The Briefing by Weintraub Tobin

The Yuga Labs v. Ryder Ripps case is shaking up NFTs and trademarks. In this episode of The Briefing, Weintraub attorneys Scott Hervey and Tara Sattler unpack the Ninth Circuit’s ruling on whether NFTs count as “goods,” why the First Amendment defense fell flat, and what it all means for the future of digital asset law. Watch this episode on YouTube. Show Notes: Scott: Was the Ryder Ripps Bored Ape Yacht Club NFT series a social commentary on the popular Board Ape Yacht Club and an exposure of its racist tropes? Or was it just an attempt to capitalize off of Bayes’ popularity for profit? These questions were front and center in the lawsuit between Yuga Labs, the creators of the Board Ape Yacht Club NFT. Boys, say that 10 times fast. Project and Ryder Ripps, a popular visual artist. This case resulted in a bench trial award to Yuga Labs of $8 million in damages. But the appeal of that award to the Ninth Circuit raised some very interesting issues, named Mainly the question of whether NFTs are goods that fall under the Lanham Act. I’m Scott Hervey, a partner with Weintraub Tobin, and today I’m joined by my partner and frequent briefing contributor, Tara Sattler. We are taking a deep dive into the fascinating intersection of digital art, blockchain, and Intellectual Property on today’s installment of The Briefing. Tara, welcome back to the briefing. Tara: Hi, Scott. Great to be here, as always. Scott: It’s good to have you here. Let me ask you a question. Did you ever buy any NFTs? Tara: I did not. Scott: I did not either. But I think we’re still qualified to talk about this case, even though we weren’t suckers, I’m sorry, consumers of NFTs. Tara: Yes, I agree. Scott: Let’s start with a summary of the Yuga Labs case. Why don’t you tell us what exactly happened here? Tara: Sure. Yuga Labs Inc. Created the Bored Ape Yacht Club or B-A-Y-C NFT collection, which is one of the most recognized NFT collections globally. The B-A-Y-C collection was associated with, very early with celebrity owners, including Snoop Dogg, Justin Bieber, and Jimmy Fallon. Each NFT in this collection is associated with a unique cartoon soon, Bored Ape Image, and purchasing an NFT not only grants rights to the ape art, but also membership in what’s been described as a strange combination of gated online community, stock shareholding group, and art appreciation society. Yuga Labs launched BAYC in April of 2021, quickly selling out the collection and generating over $2 million. They also developed various trademarked brand signifiers like Bored Ape Yacht Club and Bayayc. Scott: Now, this was right as NFTs took off, some promoting NFTs as an investment category and some just promoting it as hype. There was a huge rush to the adoption of NFT art, and NFTs gained cultural relevance as status symbols. That’s where Ryder Ripps and Jeremy Cahan, hope I pronounce his last name correctly. Tara: Comment. Prefithely. In late 2021, Ryder Ripps, a visual artist, started criticizing Yuga Labs, alleging they used neo-nazi symbolism, alt-right dog whistles, and racist imagery in the B-A-Y-C NFTs. Scott: That’s right. According to Ripps, the Bayy-C Ape Skull logo resembled the Totenkopf emblem of the Nazi SS Stormtroopers. Ripps compiled his findings on a website and used art to satirize the Bayy-C brand. In May 2022, Ripps and Kehen created their own collection called Ryder Ripps Board Ape Yacht Club, which was linked to the exact same ape images with some slight changes and a corresponding ape ID, as was Yuga’s NFTs. Tara: So surprise, Yuga Labs sued Ripps and Cahin and asserted 11 federal and state causes of action, including claims under the Lanham Act for trademark infringement. Yuga claimed the defendants made counterfeits market, BAYC NFTs that they advertised and sold to the same customers in the same markets using Yuga’s BAYC trademarks. Scott: The defendants argued that their use was protected by normative fair use and the First Amendment. It’s interesting that of the 11 causes of action, Yuga didn’t sue for copyright infringement despite that the BAYC NFTs are associated with original works of art. Tara: That’s true. What’s your thought on why Yuga didn’t sue for copyright infringement? Scott: This is just my hypothetical and my thought. When Bayayay-C NFTs were sold, you have a lab’s granted buyer as a license to use the underlying artwork for personal and commercial purposes. It could be as broad as creating derivative works or merchandise featuring the artwork that corresponds to the NFT that you purchased. This licensing model could potentially complicate a copyright claim because Ripps could argue that his NFTs were permissible under the broad license that was granted to the BAYC NFT holders, or he could have argued that his use was fair use, especially since Ripps claimed that his project was satirical commentary of the BAYC NFT art. Now, trademark law focuses on brand confusion and not on the creative content itself. Maybe Yuga’s lawyers thought it would be a stronger avenue for them to challenge Ripps’ use of the BAYC mark than alleging claims for copyright infringement. Tara: I agree with you there, Scott. Going back to the case, setting the table for the Ninth Circuit, the district Court granted summary judgment for Yuga Labs on its trademark infringement claims, enjoying the defendants from using the BAYC marks, and awarded Yuga over $8 million in discouragement of profits, statutory damages, attorneys fees, and costs. Scott: That’s a very significant award. As expected, the defendants appealed the decision. They appealed to the Ninth Circuit. On appeal, the Ninth Circuit had to address three main things. First, whether NFTs can be trademarked. Second, whether to reverse the district court’s summary judgment for Yuga Labs on its trademark infringement and cybersquatting claims. We’re not going to talk about the cybersquatting claims in this discussion. But particularly focusing on whether Yuga proved likelihood of consumer confusion. And third, whether to affirm the rejection of the dependents counter claims. Tara: So let’s talk about the first issue. Can NFTs be trademarked? Scott: Sure. So Obviously, this was a