Lastly, Warner Music alleges that DSW engaged in vicarious copyright infringement. This one is all about control and profit. If DSW had the right and ability to supervise the content and directly benefit it from it through increased sales or through brand visibility, it can be held vicariously liable, even if it didn’t know about the infringement at the time. So it’s a serious trifecta of liability here. Tara: That’s exactly right. I think this DSW lawsuit It is definitely a wake-up call for brands relying on social media marketing. Scott: Right, and a lot of brands do. Here’s the bottom line. If you’re using music in a video, and if that video promotes your product or your brand in any way, you need a license. This is true whether you post a video yourself or whether you repost an influencer’s content that was made for your brand. Tara: Also, it doesn’t matter whether the video or photo runs on the brand’s channels or on the influencer’s social channels. If the video is the result of an integration and it just runs on the influencer’s channels, the brand may still be liable for contributory copyright infringement. Scott: It doesn’t matter if the music is only a 15-second clip. I get that a lot, and I’m sure you do, too. The client-client will say, What I only use two seconds? Or my understanding is, If you only use five seconds, it’s fair use. No, there’s no magic number that equals fair use. Fair use is, as you know, if you listen to this podcast, it’s a multifactor test, and it’s much more than the amount and substantiality of the work that’s used. Also, it doesn’t matter if it’s trending, and it definitely doesn’t matter that TikTok or Instagram provided the video or audio unless they state in their license that it is available for use for commercial purposes. It’s your responsibility to make sure that that the work, the music or video, is cleared for commercial use. To help avoid lawsuits like this, here’s a checklist of terms every brand should include in its influencer agreements. Tara: Okay, here we go. First, consider including a music usage clause. Require influencers to use only music that is licensed by the brand, royalty-free, or from a platform’s cleared for Commercial Use Library and require the influencer to show proof of licensing. Also, prohibit use of any commercial tracks without prior written approval. Lastly, have influencers warrant that their content is not infringing of any third-party IP rights. Scott: The brand should also have content review rights, retain the right to review and approve all videos before publication, and have the ability to require the influencer to make changes after the video is posted. Also, disclosure obligations. This one is a pretty basic requirement, but your contract should require compliance with FTC guidelines on sponsored content and make sure that the influencer is required to provide proper disclosure. Tara: Also, influencer agreements should have an indemnification clause. So include provisions requiring that influencers indemnify the brand for any legal claims arising from unlicensed content that they create or post. However, don’t over rely on the indemnification clause. If the influencer is agreeing to indemnify the brand and doesn’t really have the financial capacity to do that, then the brand still has significant exposure. Scott: Right. That’s a great point, Tara. Also, brands should have takedown requirements in their agreements. Require influencers to promptly take down any content if the brand request that it be done, especially if there’s a legal claim that arises. Lastly, licensing education. Now, this is not a bad idea, and I don’t know if it’s regularly done by the brand, but provide influencers with basic education or guidelines about music licensing, especially what not to do. Now, the downside of this is that this type of information could be used against the brand in litigation like this. So maybe, I think in the contract, just having more discussion about the requirement of music licensing and maybe have a phone conversation with the influencer if they’re not quite sure about exactly what this means. Tara: Yeah, and I think one other thing to do is that If an influencer acknowledges to a brand that they have licensed to a music library, the influencer might not appreciate or fully understand that there are different

Former Congressman George Santos sued Jimmy Kimmel after the late-night host used Cameo videos in a comedy segment called “Will Santos Say It?” Santos claimed copyright infringement and fraud, but both the District Court and the Second Circuit said Kimmel’s use was fair use. In this episode of The Briefing, Scott Hervey and Tara Sattler break down:   ● How Kimmel obtained the videos using fake Cameo accounts   ● Why the District Court dismissed Santos’s case   ● How the Second Circuit reinforced that criticism and satire are protected under fair use   ● Why Santos’s contract and fraud claims also failed Watch this episode on YouTube.

Can you use a celebrity’s voice or image in your work? What about AI-generated versions? On this episode of The Briefing, Scott Hervey and Richard Buckley explore the right of publicity—how it protects names, likenesses, voices, and what happens when you cross the line. Watch this episode on YouTube. Show Notes: Scott: Can you use a celebrity’s name or likeness in your film, in your podcast, or in an advertisement? Well, you shouldn’t do that without understanding the right of publicity, because if you don’t, there certainly will be lawsuits or problems that will follow. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I am joined today, again, by my partner, Richard Buckley, and we are going to talk about the right of publicity, an always hot issue in entertainment on today’s installment of The Briefing. Richard, welcome back. This is our fourth installment of the Refresher Series here. And today we’re talking about right of publicity. All right, let’s jump right into it. The right of publicity protects an individual’s name, image, and likeness, and sometimes even voice or signature from being used commercially without their consent. Richard: Unlike copyright or trademark law, the right of publicity is grounded in privacy and property interests. It gives people, especially public figures, control over how their persona is used. Scott: Right. Also, unlike copyright law, it is purely based on state law. There is no federal right of publicity law. All right, let’s talk about key elements. To bring a claim for violation of right of publicity, a person generally must show that their identity was used. It was used for a commercial purpose, so generally in connection with the sale or advertisement of goods or services. It was used without consent, and it resulted in damages or unjust enrichment. This applies both to living individuals and in many states, like California, to deceased personalities whose estates may maintain postmortem publicity rights. There are many notable cases, but one of the classics is White versus Samsung, Banner White. Samsung ran an ad with a robot dressed like Banner White, turning letters on a game show set like Wheel of Fortune. Even though it wasn’t her, the court found that the ad evoked her likeness without permission, and that violated her publicity rights. Richard: Other great examples are two cases that set the framework for soundalike cases. The first was Midler versus Ford, and the second was Tom Waits versus Frito Le. Both cases involved the use of a he sounded like a singer singing a song in the style of those artists in a television commercial or in two TV commercials. Both cases held that when a voice is a significant indicator of a celebrity’s identity, like Arnold Schwarzenegger or Sylvester Stallone, the right of publicity protects against its imitation for commercial purposes without the celebrity’s consent. Scott: So what about biopics or documentaries? Here, the First Amendment comes into play. Richard: Right. If the use is part of an expressive work, that use may be protected, especially if it’s newsworthy or if it’s transformative. Courts often apply the transformative use test that was seen in the case Comedy 3 Productions versus Satarup, where the California Supreme Court said that the First Amendment doesn’t protect literal reproductions of celebrity images used in merchandise. Ai generated voices and faces are raising new issues. If you generate a synthetic version of someone’s voice or what we would call a deep fake of their likeness, you could run into publicity rights and false endorsement claims. Scott: Several states have laws on the books to address this, and other states are updating their laws to address this. We’ll likely see more litigation around digital replicas in advertising, video games, and even virtual performances. All right, let’s talk about some practical guidance. Here’s the bottom line. Always get a release if you’re using a person’s identity for commercial purposes. Don’t assume you can use a lookalike or a soundalike without consequences. For expressive works, evaluate with your lawyer whether the use is permitted. Keep an eye on evolving state law, especially around digital likeness and postmortem rights. Thanks again to my co-host, Richard. Richard, always great to have your insights. And thank you, our listener, for joining us on the briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share with your network. We’d also love to hear from you, so leave a comment or a review and let us know what topics you would like us to cover in future episodes. I’m Scott Hervey. I’ll see you next time on The Briefing.

