Can an influencer sue another for having a similar aesthetic? Scott Hervey and Jessica Marlow dive into a Texas case that could reshape creator marketing on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: Can a natural beige and cream aesthetic be protected? There’s a case pending in Texas, a lawsuit brought by one social media influencer against another social media influencer in which the plaintiff claims that the defendant copied her look. Can you protect a look? I don’t think so. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. We’re going to discuss the case of Sydney Nicole versus Alyssa Shell and its potential implications on the creator marketing industry on this installment of The Briefing. Welcome back, Jessica. It’s been a while. Jessica: Well, thank you for having me. I’m very interested in this case and looking forward to talking it through. Scott: Yeah, this one is just right up your alley for sure. Can you give us some background on the case? Jessica: Absolutely. This case involves two influencers who both operate in the same niche, promoting Amazon products. Sydney Nicole Gifford, the plaintiff, filed a lawsuit against Alyssa Shell and her company, alleging that Shell copied Gifford’s entire online persona, including her Instagram and TikTok posts, Amazon storefront layout, and even the designs of apparel Gifford created through Amazon. Gifford claimed that Shell replicated her esthetic, described in the lawsuit as a neutral beige and cream brand identity to mislead followers and increase her own earnings from sales commissions. Scott: So Gifford’s complaint included a wide range of claims, totaling eight. Copyright infringement, vicarious copyright infringement, trade dress infringement, misappropriation of likeness under Texas law, tortuous interference, unfair trade practices, and unfair competition, unjust enrichment, and violations of the Digital Millennium Copyright Act or DMCA. Shale moved to dismiss the complaint or parts of the complaint, arguing essentially that she has not broken any laws by making social media posts like Gifford’s. In ruling on Shale’s motion to dismiss, the magistrate judge noted that this appears to be the first time a court has looked at whether one influencer can sue another for copyright infringement and other claims based on the similarities in their social media posts promoting the same products. Jessica: Of the six claims, the court dismissed three: tortuous interference, unfair competition, and unjust enrichment. Let’s talk about the claims that the court didn’t dismiss. The first is claims for vicarious copyright infringement. Scott: And we should be clear, the reason why the court didn’t address the copyright infringement and trade dress infringement claims is because Shell did not move to dismiss those. So to establish vicarious copyright infringement, a Plaintiff Must Plead, Direct Infringement by a third party, the defendant’s right and ability to supervise the infringing conduct, and the defendant’s direct financial interest in the infringing activity. The last element that Shell had a direct financial interest in the infringing activity would easily be established if Gifford could prove the first two elements. That’s what both the court and Shell focused on. As to the first element, Shell argued that Gifford failed to allege any act of infringement by a third party since Gifford accuses both Shell and her entity of direct infringement. Gifford clarified that the vicarious infringement claim was not an attempt to hold Shell liable for the direct infringement committed by Shell’s company and vice versa. Rather, the claim was an attempt to hold both of them liable for the vicarious copyright infringement of Shell ‘s followers. Jessica: And the court was satisfied with this allegation. Scott: That’s right. The court, or the magistrate judge in our case, determined that Gifford successfully pleaded direct infringement by third parties, the followers, by alleging that these third-party, Shell ‘s followers, accessed, downloaded, interacted with, and/or viewed the allegedly infringing content, which was Shell ‘s posts. Jessica: And next, the court addressed the element of a defendant’s right inability to supervise. Shell argued that while she may control her own social media platform, she does not have control over the viewers and followers. Scott: In responding to that, the court pointed out that while it does not appear that any The E. Court has addressed whether a social media user has the right and ability to supervise their viewers or followers, other courts have found that the ability to block infringers’ access to a platform to be sufficient to establish the right and ability to supervise. In this case, Gifford alleged that Shell controlled what content was posted and which users could follow Shell’s various social media accounts. The court reasoned that similar to a case where a defendant could block access to an online bulletin board preventing infringement, Shell could police her accounts to control third-party access to allegedly infringing content. In other words, Shell could control which of her followers could access the content that she was posting, which was allegedly infringing Gifford’s copyright. Jessica: Interesting. The court determined that construing the facts in the light most favorable to Gifford, as is required when evaluating a motion to dismiss, she sufficiently pleaded Shell’s right inability to control the alleged third-party infringement by exercising control over the allegedly infringing content on her platforms and the third party’s ability to access that content. Scott: Yeah. I mean, to me, I think it’s circular. But okay, let’s get on to the next one. The next claim that was not dismissed was for a violation of the copyright management information