threshold question for the court. If NFTs couldn’t be trademarked, then Yuga’s entire case went away. So, the Ninth Circuit said, yes, NFTs can be trademarked. The court noted that the Lanham Act protects marks that are used with any goods or services, but it doesn’t define what constitutes a good. However, the court found guidance from a recent USPTO report which concluded that NFTs are goods covered by the Lanahm Act. The USPTO views trademarks in NFT markets as functioning similar to those in other markets, identifying the source of the underlying asset like digital arts or services, such as club memberships represented by NFTs. Tara: The defendants had a very interesting counterargument to that. They relied on the line of cases that they said stood for the proposition that intangible goods like NFTs are ineligible for trademark protection because there are not goods as defined in the Lanham Act. Scott: Right. Now, that was an interesting counterargument, but ultimately it proved to be unpersuasive. Tara: Right. The court said that there is no bright line rule delineating tangible and intangible goods, and that NFTs are different than the good in the cases cited by the defendants. One was a video cassette because they’re not contained in or even associated with tangible goods. Nfts exist only in the digital world and are associated only with digital files. They are actively marketed and traded as commercial goods in online marketplaces, specifically curated for NFT. Scott: Right, that’s right. The court emphasized that consumers perceive the BAYC NFTs as more than just a digital deed to the authentication of artwork. They also function as, in this case, membership passes, providing exclusive access to this social club, I guess, merchandise and events. Based on this, the Ninth Circuit concluded that Yagla Labs NFTs are indeed goods under the Lanamack. Tara: Some of the analysis of this decision call this a groundbreaking finding for the future of digital assets. You don’t believe that this part of the decision is groundbreaking. Why? Scott: Right. I don’t believe it’s ground heartbreaking because we saw this in the 2022 case of Hermes International versus Mason Rothschild, which involved the Metta Birkin NFTs. You remember those? In that case, the US district Court for the Southern district of New York found that Rothschild’s NFT series called Metta Birkin infringed the Birkin trademarks that were owned by Hermes. The court said that Rothschild used Metta Birkins as a mark in commerce, that he used it to identify the collection of NFTs that he offered for sale. In many ways, that case foreshadowed what was to come, not only here in this case where this court found that the BAY BRYC brands are trademarks, but I also think it foreshadowed what happened in the Supreme Court’s handling of the Rogers test in Jack Daniels versus VIP products. Tara: So speaking Speaking of the Rogers test, let’s talk about how this case addressed the defendants claims that the Rogers test applied to their use of the Bayer-YCE marks. Ripps argued that their sale of the RR Bayy-C NFTs was a component of a broader expressive art project and public protest. And as such, the Rogers test applied. Scott: Right. So just as a quick background. So the Rogers test provides a narrow First Amendment to trademark infringement for expressive works unless the use is irrelevant or explicitly misleading. However, those frequent listeners to this podcast know, the Supreme Court’s decision in Jack Daniels Properties versus VIP products, narrowed this doctrine quite a bit. The Supreme Court made it clear that this First Amendment exception does not apply where an alleged infringer uses a trademark in the way that the Lanham Act most cares about. In other words, as a designation of source for the infringer’s own good. So as a trademark. Tara: In the appeal, Ripps and his fellow defendant devoted significant briefing to explaining the expressive nature of their RR, B-A-Y-C, NFT project, and relatively little to explaining how their use of Yunga’s marks was not a designation of source for their their own NFTs. And ultimately, the court found that the defendant’s cursory assertion that it did not use Yunga’s marks as identifiers of source, failed that Jack Daniels test. Scott: Exactly. The Yunga Court found that Ripps and Kehan used the Bayes-C Mark as marks, meaning as a source identifier, not merely to describe or to reference the Yunga Labs NFT project. For example, they embedded Bored Ape Yacht Club and Bayy C into the name of their NFT project, so R-R-B-A-Y-C NFT, and its trading symbol. They also used those marks in advertising. The court explicitly stated that it doesn’t matter that the defendant’s ultimate goal may have been criticism or commentary because they were still using a similar-looking mark and a similar-sounding mark as a designation of source for their own goods. The court emphasized that the functionality of the mark itself, how it operates and whether it’s likely to cause confusion, is what the Lanham Act addresses, not the user’s subjective intent. So since the defendant’s use was, at least in part, for source identification, the First Amendment exception under Rogers was foreclosed. Tara: Yeah, and you mentioned the Airmays case that foreshadowed this result and the Supreme Court’s decision in Jack Daniels. In Airmays, where Mason Rothschild created meta-berk in NFTs that depicted furry versions of Airmays’ iconic Berkene bags, Airmays sued him for trademark infringion and dilution. The court in Hermès found that the Rogers test was applicable, but also found that the defendant could not avail himself of that defense since his use of the Berk in Mark was explicitly misleading. Why do you think this foreshadowed Jack Daniel? Scott: It is true that the Hermès Court found that Rogers was the analytical framework. However, it was the Court’s treatment of the second Rogers factor, the explicitly misleading factor, specifically the application of the Polaroid factors to assess this prong, which showed that Rogers was heading for a narrower application. The court noted that Rothschild’s Metta Birkins NFTs were not purely artistic, but functioned as