On this episode of The Briefing, Scott Hervey and James Kachmar break down the Supreme Court’s decision to pass on the McGuckin v. Valnet case—and how it keeps the legal confusion swirling around the “server test” for embedding online content. With courts on opposite coasts taking different stances, what does this mean for publishers, bloggers, and social media managers? They talk about the risks, what you can do to stay safe, and why your location might matter more than you think. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: The Supreme Court rejected a challenge to the Ninth Circuit server test, the test that the Ninth Circuit adopted in 2007 in the case of Perfect Ten versus Amazon, and it’s used for determining copyright liability when photos are embedded online. Because the server test has been rejected by the Southern District of New York, this refusal by the Supreme Court will continue to create a split among circuits and confusion among copyright litigants. I’m Scott Hervey, shareholder with the law firm of Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We’re going to discuss this case and how to best navigate this issue on this installment of the briefing. James, it’s good to have you back on the briefing. It’s been a while. Thank you for coming on today. James: Thanks for having me, Scott. Scott: Okay, so let’s talk really briefly about the case that was up for a petition for cert to the Supreme Court, and it’s the case of McGuckin versus Valnet. And that case arises from Valnet, the operator of the website thattravel. Com, being accused of infringing 36 of McGuckin’s Instagram photos by embedding them in various online articles. A California federal court applied the server test and dismissed McGuckin’s suit, and the Ninth Circuit affirmed that decision in 2024. In affirming the dismissal, the Ninth Circuit referenced its 2023 decision of Hunt versus Instagram. This was a case that we covered here on the briefing in which the Ninth Circuit held that Instagram was not secondarily liable for copyright infringement when websites use Instagram posts to embed photos. James: Right, Scott. Why don’t we start with the basics? The server test is a legal rule used to determine whether embedding an image or video into a website constitutes direct copyright infringement. Embedding is the process of copying unique HTML code assigned to the location of a digital copy of the photo or video published to the internet, and the insertion of that code into a target web page or social media post so that the photo or video is linked for display within the target post. Under this test, a website only infringes a copyright if it hosts the copyrighted file on its own server. If you’re simply embedding a photo or video that is stored on someone else’s server, like linking to a Instagram post, you’re not displaying the content under the Copyright Act. You’re just the HTML code that tells the user’s browser where to go look to get the content. Scott: That’s a really good description, James. The server test arises from the 2007 Ninth Circuit case of Perfect 10 versus Amazon. In that case, Perfect Ten, they were a publisher of adult content. They sued Google for linking to and displaying thumbnail versions of their copyrighted images. Google didn’t host the full size images itself. Instead, it linked to them or embedded them from Perfect Ten’s website. The court held that because Google wasn’t storing the infringing images on its own server, it wasn’t displaying them in the legal sense. See, under the Copyright Act to Violate the Public, display, right? An infringer must, quote, display copies of the copyrighted work. Under the server test, embedding in a website that does not also store an image or video on its own server, does not communicate a copy of the image or video, and thus does not violate the copyright owner’s exclusive display right. Under Perfect10, an alleged infringer displays an image in violation of a copyright holder’s rights only if a copy of the image is stored on the computer’s server, on its hard disk or other storage device. James: That’s right, Scott. The server test is the law of the land, at least in the Ninth Circuit. However, it’s been rejected by a court in the Southern district of New York. There, the seminal case in the Southern district of New York is Goldman versus Breitbart News Network. There, in that case, several media companies embedded a tweet that contained a copyrighted photograph without the photographer’s permission. The defendants tried to get that case dismissed based on the server test. However, the court explicitly rejected the server test, holding that embedding an image, even if hosted on another server, can constitute a display for purposes of finding infringement under the Copyright Act. Scott: Right, that’s right. In that case, the court reasoned that the Copyright Act defines display broadly and makes no mention, the Copyright Act makes no mention, of server location. Therefore, what matters is the end user experience, whether the copyrighted work is perceptible to the user on the site doing the embedding. The judge in the Goldman case stated, When defendants caused the embedded tweets to appear on their website, their actions violated plaintiff’s exclusive display rate. James: Right. Here we are, at least for now, with a split between courts in these two circuits, one on the West Coast, one on the East Coast, that probably deal with the majority of online media cases. Where does that leave online publishers, bloggers, and social media managers? I think one of the key takeaways is that embedding content may not be risk-free, especially outside the Ninth Circuit. Scott: Right. No, I agree with you. I agree with you. That is the key takeaway. All right, so how do we navigate Why don’t we cover some practical advice for online publishers, bloggers, and social media managers? I think the first bit of advice is, when in doubt, seek permission from content owners or use platforms that provide properly licensed media, like content libraries or other sites like that. Another bit of advice would be embedding from services whose terms of use expressly address press embed licensing, where a party posting photos agrees to the platform, granting an embed license to third parties. But even then, I think there’s a risk of challenges to the platform’s terms and the enforceability of those terms. James: That’s right, Scott. I think it’s also important that you avoid embedding images from unknown or untrustworthy sources. If the original source does not have the rights to the image, embedding could still expose you to claims of infringement. Publishers should also weigh the risk of being sued in New York if your content targets readers in that area, or if your company is based outside the Ninth Circuit, you’re more likely to face scrutiny under the Goldman approach than the server test. Scott: Right. If I may add, I think it’s always a good idea to have a written content policy that’s been vetted by counsel. I think media companies Companies and bloggers and media managers should really have established clear internal guidelines for how your organization handles third-party images and embeds, especially in user-generated content marketing. James: That’s right, Scott. Until the Supreme Court takes up this issue or Congress amends the Copyright Act to clarify what display really means, this legal gray area will continue to pose risks for online publishers. Scott: Right, I agree. If you’re embedding content knowing the jurisdiction you operate in and having a smart content strategy, it really could make all the difference. James: That’s right, Scott. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to James for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, believe us or review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

On the latest episode of The Briefing, Weintraub attorneys Scott Hervey and Jessica Corpuz break down the court’s decision in Pepperdine’s trademark fight with Netflix over the name “Waves” in the new series Running Point. Tune in for insights on this case and how the Jack Daniel’s ruling is reshaping trademark law in entertainment. Watch this episode on the Weintraub YouTube channel. For more content like this, subscribe here.