provisions of the DMCA. Now, to properly state a claim, Gifford had to allege that the copyright management information or CMI, existed in connection with with the copyrighted work, that Shell distributed copies of the copyrighted work, and that Shell knew that the CMI was removed or altered, and that Shell l knew this would lead to infringement. Jessica: Giffred alleged that Shell violated the DMCA by intentionally creating posts indistinguishable from Giffred’s post without reference to Giffred’s name or username. With regard to photos, these types of claims are normally brought when a defendant is either displaying or distributing of the plaintiff’s photos without any copyright information that the plaintiff affixed to the original work. Here, the posts Shell had posted were not Gifford’s posts. They were Shell’s own posts. Scott: Right. And Shell brought this up. She said that Gifford could not bring a claim of the DMCA where there is no copy and paste of identical images with copyright croppings. However, the magistrate The judge found that courts in this particular circuit have found that the DMCA may properly apply even when the allegedly infringing work is not identical to the original. Jessica: The case the magistrate judge sites involved the use of plaintiff’s exact training material while making some changes to colors of graphs and chart sizes. I don’t think that’s really an analogous case here. Scott: Yeah, I agree. I don’t think it was an analogous case either. In that case, that specific case, the defendant distributed basically the exact same work, but just made some changes, as you said, to the colors of the graphs and the chart sizes. Now, granted, I haven’t surveyed all of the CMI cases. However, it does seem that this portion of the DMCA is focused on the plaintiff’s actual work, the original copyrighted work. However, the court found that although Shell’s posts were not identical to Gifford’s, they still used Gifford’s copyrighted material in her allegedly infringing post, the esthetic, without including Gifford’s name or username, which constitutes CMI. Jessica: So I think there are a few interesting takeaways from the court’s ruling on that specific claim. Scott: I agree. I think there’s two takeaway points here. The first is that social media usernames can constitute CMI. And the second, at least with this magistrate, is that a plaintiff can bring a CMI claim where the infringing work is clearly not the plaintiff’s work. I’d be curious to see how other circuits addressed a claim like this. Jessica: The last claim that the court allowed to proceed was misappropriation of likeness under Texas law. This statute requires the following elements, that the defendant use a plaintiff’s name or likeness for its value rather than incidentally or for newsworthy purposes, that the plaintiff can be identified from the publication, and lastly, that the defendant games some advantage or benefit from using the plaintiff’s name or likeness. Scott: So let’s break down the first two elements since the last one would be easily established under the circumstances if the first two are satisfied. So with regard to the first element, the appropriation of name or likeness for value, Shell argued that Gifford failed to allege that Shell used Gifford’s actual image, name, or voice because it was photos of Shell, not of Gifford. The court found that Gifford satisfied this element by alleging that Shell created a, quote, virtually indistinguishable replica, close quote, of Gifford’s likeness by imitating her outfits, poses, hairstyle, makeup, and voice. This imitation, the court noted, could be seen as appropriating, quote, an aspect of that person’s persona in a manner that symbolizes or identifies the person, close quote. Jessica: As for the second element, Shell argued that Gifford’s likeness was not identifiable in her post, which makes sense because the posts were actually images of Shell, not Gifford. However, the court stated that this was a factual issue that could not be resolved at the motion to dismiss stage. Scott: Let’s quickly discuss us two of the claims that the court actually dismissed, the unfair competition claim and the unjust enrichment claim. The court dismissed both of these claims because they were preempted by federal copyright law. Both claims were based on Shell’s publishing and promoting infringing works, including product lists similar to compilations of facts or pictorial or graphic works protected under copyright law, and both claims lacked any unique element to distinguish it from claims under federal copyright law. Jessica: So the claims that go forward from here are claims for direct copyright infringement and trade dress infringement, since those claims were not the subject of Shell ‘s motion to dismiss. Also going forward are the claims for vicarious copyright infringement, the DMCA claim, and the misappropriation of likeness under Texas law. Yeah. Scott: And I will state that I was just reading this morning that she’ll… So this magistrate judge, this is recommendation, I guess, I’m not a litigator, but my understanding of how this works is this magistrate judge makes a recommendation to the district court, and the district court has basically can adopt the magistrate’s opinion or make changes to it, and she’ll file the motion objecting to the magistrate judge’s ruling and basically challenging the, I believe it is the vicarious liability in the DMCA portion of the Magistrate Judges’ opinion. And we’re going to talk about, I think, really what Shell ‘s lawyer should have done in a bit. But here we are with this case. So let’s now talk about what effect this case could actually have on the influence or marketing industry? Because we now have this case that says potentially that an aesthetic is protectable or