a commercial product, sold for profit, and marketed in a way that suggested a connection to Hermès’s iconic Birkin brand. The court highlighted evidence of consumer confusion as being critical to assessing whether Rothschild’s use was explicitly misleading under Rogers. Tara: By applying the Polarite factors, the court was focusing on whether the Meta Birkin NFTs operated as source identifiers, implying a brand affiliation with Hermès. Scott: Hermès wasn’t just looking at whether the use was in connection with an expressive work. It was looking at the nature of that use as well. In Jack Daniels, the Supreme Court clarified that Rogers does not apply when a trademark is used as a source identifier, such as when a mark is used to designate the source of a defendant’s own good. In that case, it was a dog toy that was mimicking the Jack Daniels’ whiskey bottle. The court emphasized that trademark law’s core purpose, preventing consumer confusion, takes precedent in such case. The Hermes Court’s scrutiny of Rothschild’s commercial intent and the resulting consumer confusion, a test, aligned with this principle, suggesting that Roger’s protections are limited when a defendant’s use mimics a brand’s commercial identity. As opposed to being purely expressive. Tara: Yeah, and the Jack Daniels decision did clarify that courts should not reflexively apply Rogers to any use of an expressive element. In Instead, they must first determine whether the use functions as a source identifier. Scott: Right. And there are many courts fact-intensive approach in determining that second Rogers factor, focusing on whether the Metta Birken Mark was explicitly misleading via the Polaroid factors, anticipated this by requiring robust evidence of confusion in a commercial context before dismissing First Amendment protections. This aligns with Jack Daniels’ emphasis on distinguishing between expressive and commercial uses of trademarks. Tara: Right. So while Hermes didn’t have the Jack Daniels case to cite, it effectively reached a very similar conclusion that using trademarks, famous marks, to sell your own product, even if it has an expressive element, falls outside the scope of Rogers. Scott: Right. So props the Judge, Rackoff, the judge rack the judge in the Hermes case for understanding where Rogers was going before the Supreme Court’s decision in Jack Daniels. All right, so let’s get back to this case, the Yuga Labs case. So if an NFT can be trademarked and the First Amendment defense doesn’t apply, let’s talk about why summary judgment for Yuga Labs on trademark infringement was reversed and what is still left to be decided. Tara: It’s fairly straightforward. The Ninth Circuit reversed the summary judgment because Yuga Labs has not proven as a matter of law that the defendant’s actions were likely to cause consumer confusion. Scott: Right. That likelihood of consumer confusion, it’s a core element of trademark infringement. It’s generally a fact-intensive inquiry that should not be decided by a court on a dispositive motion, but should be reserved for a jury. To be clear, it’s not that Yuga Labs can’t win, but they haven’t proven it as a matter of law just yet. Tara: Exactly. The court looked at the sleep craft factors, which are used to assess the likelihood of confusion in trademark cases, especially in internet commerce. There were some factors leaning toward Yuga, such as the strength of the mark and relatedness of the goods. Scott: Right. So focusing briefly on those two factors, this is what the court found. So for strength of the mark, the court found that the VA AYC marks were conceptually strong and commercially strong due to their widespread recognition, celebrity attention, etc. As the proximity of the goods, the Ryder Ripps’ BAYC NFTs and the Yuga Labs, B-A-Y-C NFTs, were nearly identical in terms of images and ape IDs. The defendants even copied Yuga’s smart contract name and symbol, which could cause misidentification. Tara: Although these two factors favored Yuga Labs, that wasn’t enough. The court noted that several factors remained unclear and that a jury would need to weigh the evidence. For example, on the similarities of the marks factor, the court noted that although the marks are similar, the addition of the R-R and the backslash in R-R/bayc, R-R referring to Ryder Ripps creates visual and auditory differences that a juror could find significant enough to avoid confusion. Scott: And as for evidence of actual confusion, while Yuga presented some evidence, other evidence suggested that some interested consumers did know the difference, making this factor neutral. There were also questions about the similarity of the marketing channels for the goods. Most of the dependent sales occurred on their own One website, rrbayc. Com, which is different from Yaga, it’s bayc. Com, and the extent of sales on shared platforms like Twitter was unclear. So this factor favored the defendants. Tara: Another sleep-craft factor, which looks at the type of goods and degree of care by the purchaser, tended to favor the defendants. The court noted that NFTs are generally considered sophisticated and often expensive goods. So, the significant price differential between Bayy-C NFTs, which sold for millions, and the Ryder-Ripps Bayy-C NFTs that sold for $100 to $200 could alert consumers to a difference. Scott: It should alert consumers to a difference. All right. Lastly, the court noted that the last factor, the factor that analyzes the defendant’s intent in adopting the allegedly infringing mark, could favor the defendants. The court recognized that Ripps and Cahan had dual motives to criticize Yuga and satirize NFTs, but also potentially to confuse consumers. Tara: Yeah. So, the future of this dispute now rest with the jury to decide whether consumers were truly confused by the Ryder Ripps, B-A-Y-C, NFT. Scott: Exactly. Yuga Labs may still prevail, but they’ll need to convince a jury at trial. This space will continue to be a significant one for trademark law in the digital asset space, and one that we are going to watch and report back on. So that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we cover today, please leave us a comment.