On this episode of The Briefing, Scott Hervey and Tara Sattler dive into the landmark Jack Daniels v. VIP Products case that changed trademark law. They break down the Supreme Court’s ruling on trademark infringement vs. dilution and explore how a dog toy parody nearly tarnished Jack Daniels’ brand. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: VIP products versus Jack Daniels’ properties brought a landmark Supreme Court case that forever changed the application of the Rogers Test. However, cross-motions for summary judgment at the District Court following the Supreme Court have provided some degree of closure and finality on the trademark and dilution claims raised by Jack Daniels. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We’re going to talk about a dog toy, a bottle of whiskey, and the Sometimes-murky waters of Trademark Law on this installment of The Briefing. Tara, welcome back to the briefing. It’s good to have you back. Tara: Thanks, as always, Scott. Scott: We’ve talked about this Jack Daniels case as it has affected other cases I think, boy, almost ad nauseam. But there has finally been a resolution itself of the Jack Daniels case. Let me just give a little brief history of the background, and then you can recap the Supreme Court’s decision. This legal battle began all the way back in 2014, so over 10 years ago, when VIP Products, a company that makes dog toys, filed a declaratory relief lawsuit against Jack Daniels, seeking a declaration that their Bad Spaniels dog toy did not infringe on Jack Daniels’ trademarks. The Bad Spaniels toy was designed to mimic a bottle of Jack Daniels’ Black Label Whisky. Jack Daniels counterclaimed, alleging both trademark infringement and trademark dilution. The case has gone through multiple appeals, including a trip to the Supreme Court. Court. The Supreme Court ultimately vacated the Ninth Circuit’s decision and remanded that case back to the District Court. From there, let’s quickly recap the Supreme Court decision. On June 8, 2023, the Supreme Court decided this case. At the district Court and on appeal to the Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressive works were analyzed under the Rogers test. Tara: Right. But on appeal, the Supreme Court said that the issue was not whether the dog toy was an expressive work, but rather the nature of the use of the Jack Daniels mark. Scott: Right. The Supreme Court found that the IP’s use of the marks, while humorous, was for the purpose of serving as a source identifier, a 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. Tara: And then from there, the case was eventually remanded to the district Court to determine Jack Daniels’ Lanham Act claims for dilution and infringement. Scott: Before we get into the dilution part, let’s briefly touch on trademark infringement. To win on this claim, Jack Daniels needed to show that its trademarks were distinctive and nonfunctional and that there was a likelihood of consumer confusion. The court had previously ruled that Jack Daniels’ trademarks were distinctive and nonfunctional. The key issue was whether VIP’s Bad Spaniels toy would cause a likelihood of confusion about the source of the product. The Or ultimately found that while Bad Spaniels as a toy did evoke the Jack Daniels brand, it was a successful parody. Tara: That’s right. A successful parody of a famous mark, one that conjures up the original yet creates contrasts from the original so that the message of ridicule or pointed humor becomes clear, is not often likely to create confusion. Scott: All right. The court waved several factors and determined that due to the parotic nature of the toy, consumers were unlikely to be confused about its source. Therefore, the court found that VIP was not liable for trademark infringement. Tara: Right. That’s score one for the dog toy. But now let’s get into the, I think, more interesting part of the case, the trademark dilution claim. This is where the court found VIP liable. Trademark dilution is different from infringement. Trademark dilution is about protecting the distinctiveness and selling power of a famous mark, even if there’s no confusion about the source of the infringing product. The Trademark Dilution Revision Act, or TD as it’s called by trademark lawyers, defines dilution as the, quote, whittling away of the value of a trademark when it’s used to identify different products. It prohibits the use of a mark that is likely to cause dilution, either by blurring or by tarnishment. In this case, Jack Daniels argued that the Bad Spaniels toy diluted their trademark by tarnishment. Scott: To prove dilution by tarnishment, Jack Daniels had to prove three things. First, Fame, that its trademarks were famous before VIP’s use of the Bad Spaniels toy began. Second, Similarity there was a similarity between the Bad Spaniels toy and Jack Daniels trademarks. And third, reputational harm. That the Bad Spaniels toy was likely to harm the reputation of the Jack Daniels trademarks. Tara: Let’s look at each of these in detail. I’ll start with Fame. I think that was an easy one for the court. The court found that Jack Daniels trademarks were famous, and they are famous, noting the brand’s century-long history, excessive advertising, and massive sales. Vip argued that the old number seven trademark, specifically, was not famous enough, but the court rejected this, stating that it was the overall use of Jack Daniels’ marks in a tarnishing way that mattered. The court emphasized that it was VIP’s use of Jack Daniels’ marks on the dog toy and not the bad spaniel’s name in isolation that caused the tarnishment. Scott: Okay, so turning to the second factor, similarity. The court found that VIP intentionally designed the Bad Spaniels toy to mimic Jack Daniels’ trademarks and trade dress, including the shape of the bottle, color scheme, and font. The IP replaced Jack Daniels with Bad Spaniels Old Number Seven with Old Number Two, and also Tennessee Whisky with Tennessee Carpet, while retaining other designer elements. The court determined that this was enough to show a similarity. Tara: As to the third element, reputational harm, the court noted that such harm, the harm to the reputation of the famous Mark, mark arising from the similarity between the famous mark and the junior mark. The court noted that this harm generally arises when the plaintiff’s trademark is linked to products of shoddy quality or where it’s portrayed in an unwholesome or unsavory context, likely to evoke unflattering thoughts about the owner’s products. Jack Daniels argued that the Bad Spaniels toy tarnished their trademark by associating the brand with dog poop. Vips’ toys included phrases like 43% poop by volume and 100% smelly and replaced Old Number 7 with old number two on your Tennessee carpet. To support their argument, I mean, that all just seems funny to me, but to support their argument, Jack Daniels brought in an expert who testified about the negative associations that the Bad Spaniel’s toy was likely to create with Jack Daniel’s whiskey, particularly because the product is intended for human consumption. The court gave prevailing weight to the expert’s testimony, concluding that the toy was likely to tarnish Jack Daniel’s reputation by creating a negative association with dog poop, essentially. Scott: From there, VIP argued that there was no actual evidence of reputational harm and that their dog toy was not as offensive as other products that have been found to cause tarnishment. But the court disagreed. Importantly, the court emphasized that the TDRA only requires a likelihood of dilution, not actual harm. The court also dismissed VIP’s argument that the old number seven mark itself was not famous enough, stating that the tarnishment arose from the use of the overall Jack Daniels marks on a product associated with dog poop. Tara: So VIP also raised a First Amendment challenge to the Lanamack’s prohibition on trademark dilution, arguing that it amounted to unconstitutional viewpoint discrimination. Scott: Let’s remember that under the TDRA, the law provides an explicit exemption for certain uses of a famous trademark, including parity if the use is non-commercial or involves fair use in news reporting, commentary, or criticism. Obviously, this is commercial speech, so it’s not entitled to the statutory exemption. Tara: Right. The court declined to consider the First Amendment challenge because VIP failed to raise it in their pleadings. This procedural point is important. The court found that because VIP did not formally include this argument in its initial court filings, it was not properly before the court at the time that the court decided the parties’ cross-motions for summary judgment. Scott: In the end, the court ruled that while the Bad Spaniels toy was a successful parody that did not infringe on Jack Daniel’s trademarks, it did, however, dilute Jack Daniels’ trademarks through tarnishment. Tara: Right. The court found that the use of Jack Daniels’ trademarks on a dog toy that referenced dog poop was likely to harm the reputation of Jack Daniels’ brand. Now, Now, the court’s dilution finding here, I think, is almost opposite to what the Fourth Circuit found in a 2007 case, Louis Vuitton versus Hot Diggity Dog. In that case, Louis Vuitton, the luxury fashion house, sued Hot Diggity Dog, a company that manufactured and sold a line of parody dog toys called, Ready? Chooi Vuitton. These toys, obviously, mimic Louis Vuitton famous handbags featuring similar design elements like the LV monogram pattern and style. Louis Vuitton argued trademark infringement, trademar