50 Cent’s two-minute cameo in the horror film “Skill House” turned into a full-blown legal battle over credits, contracts, and control. In this episode of The Briefing, Weintraub entertainment and IP attorneys Scott Hervey and Tara Sattler break down what went wrong—and what Hollywood can learn from it. Watch this episode on YouTube. Show Notes:  Scott: Picture this, Curtis 50 Cent Jackson, hip hop legend and media mogul, steps on to the set of a new horror flick, Skill House. He films a quick two-minute scene, gets billed as a producer, and then next thing you know, he’s in court, trying to stop the film’s release, claiming his name and likeness were used without his permission. But the producers say, Hold on, wait a minute, we had a deal. Welcome to the Briefing by Weintraub Tobin, where we dissect the legal showdowns Shaking Up Hollywood. I’m Scott Hervey, and I’m joined today by my partner, Tara Sattler. Today, we’re going to unravel this messy dispute on today’s installment of The Briefing. Tara, welcome back to The Briefing. Tara: It’s always great to be here, Scott, and welcome back. I know you’ve been gone for a little bit. Scott: Yeah, that’s right. We pre-filmed about four or five episodes, and they weren’t our standard deep dive into current cases. I’m happy to dig back into this one. This I wrote while I was away on vacation because I found this case from the start to be incredibly interesting. Tara: God, since I work with a lot of studios and production companies, this case is absolutely my worst nightmare. Scott: Oh, mine too. I work with a bunch of studios and production company as well. When I read this case, I broke out in cold sweat. This is the thing that keeps you up at night. Tara: Yeah, it really is. It’s a wild ride. A 50 Cent, a horror film, a missing signed contract. Let’s get into it. Scott: Yeah. So let’s start with the factual history of the dispute, Tara. Why don’t you give our listeners a Some background on what’s going on here. Tara: Yeah, absolutely. So this case revolves around Skill House, a horror film that was released on July 11th, 2025, earlier this summer. Curtis Jackson, also known as 50 Cent, appears in the film for just over two minutes, but is prominently featured as a producer in its marketing. 50 Cent and his company, NYC Viive LLLC, filed a lawsuit against the film’s production company, Skillhouse Movies, LLC, its producer Ryan Cavenagh and GenTV, LLC, alleging unauthorized use of his name, likeness, voice, trademarks, and other intellectual property. 50 Cent then sought a preliminary injunction to stop the film’s release, claiming it would cause irreparable harm to his brand and reputation. The defendants, however, argued that 50 Cent agreed to participate in and promote the film in exchange for a back-end profit share of 10%, among some other terms. Scott: Right. So the core issue, or one of the core issues, is whether there was an agreement. What’s the backstory on that, Tara? Tara: So in the summer of 2022, 50 Cent and Cavenagh started discussing his involvement in Skillhouse, which is Gen TV’s first feature film. On June 26th, 2022, 50 Cent Council, Stephen Sava, emailed Production Council Neil Sacker, confirming they were good to go on the terms, including producer credit, 10% of the back-end profits, social media promotion with approval rights, product placement for 50 Cent Cognac and champagne brands, and a small acting role. Kavanaugh confirmed these terms, and on July second, 2022, Sacker sent a binding term sheet and certificate of employment, which included $100,000 in fixed compensation and a clause barring 50 cent from seeking injunctive relief in relation to the film. The parties exchanged some revisions on those documents, and by July 30th, Sacker sent what he called the final version of the agreement. But here’s the catch. Neither side can produce a signed copy. So Kavanaugh claims that 50 Cent signed it on set on August second, 2022, in front of witnesses. But 50 Cent and his team deny that. Scott: That’s pretty messy. I see how this all plays out because this happens. This just happens. But it’s messy. No signed agreement. But the parties kept working together. Tara: Yeah, they did, even without a signed contract. So 50 Cent filmed his scene, and his team continued discussions about promotion and payment terms. For example, on August 15th, 2022, 50 Cent commented positively about a film flip, and he later discussed product placement with Kavanaugh. But by April of 2025, 50 Cent’s team claimed they hadn’t been paid, and on June 2, 2025, he filed the injunction to block the film’s release, citing federal and state trademark infringement, unfair competition, false advertising, and violations of his right of publicity. Scott: So let’s get to the court’s legal analysis. Let’s talk Can you talk a little bit about why the court denied 50 Cent’s request for a preliminary injunction that would have injoined the distribution and exploitation of the feature film. Tara: Yeah. The Court’s decision was issued on July 11th, 2025, by Judge Hernan D. Vera, and it hinged on the winter factors for preliminary injunction. Those are likelihood success on the merits, irreparable harm, balance of equities, and public interest. The court really focused on the first factor, the likelihood of success factor, and found that 50 Cent didn’t clear the bar. The key issue was whether 50 Cent consented to the use of his name and likeness. The defendants provided evidence like emails and text from 50 Cent’s counsel suggesting mutual assent to the agreement’s material terms, even if it signed. For example, Sava’s good to go email and subsequent negotiations showed Jackson’s team was on board. The court also noted that Jackson’s actions, like filming his scene and discussing promotion, supported the defendant’s claim that an agreement really did exist. Scott: Right. Based on the facts, this seems to be the right decision. 50 Cent published numerous posts on his social media accounts about his involvement in the film. 50 Cent is a very, very successful businessman, and I’m sure he and his team carefully vet all of his projects, which is probably why it was hard for the court to believe that he not only performed his scene, but that 50 Cent and his entire team spent two and a half years marketing and promoting a film he never actually agreed to be in. Tara: While not having a signed agreement isn’t best practices, it didn’t sink the defendant’s case here. Scott: Right. I mean, let’s point out it is not best practices, and most studios require a signed contract or some form of a signed agreement, whether it’s a certificate of engagement or long form before anybody starts rendering work. But you’re right, it didn’t sink the case. The court emphasized that a contract can be formed through mutual assent, even without a signature, as long as the parties agree on material terms. This isn’t the first time a court hearing a contract dispute involving an actor’s participation in a project upheld an oral agreement. Tara: Right, Scott. I think you’re talking about the 1993 case, Mainline Pictures versus Basinger, which is often cited as a landmark decision in Hollywood regarding the enforceability of oral contracts. Scott: Oh, definitely. Yeah, that’s exactly what I was talking about. In that case, Mainline Pictures versus Basinger, Kim Basinger was ordered to pay $8. 9 million to Mainline Pictures for backing out of an oral agreement to star in the film Boxing Helena. The court found that Basinger’s verbal commitment, coupled with actions like reviewing the script and meeting the director, formed a binding contract even without a signed document. This case set a precedent that oral agreements in Hollywood can be enforceable if there’s clear evidence of mutual assent. In the scale house case, the court applied a similar logic. Although no signed contract was produced, the defendant’s evidence, emails, text, and 50 Cent participation on set, suggested mutual assent to key terms like his role and promotional duties. Just as in Basinger, the court didn’t require a signed contract to find that 50 Cent likely agreed to the use of his name and likeness, undermining claim of unauthorized use. The Basinger precedent gave the court confidence to deny 50 Cent injunction, as it showed that oral or implied agreements can hold up when supported by consistent conduct and communications. Tara: Basinger looms large here, and it really shapes the takeaways for this case. Scott: Right. The Basinger case reinforces the skill house ruling, I guess it’s core lesson. In Hollywood, you don’t always need a signed contract to be bound. Both cases show that courts will look at a party’s actions and their communications to determine intent. In Basinger, it was her meetings and her verbal commitments. In Skill House, it was 50 Cent’s participation in the filming and the promotional discussions and his social media activity. This connection underscores why studios now, well, they probably always always have, but they certainly do insist on signed contracts before services are rendered. Basinger sent shockwaves through the industry, and Skillhouse is a reminder that Lucid agreements can still lead to legal battles. Tara: Absolutely. Here, the defendants’ declarations and exhibits, like email exchanges and Kavanaugh’s claim that 50 Cent did sign the agreement on set, created enough doubt about 50 Cent’s claims. So the court didn’t need to rule definitely on the contract’s existence. It just found that 50 Cent couldn’t show a likelihood of success or even serious questions on the merits, which is fatal for a preliminary injunction. So because of this, the court didn’t even address the other winter factors like irreparable harm. Scott: Right. And that brings us to the two key lessons or two key takeaways from this case. Tara: Yeah. The first one is fairly obvious, which is the importance of having some type of signed agreement before any non-employee We render services on any type of creative project. Scott: Right. So this case is a textbook example of what can go wrong when you let any form of talent, whether that’s an actor or a writer or a director or a producer, start working without a signed agreement, without any form of a signed agreement. Now, most studios have a strict no signed agreement, no work policy, because it avoids exactly this dispute. Here, 50 Cent filmed the scene and engaged in promotional discussions without, or at least allegedly, without a signed deal, leading to a he said, he said battle over whether an agreement actually existed. If the defendants had insisted on a signed contract before 50 Cent stepped on set, or if they held on to that signed contract, once 50 Cent signed it on set, they could have avoided this litigation, or at least had a stronger defense. The absence of a signed agreement left both sides relying on emails, text, and conflicting declarations, which muddied the waters and prolonged the dispute, and that means money. Studios enforce this policy to lock in terms protect against claims like the ones that 50 Cent made, which could have derailed the movie’s release. Tara: Yeah, absolutely. It really could have. Here it seems that 50 Cent may have had a signed certificate of engagement, even though no one could find a copy of it. Scott: Right. I mean, it’s a fairly standard practice, as we both know, in the entertainment industry, to have a producer, a director, a writer, sometimes even an actor, sign a certificate of engagement before a full long form agreement is signed. A certificate of engagement is itself a binding agreement that sets out the key material terms relating to that talent, that artist’s engagement. In addition, certificates also generally include an arbitration provision, a waiver of injunctive relief, and other core requirements for a written contract. Tara: Yes, they definitely We certainly do. That actually brings us to the second lesson that we learn here, which is the importance of the waiver of injunctive relief provision. Scott: Right, absolutely. In the entertainment industry, it’s standard practice to include a provision in, well, not just talent agreements, but you see them in almost every single agreement related to anything that appears on camera or has anything remotely to do with the production of either a television or a motion picture or any type of creative output. That’s a term that waives the right to seek injunctive relief. This case shows why that provision is enforceable. The defendants argued that the unsigned final agreement included a cause barring 50 cents from seeking injunctive relief, which would have blocked this motion outright if the court had found the agreement enforceable. This clause protects production companies and studios studios and distributors from last minute attempts to halt a film’s release, which is a lot about leverage, and it can cost millions of dollars and disrupt distribution schedules. Without such a clause or without a signed agreement to enforce it, producers, studios, distributors face the risk of a lawsuit like this one where a plaintiff can try to gain leverage by threatening to pull the plug at the 11th hour. Even though 50 Cent’s injunction failed, the clause’s presence in the draft agreement maybe influenced the court’s view on the party’s intent. Tara: Yeah, I think that’s right, Scott. What are the takeaways for the entertainment industry from this case? Scott: Yeah. This case is a wake-up call. First, always get agreement signed before work begins. No exceptions. A handshake deal email or email chain isn’t enough when millions of dollars are on the line. Second, include clear waivers of injunctive relief in contracts, including certificates, to shield against attempts to block a project’s relief. Parties. Finally, keep really good records of negotiations and have someone designated to collect and retain and distribute agreements that are signed on set. The defendants evidence of mutual assent saved them here, but a signed contract, if they would have had some type of coordinator on set who Kavanaugh could have said, Here, hold this and scan it into our system, That would have made this case or their defense a slam dunk. For talent, this case shows the risk of proceeding without clear, executed agreements. You might lose leverage to control how your name and likeness would be used. Tara: Absolutely, Scott. I agree with all those takeaways. This dispute is really a reminder that in the entertainment industry, the fine print can make or break a project. Scott: Right. Well, that’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics cover today, please leave us a comment.