While influencer marketing has become popular in the creator space, it doesn’t come without risks. From IP infringement to FTC compliance, Scott Hervey and Jessica Marlow discuss the key issues surrounding brand endorsement deals in this archive two-part episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: Influencer social media marketing is big business, whether it’s a brand integration on Instagram by an influencer or a long-term brand endorsement deal by an A-list movie star. Each deal is different, but there are similar issues that are apparent in all brand deals. I’m Scott Hervey with Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. Today is part one of our profile on understanding and navigating risks in brand marketing deals on today’s installment of “The Briefing” by Weintraub Tobin. Jessica, welcome back to “The Briefing.” Jessica: Thank you. Happy to be back. Scott: This is something we both deal with frequently from both the brand and the talent side. There are certain risks that celebrities and brands have to navigate in these types of deals. Making these risks more prevalent is the fact that we’re talking about digital marketing, where things tend to move quicker. And for whatever reason, people, even marketing professionals, may sometimes believe that the laws applicable to terrestrial or regular advertising don’t apply to the Internet. Let’s talk about our top general risks from a talent perspective and how to deal with them. Now, we have a bunch of lawyers that listen to our podcast, and you might have a different list, and we would love to hear from you if you think we should have covered something that we didn’t. But this is what we think are the top legal issues in a talent brand deal. Jessica: One of the major risks is IP infringement. Now, this is multifaceted, and the risk of infringement comes from a few different places. First, there is infringement risks that the celebrity or influencer imposes on themselves, which can happen in a few ways. The first way is by using content where the copyright is owned by a third party, for example, where a celebrity or influencer posts an image that they don’t own. You’ve covered a few cases on “The Briefing” about this. Scott: That’s right. One of the more well-known case is what is O’Neill versus Ratajkowski. While that case didn’t necessarily involve brand marketing, it’s a perfect example of this type of risk. In 2009, O’Neill, who was a professional paparazzi, took a photo of Ratajkowski outside of a flower shop in downtown Manhattan. Now, the photo showed Ratajkowski with her face covered by this bouquet of flowers. O’Neill subsequently registered his photograph with the Copyright Office. Now, shortly after O’Neill posted the photo online, Ratajkowski posted the photo on her own Instagram account. The photo she posted was the same, except that she added the words “Mood Forever” to the bottom of the Instagram post. Now, O’Neill, of course, sued Ratajkowski and her loan-out company for copyright infringement. Jessica: Right. And Ratajkowski tried to get out of the case on a fair use defense on a motion to dismiss, but she was unsuccessful. And this case was before the Supreme Court ruling in Warhol versus Goldsmith. Under the new fair use analysis, it’s almost certain that Ratajkowski would not have had a fair use defense. Scott: Yeah, that’s true. And this type of liability isn’t just limited to cases where the photo that is used makes up the entire post. This type of potential liability can exist where the third-party photo only makes up a portion of the poster video. Jessica: Right. It’s just not limited to photos. This could be a video or other similarly copyrighted, protected material like music or logos. Scott: Yeah, and music can be a bit tricky. You would think that almost everyone would understand that you can’t just use your favorite band sound recording in a YouTube video or Instagram story. Unless, of course, it’s offered as music library content from the platform. But you still see that happening. Jessica: True. But where there tend to be more problems with music is not in the use of the sound recording, but in the use of the composition. As you know, there are two copyrights in music. One copyright covers the actual sound recording, and those rights are generally owned by the record company. The other copyright is in the composition, meaning the actual music and the lyrics. The copyright in the composition is generally owned by either a music publisher if the song have a publishing deal, or by the songwriters themselves. When you normally see issues of publishing is where the celebrity or influencer performs as in sings the song. Scott: Now, normally, if you are a celebrity or influencer and you want to record the performance of a song, you have to get what is called a synchronization license from whoever holds the publishing rights in the music, whether that be the publisher or the songwriters. Without obtaining a sync license, your recording and subsequent broadcast of the performance of the song is copyright infringement. Jessica: So not only is this a potential issue for the endorser with the owner of the copyright, but this also could result in a big issue for the brand. First, it’s likely to constitute a breach of the agreement with the brand and result in the endorser not getting paid. Also, if there’s any action by the copyright holder, then the endorser will likely have to indemnify the brand. Scott: Yeah, that’s right. Now, there is another type of infringement risk that an endorser potentially faces. And this one usually comes as a big surprise to endorsers and, frankly, their agents. That’s the endorser’s exposure to either a trademark or a copyright infringement claim based on something the brand does. Now, we previously talked about a trademark case where Molly Sims was sued for trademark infringement, all because of a of a sponsored post she did for a beauty product, which another cosmetic company claimed infringed its trademark. Jessica: I remember that case well. Sims’ involvement in the matter was no different than any other influence or marketing campaign. As part of a product launch, the defendant cosmetic company hired Sims to post a review of its product on her blog. Sims’ blog post acknowledged that the review was sponsored, as she’s required to for the FTC, and included a link to the defendant’s website. The plaintiff, a competing cosmetic company, sued the defendant cosmetic company and Sims for trademark infringement and other related claims. Scott: So, Sims tried to get out of the case early, but the court denied her motion to dismiss. In order to establish direct trademark infringement, the plaintiff must establish the use of its mark by the defendant in commerce and the likelihood of confusion. The judge found that the plaintiff had adequately pled that the blog post was likely to cause confusion as to the source of the product and that Sims’ post was essentially advertising, thereby satisfying the use and commerce requirement. Sims raised some arguments why her use should not constantly trademark infringement as a matter of law, including that the blog post was non-commercial editorial speech. The court said that because this was paid content, it crossed the line from editorial or consumer commentary to commercial use. Jessica: Most endorsers don’t appreciate that a one-off integration for a brand could land that endorser right in the middle of a trademark infringement case. This is why we always fight hard to get indemnity from the brand in every deal we do. But as mentioned in your coverage of the Sims case, indemnity is only as good as the solvency or the corporation of the indemnitor. Scott: Speaking of solvency of the indemnitor, this brings to mind the rash of promoter liability lawsuits against the celebrity endorsers from the fallout over FTX’s bankruptcy. If I told Tom Brady, Giselle Bündchen, Steph Curry, and Shaquille O’Neal that they could face potentially millions in civil liability all because they just appear in a TV ad for FTX, they and their agents probably would have laughed me out of the room. But that’s what’s happening now. Tom Brady, Giselle Bündchen, Steph Curry, Shaquille O’Neal, and others are all defendants in massive lawsuits seeking to hold these celebrities liable for the money’s lost by FTX customers. The customers claim that the celebrities were promoting unregistered securities which fall under the Regulatory Authority of the Securities and Exchange Commission. Under federal law and securities law, anyone who promotes a securities offering has a legal duty to ensure that the information they publish is complete, accurate, and not misleading. Jessica: And not only is there potential civil liability, but there’s also potential liability from the SEC. In March 2023, the SEC announced charges against multiple celebrities who were accused of participating in a fraudulent scheme to promote TRX and BitTorrent cryptocurrency securities. The SEC alleged that the celebrities violated federal law by illegally touting the TRX and the cryptocurrency without disclosing that they were compensated for doing so and the amount of compensation. And these penalties can be substantial. In October 2022, Kim Kardashian entered into a $1.26 million settlement with the SEC following its investigation of her online promotion of EMAX tokens. According to the SEC, Kardashian failed to disclose the payment that she received when promoting the crypto asset security on social media. Scott: And your example is a perfect lead in for the next potential legal landmine, and that’s an endorser’s failure to comply with the FTC disclosure guidelines. Jessica: Right. That is a big issue. We did an entire episode on that and the recent changes to the FTC guidelines, so our audience should certainly listen to that episode. Scott, I think we should