You came up with a clever brand name in a foreign language—great! But did you know it might be refused by the USPTO? In this episode of The Briefing, Scott Hervey and Richard Buckley break down what a doctrine is, how trademark examiners apply it, and other important considerations for choosing foreign-language marks. Watch this episode on YouTube. Show Notes: Scott: You’ve come up with a great brand. It’s clever, it’s catchy, and it’s in a foreign language. But when you file for a trademark, the USPTO refuses your application. Why? Well, the answer might lie in an obscure but important rule, the doctrine of foreign equivalence. I’m Scott Hervey, a partner with a law firm of Weintraub Tobin, and I’m joined today by my partner Richard Buckley. We are going to unpack the doctrine of foreign equivalence, how it works, when it applies, and what it means for brand owners and their lawyers on today’s installment of the briefing. Richard, welcome back to The Briefing. Richard: Great to be here, Scott. Great topic. Scott: Yeah, I was reminded of this when I was looking at a trademark search for a client, and it happened to be for a consumer brand, and their mark was in Italian. In clearing the brand, I had to think, Okay, what does that word mean? I had to look for that English language word for similar products. I’m jumping ahead of myself, though. Let’s start with the basics. The doctrine of foreign equivalence is a rule in US trademark law used to analyze trademarks that contain foreign words. Under this doctrine, a foreign word used in a trademark mark may be translated into English to determine whether the mark is generic or merely descriptive, and whether it’s confusingly similar to another registered or pending mark. Richard: The doctrine reflects the idea that the average American consumer familiar with the foreign language may translate the word when encountering the mark. It’s not automatic. Translation only happens if it’s likely that the consumer would recognize the term translate it mentally into English. Scott: All right. So let’s talk about how this comes up in practice. So during the trademark examination process, and that happens after an applicant has filed their trademark registration application with the Patent and Trademark Office, the USPTO examining attorneys are required to consider whether a foreign term should be translated under this document. The USPTO even has what’s called a Trademark manual of Examining Procedure, or the TMEP, which directs examiners to apply the doctrine when it is appropriate. Richard: Here’s how they typically analyze it. First, language recognition. Is the word in a common, modern, foreign language that is spoken by a substantial portion of US consumers? Spanish, Italian, French, German, and Mandarin are the usual suspects. Scott: Last Latin, not so much. Okay. Richard: Not anymore. Scott: Translatability. Is the term directly translatable? For example, Lupo, right? It’s Italian for wolf. Richard: Third, relevance of the translation. Does the English translation affect the analysis of the mark? For instance, if the translation is descriptive or generic, that can be grounds for refusal. If the translated the word is confusingly similar to an already registered English language mark, that may lead to a Section 2D likelihood of confusion refusal. Scott: Right. The doctrine of foreign equivalence only applies when an ordinary American purchaser is likely to translate the foreign mark into English. However, the Trademark Trial and Appeal Board has interpreted the phrase ordinary American purchaser as purchasers familiar with the foreign language. This definition of ordinary American purchaser effectively guarantees that the doctrine would be applied in almost every case involving a foreign word, since those familiar with a non-English language would ordinarily be expected to translate the word into English. So the bottom line of that is if your mark is in a foreign language, it’s always best to analyze whether that mark conflicts with its English language counterpart. Richard: Scott, let’s discuss why this matters for brand owners, especially in entertainment and consumer-facing industries. Scott: Sure. That’s a great idea. All right, so let’s say you’re launching a fashion label, and let’s say it’s called Bell Mode, French for beautiful fashion. Even though that sounds elegant, it could be viewed as merely descriptive when translated, making it hard, if not impossible to protect. Richard: Or imagine you name your tequila Toro Azul, a Spanish for a blue bowl. If there’s already a brand called Blue Bull Spirits, you may be blocked, even if your mark is entirely in Spanish. Scott: For entrepreneurs, the key is to avoid assuming that using foreign words gives your brand instant uniqueness. And also recognize that common or translatable foreign words may be treated the same, I will say, will likely be treated the same as their English counterparts in the eyes of the law, or at least in the eyes of the TTAB. Richard: For attorneys and brand clearance professionals, here are three best practices. One, translate foreign terms in proposed trademarks as part of your clearance process. Two, Search for English equivalents and phonetic similarities in the US Patent and Trademark Office database and common law sources. Third, be prepared to address the doctrine in your application or in response to an office action. Scott: If I may add, Richard, in the search, number 2, the search part, most of the time you’re going to hire a third-party search firm to do the searching for you. Make sure that they are also searching the English translation and not just the foreign word. If they’re not, call them up and tell them to rerun the search. Also, keep in mind that the doctrine doesn’t always work against the applicant. In some cases, it’s evoked to support refusal, but in others, it might help argue against confusion if translation is unlikely or if it’s a very obscure language, like Latin. All right, so before we wrap this up, it’s worth noting that, as I said, the doctrine doesn’t in every case. Courts and examiners will not apply the doctrine if the foreign term is rare or obscure, if the term has no clear English translation, or if the term would not be translated by the relevant consumer because they treat it as a brand name and not a literal word. Richard: Also, the doctrine is more likely to apply when the language is widely spoken by a significant portion of US consumers. For example, Spanish language marks face closer scrutiny because of the large Spanish-speaking population in the United States. Scott: The doctrine of foreign equivalence may sound like a niche rule, but it has major implications for brand strategy. If you’re working with foreign language names, whether it’s in the entertainment industry, fashion, food, beverages, or tech, understand this doctrine can help you avoid costly setbacks and strengthen your trademark rights from the start. Thanks again to my co-host, Richard Buckley. Richard, always great to have your insights here. Welcome back anytime. Richard: Thank you, Scott. I look forward to the next refresher. Scott: Thank you to our listeners or viewers for joining us on the briefing today. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share it with your friends and colleagues. We’d love to hear from you. If you have any suggestions, leave us a comment or review, and let us know what topics you’d like us to cover in future episodes. I’m Scott Hervey. I’ll see you next time on the Briefing.

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.

Who owns the rights when you co-create something? It’s not always as simple as you think. On this episode of The Briefing, Scott Hervey and Richard Buckley dig into: ✔️ Joint authorship ✔️ Work-for-hire rules ✔️ Why every collaboration needs paperwork   Avoid disputes before they derail your project. Watch this episode on YouTube. Show Notes: Scott: In a film, a television show, and music— creative projects are almost always collaborative. So, who owns what? And how do you avoid a fight over rights down the line? I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by our partner, Richard Buckley. We are going to talk about copyright ownership in collaborative works and how to avoid using Richard’s services as a litigator on today’s installment of The Briefing. Richard, welcome back to our third installment of, we called it last In the last episode, we called it Refreshers. I think I said I like to call them refreshing. These are our refresher episodes where we’re going to cover basic issues, refresh our audience on some basic issues. Today we’re covering copyright basics, collaborative works, and how to avoid the unfortunate and often painful task of hiring litigator like yourself to deal with disputes. All right, let’s start at the beginning. Copyright basics. A copyright protects original works of authorship that are fixed in a tangible medium. So think, scripts, songs, films, choreography, artwork, photographs, lots more. Ownership automatically vests in the creator unless there is a written agreement stating otherwise. Richard: Scott, this is certainly your world, but in entertainment, collaboration is constant. But how the law treats collaborators depends on how the project is structured. In a joint work, two or more people intend to merge their contributions into a single piece. Think of songwriting duos or co-writers film. Scott: It’s important to note that in a joint work like that, each co-author owns an undivided interest in the whole work. That means each individual can independently exploit that work, license that work, distribute that work without the other’s permission, even though they would have to share profits. You could see that can get a little bit confusing in the marketplace. Where you have a joint work, it’s It’s best to have a writing between the two and define who’s responsible for what. Contrast that with works made for hire. If a creator is your employee or if there is a signed agreement that states that the work is a work made for hire, then the employer or the commissioning party owns all of those rights. Richard: Problems arise when the roles are not clearly defined. Perhaps the composer thinks that he he or she owns the score that they wrote, the production company disagrees, or a freelance editor claims they were not a work for hire because no written agreement exists. These disputes can stop a project from being sold, licensed, or even released. Without a clear chain of title, distributors often walk away. Scott: That’s very, very true. All right, let’s talk about some real-world scenarios. Let’s take an independent film. You might have, and you will have, a director, a writer, a composer, a cinematographer, a graphic designer, or a VFX company that creates visual effects or the title cards. You have a bunch of actors, lots of people that contribute to the creation of an independent film. Richard: Right. And unless all of these contributions are either made by employees or are under a written agreement with either an assignment or a work made for higher provision. You could have multiple rights holders with the power to block distribution or demand royalties later. Scott: That’s right. And that’s not just film where that can happen. In music, co-writers need to agree on splits and ownership early. Same thing with a music producer. In the influence or creator economy space, creator content, video editors or collaborators may claim rights if terms are not clearly spelled out. All right, so let’s talk about some best practices. Here are some takeaways. Always have written agreements. Use work for higher language in all of your agreements, I say, and also have assignment language. For joint works, if you intend to hold the copyright jointly between two authors, clarify, split, and make sure it’s really clear that the agreement is really clear on who has the authority to do what with the work. Also, don’t assume that just paying someone automatically gives you copyright ownership. It does not. While it may give you the right to be deliverable or the end product, it does not vest you with the rights that are vested in a copyright owner. You might find that all you own is the copy what was delivered to you, but all the underlying rights are not yours. Richard: All great advice. I’d add one thing. If you’re hiring freelancers, make sure that your agreement covers intellectual property, even if you’re just collaborating casually. Scott: So 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.