Get into the holiday spirit with a look at some of the most unique Christmas patents ever filed. From Santa detectors to upside-down Christmas trees, Scott Hervey and Jamie Lincenberg explore festive inventions that add a little extra cheer to the season on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: Welcome to a special holiday edition of The Briefing. Today, we are decking the Halls with a look at some of the most unique Christmas-related patents ever filed, at least in my opinion. That’s right, the spirit of invention doesn’t take a break during the holiday season. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my colleague, Jamie Lincenberg. We are going to examine these festive follies of intellectual property. So grab your eggnog, snuggle up, and let’s dive into five truly unique Christmas-themed patents on today’s installment of The Briefing. Jamie, welcome back. Are you ready for this? Do you have your Santa hat nearby? Jamie: I’ll grab it in a minute, but you have to put yours on, too. Okay. Scott: Well, I don’t happen to have one nearby, unfortunately. That was really a mistake in prepping for this episode. I really should have brought my Santa hat. Oh, well. Okay. First, let’s just point out, neither of us are patent lawyers. This is really more for humor than anything else. Second, I want to point out in doing my research for this episode, there are a lot of Christmas patents out there. Jamie: Well, that makes sense. Scott, Christmas is a big business. Scott: It is. It This is a big business. All right, so kicking things off, let’s talk about the Santa detector. Every kid wants to try to spot Santa, and this device purports to give kids an edge on the elusive elf. This patent, filed in 1996, is for a device designed to detect Santa Claus entering your home. I mean, isn’t that what the ring camera and ADT is all about, too? This patent application says, In the minds of young children, Santa Claus’s arrival is denoted by the presence of Christmas presents under the tree and/or Christmas stockings filled with treats or cold, depending upon whether you’re good or bad. That was not in the patent application. That was my ad lib. The patent continues on. However, none of these customary practices nor any prior art arrangements known to the applicant provides a Christmas stocking that is capable of being selectively illuminated to signal the arrival of Santa Claus. This ingenious gadget uses motion detectors, sound sensors, and even a Christmas tree light to trigger to alert an eager kids when the big man makes himself available. It’s like a ring, doorbell for Santa, only much less practical. Jamie: Imagine the chaos if it went off every time Uncle Bob wandered into the living room for another round of Christmas cheer. Scott: Oh, yes, I’m sure everybody has an Uncle Bob. Unfortunately, though, Jamie, it seems that kids will have to use a less high-tech mechanism for spying on Santa. This patent expired in 2014 due to failure to pay maintenance fees. Jamie: Well, maybe the inventor was on the naughty list. Scott: Oh, maybe he was. Jamie: This next one seems very practical. For people that If you don’t live in California and Arizona, where it tends to be in the mid ’70s all December long, this patent application is for a Christmas tree watering system, which aims to solve the age-old problem of crawling under your tree to add water. It’s a simple setup, a water reservoir in the shape of Santa with a water hose that extends from it to another hidden reservoir under the tree. Functional? Sure. Festive? Absolutely. Creepy? 100%. No one wants to see a water hose extending from Santa’s rear end that doubles as a tripping hazard at 2 AM after the office holiday party. Scott: That’s right. I love that. The picture that’s in the patent application here. They’ll put it up on screen. It’s hilarious. Okay. Now, this patent probably ended up being big business for the inventor and probably also a ton of business for the lawyer employers, tasked with patent enforcement. Now, on the non-legal side, it also brings some serious holiday cheer to your daily commute. It’s the Antler Vehicle Ornament. This 2014 design patent protects a festive adornment for your car, a set of Reindear antlers to transform your vehicle into comet on wheels. Now, I know what you’re thinking. Isn’t this just another way to embarrass my car? Well, hold on. This patent adds flair to the functional. With sturdy clips for the antlers, it ensures your car can spread holiday joy while cruising down the highway without losing its festive accessories. Jamie: Let’s face it: who wouldn’t smile at a minivan decked out as one of Santa’s reindeer? Unless, of course, it’s cutting you off in traffic. In that case, you probably wouldn’t be so jolly. Scott: That’s right. This invention turns the most mundane aspect of your life, your daily commute, into a holiday spectacle. Even more of a spectacle if one of those antlers goes flying off on the 405. Children, avert your eyes from the run-over antlers on the side of the road. Jamie: All right, next up on our list of holiday innovations, the invertible, artificial Christmas tree. That’s right. Someone out there thought, what if we turned Christmas Christmas upside down, literally. This genius or possibly diabolical idea flips the traditional tree on its head, creating a design that’s narrower at the bottom and wider at the top. Now, picture a tree that defies gravity or perhaps just confuses everyone at your holiday party. Scott: All right, so what is the point of this topsy-turvy Tanenbaum? Jamie: It’s meant to save space and make stories. Garage easier. However, might it be more fun to actually decorate this tree upside down? After all, with the wide end at the top, you’ve got more room for presents underneath. Or, depending on how you look at it, you’ve created a holiday vortex where gifts might get sucked into the void. Scott: It actually might make people think they’ve consumed a little too much holiday cheer at a holiday party, as well as seeing an upside-down Christmas tree. All right, so practicality aside, it certainly would be a conversation starter. Imagine the debates this tree could spark. Is it a symbol of holiday innovation or just a sign that we’ve gone too far with Christmas decor? If you’re looking to turn tradition on its head and have a sense of humor about your holiday decor, this might just be the tree for you. Jamie: It’s perfect for those who may have been on the naughtyy list. What better way to say, I’ll celebrate Christmas, but I will do it my way? Scott: All right, last Last up. Let’s dive into a holiday invention that brings a whole new level of accountability to your Christmas celebrations, the Naughty or Nice Meter. This patent application proposes a device that can scientifically determine whether someone has been naughty or nice. Because why rely on Santa’s mysterious list when you can quantify morality with a machine? Here’s how it works, or it’s supposed to work. The meter includes sensors to measure biometric data like heart rate or skin conductivity, combined with algorithms to assess behavioral inputs. The result? A definitive score labeling you as either naughty or nice. It’s basically a lie detector that meets Santa’s workshop. Jamie: Imagine the chaos that this could cause at holiday office parties. Want to raise? Let’s attach you to the meter. Scott: I could see that. However, I think for our industry, I think there might be a direct correlation between a high or naughty reading and a bigger bonus. Of course, I’m kidding, lawyers. Save your emails. Don’t take offense. Jamie: The patent also mentions a version for kid. Now, that is a parenting game changer. Forget empty threats of Santa’s watching. Now, you’ve got a blinking gadget that will call them out in real-time. It is fun and it’s festive until your child spends the rest of December trying to hack the system. Scott: But let’s not ignore the potential for holiday drama. Who decides the criteria for naughty versus nice? Is skipping the gym naughty? Not necessarily. Is saving the last cookie for yourself a nice act of self-care? Absolutely. These are philosophical questions I think that no gadget can answer. Jamie: Still, you’ve got to hand it to the inventors. They have found a to mix holiday magic with a bit of tech-savvy mischief. Whether it’s a hit or a hilarious flop, the Naughty or Nice meter is sure to add some high-stakes fun to your Christmas traditions. Scott: I really like it, though, as a parenting tool for the month of December. I really think it’s a way to bring kids in line for December. You’ve got to add that with the elf on the shelf, right? And you’ve got it locked down. You’ve got the kids locked down. Jamie: Perfect combo. Scott: Yeah. There’s There you have it. Five festive patents that prove inventors don’t take the holiday off; whether it’s catching Santa, watering your tree from Santa’s bum, dressing up your car, or using a behavior compliance machine, these patents add a dash of humor to the holiday season. Jamie: While most of these inventions may never end up under your tree, they remind us that creativity knows no bounds, even during Christmas. Scott: Jamie, happy holidays. Jamie: Thanks. You too, Scott. Scott: Well, that’s all for today’s holiday-themed episode of The Briefing. Thanks to Jamie for joining me on this Mary Jaunt through some funny holiday patents. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.