From podcast names to iconic sounds, trademarks shape the entertainment world. In this episode of The Briefing, Scott Hervey and Richard Buckley break down what trademarks are, how to get one, and why creators must protect their brand. A must-listen for anyone building a name in entertainment. Watch this episode on YouTube. Scott: From movie titles to podcast logos, trademarks are everywhere in the entertainment industry. But how do you get one and what does it actually protect? I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Richard Buckley. We are going to talk about the fundamentals of trademark law and why it matters in the entertainment industry on today’s installment of The Briefing. Richard, welcome back. This is our second installment of our, I guess we’ll call it our Basic Series. It’s not basic, but it is a series on basic issues. Richard: It’s a great refresher. Scott: It is. The Refresher Series. I like that. The Refreshing Series. All right. So let’s jump into this here. So let’s start with the definition. What is a trademark? So A trademark is any word, phrase, symbol, or design. It actually even can be a color, and it can also be a noise that identifies and distinguishes the source of goods or services. So think names like Marvel, Pixar, Netflix, or even think the distinctive chime sound from NBC. And let’s not forget the color blue. That is the color of the Tiffany box, right? That’s also a trademark. Richard: So trademarks are fundamentally about branding. You’re telling consumers where a product or service comes from and preventing confusion in the marketplace. Right. Scott: So in entertainment, a trademark covers more than you might think. Show titles, well, series titles, production companies, logos, podcast names, podcast series names, even character names in film franchises, they can also be trademarked. If they function as brand identifiers. Richard: Take, for example, Star Wars. That’s a trademark. So is The Tonight Show. If you’re launching a podcast or a production company, you want to consider protecting your brand as well. Scott: Let’s talk about what goes into obtaining a trademark. Some people are surprised to learn that you really don’t need to register a trademark to have rights in it. Just by using a mark in commerce, you can establish what’s called Common Law Trademark Rights. Richard: But registration with the US Patent and Trademark Office gives you several benefits: nationwide protection, presumed ownership, the ability to use that cool symbol, the circle with the R in it, trademark symbol. Also, you have a clearer path to enforcement. Scott: Yeah. Also, I might add a federal trademark registration is required in order to protect your brand outside of the United States. It is what’s required. Often, also, a federal trademark registration is required if you are dealing with taking down counterfeit merchandise off of B2C sites like Amazon or Etsy or Redbubble. All right, let’s talk about what goes into choosing a trademark and how to avoid choosing a wrong one. One of the biggest mistakes I see is creators falling in love with the name before clearing it. Clearence is about searching to ensure that no one else is already using a confusingly similar mark in your space, your industry, on your same or similar goods or related goods or services. Richard: It’s important to note that a strong trademark is distinctive. It’s not generic or descriptive. The more unique your name or logo is, the easier it is to protect it. Scott: That’s right. All right. So once you have a strong trademark, let’s talk about enforcing your rights and dealing with infringement. So trademark infringement is all about likelihood of confusion. What does that mean? Courts will look at whether consumers are likely to believe your product or service comes from or is affiliated with somebody else. Richard: We’ve seen high-profile disputes like the World wrestling Federation versus the World Wildlife Fund. That’s where the wrestling company, WWF, had to rebrand to WWE, or the Comicon lawsuits between San Diego and Salt Lake over who owns the term. Scott: Ryan, if you own a mark, you have to police it. That means monitoring for infringing uses, and when necessary, sending the cease and desist letters or taking legal action. And I always counsel my clients, don’t just think that just sending a cease and desist letter is the end of it, because if the other side doesn’t stop, well, you’re faced with the choice of really not doing anything and you’re having your trademark rights erode or spending the money to enforce your rights. Richard: Right. If you just send a letter and don’t follow up on it to put any teeth of enforcement behind it, then you can get a reputation for just being full of hot air. Scott: Right. Then no one will pay attention to your cease and desist letters, that’s for No. All right, so let’s talk about some practical takeaways. Here’s what creators should keep in mind. You should always choose a name that’s distinctive and not already in use. Clear the name through trademark searches. You should hire a lawyer to do that. Don’t think you can do it yourself because you really can’t. Consider registering your mark federally. Monitor the marketplace and enforce your rights when needed. Richard: I think that’s great advice. Scott: So thanks again to my co-host, Richard. Richard, always great to have your insights. 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 Herbie. I’ll see you next time on The Briefing.

Creators, beware: just because it’s online doesn’t mean it’s fair game. In this episode of The Briefing, Scott Hervey and Richard Buckley break down one of the most misunderstood areas of copyright law—fair use. In this episode, they cover: What makes a use “transformative”? Why credit alone doesn’t protect you How recent court rulings (Warhol v. Goldsmith) are changing the game Tips to stay on the right side of the law Watch this episode on YouTube or listen to this podcast episode here.

A recent court ruling favored Meta against authors claiming misuse of their works for AI training. The discussion highlights crucial aspects of the fair use doctrine and its implications for future copyright litigation. Key factors include market harm and strategic adaptations needed by AI developers to avoid legal pitfalls. The podcast also examines past cases to forecast how artists can better prepare for potential disputes. It’s a revealing look into the evolving intersection of AI technologies and copyright law.

Tara Sattler, a Partner at Weintraub Tobin and an expert in intellectual property law, joins Scott Hervey to unpack a groundbreaking federal ruling regarding AI and copyright. They discuss how training AI like Claude on copyrighted materials can be considered fair use if transformative, but retaining pirated books crosses an ethical line. The conversation highlights the delicate balance AI developers must navigate between innovation and copyright compliance as the legal landscape continues to evolve.

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. And if you get sued, utilize the discovery process to try to uncover whether or not the plaintiff should have discovered the infringement earlier. Archive your post, keep metadata, track when licenses were obtained or expired. You may need to show that any alleged infringement was public and was very discoverable for years. Tara: Yeah, and in litigation, challenge the discovery roll head-on. In circuits that haven’t explicitly adopted it, a strong motion to dismiss may succeed, especially if the plaintiff had access to the content long ago. Scott: In settlement negotiations, highlight the unfairness of retroactive claims. Judges are increasingly aware of copyright trolls. We see that all the time in these cases that we cover. And some are very skeptical of late-breaking claims for ancient posts. Well, I think that’s it for this episode of The Briefing. I think I’ve made enough fun of Neely. Thanks, Tara, for joining me today. And thank you, the listener, for listening to this episode. We hope you enjoyed it. 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.