Oakland’s attempt to rename its airport didn’t take off. On this episode of The Briefing, Scott Hervey and Jamie Lincenberg discuss the trademark dispute between San Francisco and Oakland over airport naming rights. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: When Tony Bennett sang about leaving his heart in San Francisco, he wasn’t singing about Oakland. There are no little cable cars climbing halfway to the stars in Jack London Square, as charming as it is. Essentially, that’s why the City and County of San Francisco sued the city of Oakland and the operator of the Oakland International Airport, the Port of Oakland, to stop Oakland from renaming its airport to San Francisco Bay Oakland International Airport. I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my colleague Jamie Lincenberg. Fasten your seat belts and put your seats in the upright and locked position. It’s SFO versus OAK in today’s installment of The Briefing. Jamie welcome back. Thank you for joining me today. Jamie: Thanks, thanks. Thanks for having me, Scott. Scott: Let’s let’s see how many airline airport puns and bits of humor we can spontaneously include in this story here. Jamie: Sounds good. Scott: Okay, so, are you ready for takeoff? Jamie: I’m ready. Scott: Okay, so this case is about the Port of Oakland’s attempt to rename its airport and include San Francisco in its name. And this is also about the city of San Francisco’s claim that such use would create consumer confusion and constitute trademark infringement. But the reason Oakland wanted to include San Francisco, at least it claims, isn’t just about the desire to trade off of San Francisco’s goodwill. Jamie: Okay, so please tell us, why did Oakland want to include San Francisco in the new name of its airport? Scott: Well, as you know, whether we have to travel into our office in San Francisco, which is right in the heart of the financial district or otherwise fly into downtown San Francisco. We don’t always fly into SFO. Those who have to fly into San Francisco know that flying into Oakland is most often the better bet. It’s fairly common to have weather delays in San Francisco, but that’s not the case in Oakland. And also, you can catch the Bart right into San Francisco, right from the Oakland airport. And if you need a car. Oakland Airport is just right across the Bay bridge from downtown San Francisco. And apparently this was not well known to people outside of the Bay area or travelers who travel regularly in the San Francisco. Jamie: That’s true. Scott: So, you know, apparently the Port of Oakland conducted some studies that concluded that Oakland’s Oakland’s proximity to San Francisco isn’t really well known outside of the Bay area and completely unknown outside of California. And the port believed that this lack of awareness, this lack of awareness of the, you know, geographical proximity created challenges from the port in serving travelers. Jamie: Yeah. And I can understand why Oakland would want to do this, but I’m sure that San Francisco was not on board, so. Scott: True. Very true. San Francisco claimed that this would cause consumer confusion, and a few airlines also objected to the purported name change, saying that it would cause confusion for their travelers. The port went through with its internal requirements to implement the name change, and then the city of San Francisco sued, claiming trademark infringement. San Francisco claimed that consumers would believe that there was some association or affiliation between the two airports, and San Francisco also argued that consumers would buy tickets to the wrong airport or go to the wrong airport. Jamie: And so I guess this brings us to the heart of the case. Did Oakland’s use of San Francisco constitute trademark infringement. Scott: So in determining that, the court applied the standard likelihood of confusion test, which considers factors such as the strength of the mark, the similarities between the marks, evidence of actual confusion, and the defendant’s intent in selecting the mark. The court said that San Francisco’s Mark San Francisco International Airport, although it is descriptive, it’s commercially strong due to its long standing use and recognition right. Jamie: And the court also found that the two marks are similar in appearance and sound and meaning. Although Oakland’s mark includes other elements, San Francisco’s mark is entirely subsumed in Oakland’s mark. The court said that because the two airports offer identical services, the near identity of the marks then makes them confusingly similar. Scott: The court then looked at evidence of actual consumer confusion that was presented by San Francisco. So SFO presented evidence of instances where travelers and even businesses mistook Oakland Airport for SFO because of the name change. For example, there were reports of flight bookings and shipments intended for SFO that ended up at okay. However, the court found this showing of actual confusion was de minimis or trivial when it considered that 19 million travelers flew in and out of San Francisco between the applicable time frame. Jamie: As to the theories of confusion advanced by SFO, the court looked at the degree of care exercised by a typical consumer, and found that consumers exercise a high degree of care when purchasing online tickets, which, along with other factors, made the point of sale confusion unlikely. Scott: That’s true. But the court also found that consumers exercise a low degree of consumer care over whether neighboring airports are affiliated with each other, according to the court. Travelers rarely research airport ownership or management. Jamie: Yeah, and I think that’s right. I don’t think I’ve ever looked up the airport owners or management. Scott: I certainly haven’t. Jamie: No. Um, but Scott, did Oakland advance any defenses against its use of San Francisco? It seems that Oakland, you know, may have had a fairly good argument that it was using the words just descriptively. Scott: That’s a good point, Jamie. Uh, Oakland argued that San Francisco Bay is a descriptive term, and that Oakland used that term fairly and in good faith to describe the geographic nature of its airport services, namely its proximity to San Francisco. This argument relies on a provision in the Lanham Act, which allows the use of a term otherwise than as a mark if it is used descriptively and used fairly and in good faith to describe the goods or services or their geographic origin. Jamie: But the court rejected Oakland’s fair use defense. Right. Yeah. Scott: That’s correct. So the court reasoned that the defense only applies if the term is used otherwise than as a mark. The court noted that the Lanham Act defines a trademark as something used to identify goods and indicate their origin or their source. The court considered the port’s prior trademark registration for Oakland International Airport, which had been initially rejected for being primarily geographically descriptive, but later accepted after the port argued that it had acquired secondary meaning in that mark through exclusive and continuous use. The court believed that the port was using the new name in the same way that it had used the old name to acquire secondary meaning and function as a trademark. The court saw the new name as a direct replacement for the old one, and predicted that the court would continue to use the new name exclusively and continuously in order to establish secondary meaning. This, the court decided, is using the term as a trademark and does not meet the requirements for the fair use defense under the Lanham Act. Jamie: So what did the court ultimately decide here? Scott: Well, the court ended up siding with SFO, finding that Oakland’s use of San Francisco in the name of its airport was likely to cause confusion. The ruling prohibits Oakland from adopting or otherwise using the name San Francisco Bay Oakland International Airport. Jamie: That’s a pretty significant decision, Scott. So what does this now mean for Oakland and for other regional airports? Scott: Well, for. Jamie: Oakland, it’s a major setback in their marketing efforts, they’re going to need to find another way to compete and informing travelers about their geographic proximity to San Francisco without infringing on established trademarks for other regional airports. And I’m thinking primarily of Burbank and Long Beach here in Los Angeles. It’s a cautionary tale about the risks of adopting names closely tied to more prominent neighbors. While the Port of Oakland intended to use San Francisco Bay descriptively to clarify the airport’s location, the court found that this use created a false impression or affiliation with SFO and its established trademarks. This case underscores the importance of careful consideration of trademark implications when choosing names and brands for businesses and organizations, especially when leveraging geographically descriptive terms. Scott: Yeah, I, I think I agree with the court’s finding here. Um, you know, I’m thinking about Burbank trying to change their name to Burbank Los Angeles International Airport. I don’t think that that would fly with LAX. Jamie: Could you imagine it would be the John Wayne Burbank Los Angeles International Airport? That what a mouthful. Scott: People are already confused with all of the different with the different airports. Like. Jamie: Right, right. Scott: Thanks for joining me today, Jamie. Jamie: Thanks for having me. Scott: Well, thank you for flying. Today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative, enjoyable, and maybe just a touch humorous, but I mean, there’s really nothing funny about trademark infringement, but if you did, please remember to subscribe, leave us a review and share this episode with your f

The US District Court for the Northern District of Ohio issued an opinion in Hayden V. 2K Games, Inc. that could potentially put an end to tattoo copyright cases. Scott Hervey and Tara Sattler discuss the court’s opinion on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Earlier this year, we discussed a jury ruling in Hayden versus 2K Games, Inc, where a jury in the US District Court for the Northern District of Ohio found video game publisher Take-Two Interactive not liable for copyright infringement for a video game that incorporated a depiction of certain tattoos on LeBron James in the game NBA 2K. After the jury verdict, the plaintiff moved the court for a judgment as a matter of law. The court denied the motion and issued an opinion that may potentially put an end to these types of tattoo copyright cases. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor Tara Sattler. We’re going to talk about the court’s opinion in Hayden versus 2K Games next on The Briefing. Tara, welcome back. It’s been a while. Tara: Thanks, Scott. Glad to be back. Scott: So, Tara, can you give us a rundown of the facts in this case? Tara: Yes, absolutely. So Solid Oak, a licensing firm that represents the go-to tattoo artist for NBA players, sued Take-Two Interactive software, the game publisher behind the popular NBA 2K basketball video game, alleging that the game maker’s depiction of LeBron and his tattoos infringes the tattoo artist copyrights in six tattoos. In ruling on the video game publisher’s motion for summary judgment, the court found that the publisher had an implied license to depict the tattoos in the video game. An implied license exists where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it. The court in this case that the players had implied licenses to use the tattoos as elements of their likenesses and the defendant’s right to use the tattoos in depicting the players derives from these implied licenses. A crucial element of the court’s finding the tattoo artist knew their subject was likely to appear in public, on television, in commercials, or in other forms of media. After the jury verdict, the plaintiff then filed post-trial motions asking the judge to overturn the jury verdict or grant a new trial, which the judge denied. Scott: Before we go on, let’s have a quick review of what an implied license is. An implied license is basically permission to use a copyrighted work that’s inferred from circumstances and conduct rather than explicitly granting it in writing. In this case, the question was whether Hayden’s actions in tattooing LeBron James implied that he, Hayden, was giving permission for the tattoos to be depicted as part of LeBron’s likeness in various media, including video games. Tara: Let’s focus on the evidence the court looked to in upholding the jury’s finding of an implied license. We will talk about how this analysis will impact future similar cases and also provide some guidance to creators who may feature a person’s likeness, either actually or in some type of digital replica. Scott: There was testimony that NBA players like LeBron James expressly give the NBA and the Players Association the right to license their likeness, which those organizations then licensed to video game companies and others. But I think the most compelling evidence, the evidence which supported the implied license were the following two pieces of evidence. First, the fact that James had appeared, LeBron James had appeared in numerous NBA 2K games with his tattoos for years before getting tattooed by Hayden. Second, despite Hayden knowing that James was a star athlete and that he also had appeared as an avatar in video games, Hayden admitted that he never told James that he, meaning James, would need permission to show the tattoos on his person when James appeared in television or when he appeared in advertising or when he appeared in movies or was depicted in merchandise or in video games. Hayden’s exact reply to the questioning by the NBA 2K’s lawyer was, We never had a discussion about that. So pair that with James’ testimony, LeBron James’ testimony, that he, LeBron James, believed he had the right to license his entire likeness, including tattoos, and it was a slam dunk for the court, so to speak. Tara: It sounds like lack of any discussion about restrictions or approvals was really important here. Scott: Exactly. The court emphasized that the key question was Hayden’s intent at the time he tattooed LeBron James, based on the totality of the circumstances. The fact that Hayden never communicated any restrictions on displaying the tattoos, and possibly also the fact that LeBron James had appeared in video games prior to being tattooed by Hayden, seemed to weigh heavily on the court’s decision. Tara: Let’s talk now then about some important points of guidance that this case gives to creators who may feature a person’s likeness with tattoos in other media, like movies or animation. First, there’s the implied license. This case suggests that tattoo artists may be granting an implied license for the tattoos to be depicted as part of the person’s likeness in various media. In doing so, the totality of the circumstances would need to be considered in order to determine the tattoo artist’s intent at the time of creating the tattoo. For movies or animation, this could mean considering whether the artist knew that they were tattooing a public figure likely to appear in various media. Scott: Right. Another key factor would be if there were no restrictions conveyed by the tattoo artist to the person getting tattooed prior to the work commencing. The court found it significant that Hayden never communicated any restrictions to LeBron on his ability to display the tattoos, probably because I imagine LeBron James would look at him and get up and leave. This suggests that if a tattoo artist doesn’t explicitly restrict the use of their designs and their tattoos, it may be assumed that they’re allowing the tattoos to be depicted as part of that person’s likeness. Tara: Yes, and also relevant are existing licensing practices for the given media at hand. This case noted that the video game industry had long operated under the assumption that character likenesses included tattoos. This certainly applies to the movie and television industry where, at least prior to the tattoo cases, it was generally assumed that the right to feature a person’s actual likeness also included any tattoos that they may have on their body. Scott: Lastly, the understanding of the person getting tattooed is relevant. Le Ron James’ testimony that he believed he had the right to license his entire likeness, including tattoos, was considered relevant by the court. Now, absent, of course, any evidence of any restrictions expressly conveyed by the tattoo artist, the subject’s understanding of their rights to their own likeness, including those tattoos, will be taken into account by the court. Now, while this case doesn’t provide definitive rules for all situations, taken Together with the decision in the US District Court for the Southern District of New York and Solid Oak Sketches versus 2K Games, I think it shows that the courts will be inclined to find an implied license for depicting tattoos as part of a person’s likeness in various media, absent clear restrictions from the tattoo artist that are conveyed to the person getting the tattoo prior to the work being done. Tara: I think that’s right, Scott. I think it’s also right now in the age of social media, where almost everybody, of all generations, have a social media digital media presence of some kind or another. So this case started quite a while ago, but I think the court’s ruling rings true, especially now in the age of digital media that’s changed since this all started. Scott: Now, I definitely agree with you. And hopefully, we can begin to rely on the analysis that this court went through and stop being so concerned about the predicting actors that have tattoos in television and motion pictures, at least where that actor is a well-known actor. We understand that they received those tattoos prior to or after becoming a public figure like Mike Tyson. Tara: Yeah, I think that’s right for sure. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Tara Sattler for joining me today, and thank you, the listener, for viewing or tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.  

A group of senators introduced an update to the ‘No Fakes Act,’ which protects the voice and visual likeness of individuals from unauthorized AI-generated recreations. Scott Hervey and James Kachmar discuss the changes to this act on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Senators Chris Coons, Marsha Blackburn, Amy Klobuchar, and Thom Tillis introduced an update to the ‘Nurture Originals Foster Art and Keep Entertainment Safe Act’ or the ‘No Fakes Act,’ which the four senators previously released last October. I’m Scott Hervey, and I’m joined today by James Kachmar, and we’re going to talk about the ‘No Fakes Act’ or the update to the ‘No Fakes Act’ on this installment of The Briefing. James, welcome back to The Briefing. It’s been a while. James: Good to see you, Scott. Thanks for having me. Scott: We have a fun one today, the ‘No Fakes Act.’ The purpose and intent of the ‘No Fakes Act’ is to prevent the creation and use of a digital replica of an individual without that person’s consent. Let’s dive into how this proposed act accomplishes this and what the liabilities are for violations of the act. First and foremost, the act creates a new federal property right to authorize the use of a person’s voice or visual likeness in what’s called a digital replica. Now, a digital replica is defined in the act as a newly created, computer-generated highly realistic electronic representation that is readily identifiable as the voice or visual likeness of an individual. Now, this right, the right to control a digital replica or grant rights in a the original replica, survives postmortem and is transferable, licensable, and exclusive to the individual, the executors, the heirs or licensees or devices of that individual for an initial ten years, renewable for a rolling five-year period with a cap of 70 years. That’s postmortem. As I said, this right is licensable. Interestingly, the act says that a license can only have a term of ten years. James: Okay, Scott, why don’t we look at what the essence of the act is? It basically creates liability for one, the production of digital replica without consent of the applicable right holder, and two, publishing, reproducing, displaying, distributing, or transmitting, or otherwise making available to the public a digital replica without the consent of the applicable right holder, where such acts affect interstate commerce. It is not a defense to liability if the defendant displayed or publicly communicated a disclaimer stating that the digital was unauthorized or generated through artificial intelligence. Liability requires actual knowledge through either the receipt of notice from the right holder or a person authorized to act on behalf of the right holder or an eligible plaintiff, or from the willful avoidance of actual knowledge that the material is an unauthorized digital replica. Scott: Now, the act allows for a private right of action by the rights holder, and it also allows for a private right of action by any other person that controls, including through a license, the right to exercise or the right to use the rights holder’s voice or likeness. The act is not clear whether this license needs to be exclusive in order to sue for a violation of the act, like under copyright or if it can be non-exclusive and still have the right to sue. James: The act also allows for a private right of action for record labels. In the case of digital replica involving either a sound recording artist who has entered into a contract for their exclusive sound recording artist services, or any artist who has entered into an exclusive license to distribute or transmit one or more of their album or works that capture their performance. This is similar to what you and I had talked about some time ago about Tennessee’s Elvis Act. Scott: Right, it is. James: There’s also a three-year statute of limitations period for bringing lawsuits for violations of the act. The act provides for monetary relief injunctive relief, punitive damages for a willful violation, as well as attorney’s fees. Scott: The act also establishes separate liability for online service providers that participate in the making of a digital replica, so take no generative AI service providers, or make a digital replica available on an online service unless the online service has taken reasonable steps to remove or disable access to the unauthorized digital replica as soon as it is technically and practically feasible for the online service actor acquiring actual knowledge that the material is an unauthorized digital replica. So similar to the DMCA, the Digital Millennium Copyright Act, the No Fakes Act establishes a notice and takedown process. Also similar to the DMCA, liability for false takedown notices under the No Fakes Act. James: That’s right, Scott. And there are some exclusions that are built into the act, which are based on recognized First Amendment protections. For instance, it’s not a violation of the act when a digital replica is used in a bonafide news, public affairs, or sports broadcast or account, if the digital replica is the subject of or materially relevant to the subject of the broadcast or account. Scott: And similarly, it will not be a violation of the act where a digital replica is of an individual that is portrayed in a documentary or in a historical or biographical manner. Now, this can include some degree of fictionalization unless the production or use is intended to and does, in fact, create the false impression that the work is an authentic work and that the person portrayed by the digital replica actually participated in the work. Whether on camera or through a sound recording. James: Right. Similar to what we see in the copyright field, it is also not a violation of the act where the digital replica is used consistent with the public interest, either in bona fide commentary, criticism, scholarship, or satire and parody, or if it is used in a fleeting or negligible manner. Lastly, it will not be a violation of the act if the digital replica is used in an advertisement or commercial announcement for any of the above examples. Scott: That’s interesting, right? That’s a mix of write-up publicity statutes and copyright. The bill also includes a safe harbor from liability for AI technology companies that create a technology product that creates digital replicas unless such product is, one, primarily designed to produce one or more unauthorized digital replicas, and two, has only limited commercially sufficient purposes for use other than to produce an unauthorized digital replica, or three, is marketed, advertised, or otherwise promoted by that person or another acting in concert with that person, with that person’s knowledge for use in producing an unauthorized digital replica. It’s going to be interesting to see if the Senate will pass this bill, given where we are now in the election cycle. Now, the Copyright Office has recently issued a report basically cautioning that there is an urgent need for new federal legislation to address the proliferation of deepfakes created through the use of artificial intelligence. The report, it’s a great report, and anybody who’s interested in the subject should read it. The report analyzed the existing legal framework through which digital replicas can be addressed and pointed out their shortcomings. Perhaps the Senate will take this bill under consideration sooner rather than later. James: Right, Scott. We’ll just have to wait and see what the Senate does with the No Fakes Act update, and maybe you and I can get back together for another podcast here soon on this topic. Scott: That’s all for today’s episode of The Briefing. Thank you, James, for joining us. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.  

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 on one of GOTV’s patents through the use of its cloud computing providers to operate its streaming platform. But it did not infringe Netflix. That is the other one of the patents which was covering Netflix’s operation of the devices. So that’s when the jury then awarded the $2.5 million for the infringement of the one patent. Scott: Okay, so, I mean, as I just said, I think $2.5 million is almost a rounding error for Netflix nowadays. Do you have any idea what’s going to happen next? Is Netflix just going to pay the $2.5 million, or do you think they might appeal? Eric: Can’t say exactly what Netflix will do, but most likely, Netflix won’t just hand over the 2.5 million to go TV at this point, and instead, they may try to challenge the jury’s verdict, either through some post-trial motions with the district court or possibly an appeal to the Federal Circuit, sort of separately. Netflix also still has some challenges to the patents at the patent office that remain pending that could invalidate the patents and thus reduce or wipe out the jury verdict if the patents are found to be invalid to the extent that Netflix hasn’t paid the money yet. This also, a little bit, goes to what you were talking before, where what’s going to happen in the future with these patents and the infringement? So, if Netflix could invalidate the patents, that would also solve that issue going forward in terms of trying to work out some future royalty or payments. So, in short, this is still far from over. Scott: Yeah, you raised an interesting point there, Eric. If Netflix has not created a technological workaround, and if its challenges to the patents are still pending at the patent office, then it may just continue to pursue those for the purpose of probably entering into a global licensing deal with GoTV because I’m pretty sure GOTV would not want that patent to be invalidated. Eric: Correct? That’s a little bit of sort of a tactic here, too, because once Netflix pays the 2.5 million for the jury verdict, that money is gone. So even if the patents will say later invalidated, it doesn’t get the money back. So it has a lot of incentive to keep fighting and not pay that money until as late as. Scott: Right, right. Got it. This is really interesting. Let’s keep an eye on this case, shall we? And let’s deliver more updates to our listeners and our viewers as they come up. Eric: We’ll do, Scott; 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. If you have any questions about the topic we covered today, please leave us a comment, and we’ll try to get that family close.

Who really owns your Thanksgiving traditions? In this special holiday edition of The Briefing, Weintraub Tobin partners Scott Hervey and Richard Buckley discuss how intellectual property law intersects with holiday food, recipes, and branding. They explore: Why recipes usually aren’t protected by copyright The surprising trademarks behind holiday favorites like Turducken and Tofurky How brands use trademarks, trade dress, and storytelling to own a piece of the Thanksgiving season The rise of “Friendsgiving” as both a cultural phenomenon and a branding challenge Whether you’re a lawyer, brand owner, or marketing professional, this episode offers valuable insight into how IP shapes the way we celebrate and sell the holidays.

After losing its anti-SLAPP motion, Warner Bros. has appealed in Roadrunner JMTC LLC v. Warner Bros. Television, the lawsuit brought by Michael Crichton’s estate claiming the new series The Pitt is an unauthorized derivative of ER. In this episode of The Briefing, Weintraub Tobin attorneys Scott Hervey and Tara Sattler discuss: The background behind the ER “freeze clause” Warner Bros.’ First Amendment arguments under California’s anti-SLAPP statute The battle over what “derivative work” really means How the trial court handled the Katz declaration The broader implications for creative freedom and legacy IP Watch this episode on YouTube.

When artistic identity meets corporate branding, where does copyright law draw the line?   In a new episode of The Briefing, Scott Hervey and Richard Buckley discuss the lawsuit filed by artist Tyrrell Winston against the New Orleans Pelicans. Winston—whose distinctive sculptures of deflated basketballs arranged in grids have been exhibited worldwide and licensed by brands like Nike, Adidas, and even NBA teams—claims the Pelicans copied his signature style in a social media campaign. His lawsuit raises a major question for artists, brands, and IP lawyers alike: Can a distinctive artistic style be protected under copyright law? The conversation compares Winston’s claim to the “vibe copyright” case (Sydney Nicole v. Alyssa Sheil) and examines whether courts are expanding protection from expression into concepts and aesthetics. Watch this episode on YouTube.

A consent agreement can be a powerful tool to overcome a USPTO likelihood-of-confusion refusal—but only if it’s done right. In this episode of The Briefing, Weintraub Tobin attorneys Scott Hervey and Richard Buckley discuss the TTAB’s precedential decision in In re Ye Mystic Krewe of Gasparilla, where the Board rejected a one-page consent agreement as a “naked consent” insufficient to overcome a Section 2(d) refusal. They unpack: The history of the GASPARILLA application Why the TTAB said the agreement didn’t “show the work” How to draft a consent agreement that will actually persuade the USPTO Don’t miss this one—it’s a practical guide for anyone working with trademarks or brand portfolios. Watch this episode on YouTube.