that one One creator may sue another for violating a look. My understanding is there’s categories of types or looks in the creator marketing space, just like there’s categories of actors, and a casting director who’s casting a movie or a television show might be looking for a particular category or type, role type, when casting for that role, right? Jessica: Absolutely. Gifford and Shell have this, quote, Clean Girl look. It’s a fashion and beauty trend characterized by minimalist, effortless, polished look. You’re focusing on neutral colors and classic silhouettes, natural makeup. The person appears well-kept with a focus on dewy skin and slick hair, subtle accessories, essentially aiming for a refined yet casual appearance without looking overly done up. This is a very popular look among the creator marketing community, and Adopters of this look are some big names: Haley Bieber, Bella Hadid, Selena Gomez, Kim Kardashian. There are a lot of women and creators that fit this clean-girl vibe. Scott: There are a few ways that creators like Gifford and Shell make money. One is by being directly hired by a brand to promote a product or a service. The other is through affiliate marketing programs or platforms like LTK or Amazon’s Influencer program. Now, if you are a brand that fits into or is demographic, fits into the clean girl esthetic, it would be understandable and probably common practice for that brand to contract with multiple clean girl creators to create posts promoting the brand’s products. And because the look of those posts would be dictated by the brand’s creative brief, It wouldn’t really be unthinkable if each post was somewhat similar. With regard to the Amazon Influencer program, it’s my understanding that Amazon sends out lists of products that creators are encouraged to promote. I think it would be natural for two creators with a similar look to focus on the same products or same type of products that fit that look. Do you agree? Jessica: Absolutely. I mean, that’s why that creator was selected to partner with that brand and to create that content because of their esthetic and their take on the product and how they want to feature it. Scott: This is why I think this case is problematic. It seems to me that Guilford… No, Guilford, sorry. I think we’ve been mispronouncing her name the entire time. It’s Guilford. My bad. It seems to me that Guilford is trying to prevent Shell from posting content that reflects this clean girl esthetic. The clean girl esthetic, as you pointed out, is an esthetic which is defined in the dictionary as, a particular theory or conception of beauty or art, often emphasizing personal taste. From a practical standpoint, should Guilford have a monopoly on the ability to post content reflecting the clean girl aesthetic? Jessica: Absolutely not. Scott: I mean, what would happen if she was able to have this monopoly over the clean girl aesthetic? It could grind creator marketing and influencer marketing to a halt. Jessica: Yeah, Absolutely. If you’re starting to block out entire categories, vibes, esthetics, creative approaches, I mean, at what point does the whole creator influencer marketing world run into a road trip? Blog. Scott: Well, with regard to Guilford’s attempt to try to prevent Shell from posting content that reflects this clean girl aesthetic, copyright law agrees with you. Section 102(b) of the Copyright Act expressly excludes protection for any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied. This section codifies what’s known as the idea-expression dichotomy, and it’s also called the merger doctrine, which means that every idea, theory, and fact in a copyrighted work becomes available for public exploitation or is generally available for public exploitation. From the moment of publication, this strikes a balance in protecting the interest of the copyright clause with first amendment rights by permitting free communication of facts and unprotectible elements while still protecting an author’s means of expressing those facts. I think there’s an argument to be made here that Guilford is basing her claims on an unprotectible idea or concept, that she’s trying to protect the copying of something that isn’t protectable, trying to prevent Shell l from posting content that is Shell ‘s own expression of the clean girl esthetic, which itself is an unprotectible idea. Jessica: So Scott, Are you saying that Gifford would not, under any circumstances, be protected against Shell copying her posts? Scott: Well, if the idea was simply promoting Amazon products with a neutral beige and cream esthetic, that idea itself would not be protectable. However, if Shell copied specific original elements from Gifford’s post, like unique arrangements of products, particular phrases, or original photography, those elements could potentially be protected by copyright. Now, what I think is that the magistrate judge… First of all, I think that Shell’s lawyer should have moved to dismiss the copyright claim. And then I think that the magistrate judge, maybe on their own, or definitely the district court, should have dug into or should dig into the merger doctrine and separate out the unprotectable elements from the protectable elements and then analyze whether or not the content is substantially similar. This would have had a substantial impact on the court’s analysis, not only of the copyright claim, but also of the DMCA claim and the vicarious infringement claim. Jessica: And what about the Trade Dress infringement and misappropriation of likeness claims? Scott: So similar to copyright, Trade Dress protection does not extend the general ideas or concepts. So if Shell successfully argued that Guilford’s claimed trade dress, this neutral beige and cream esthetic, was either too broad or too generic to function as a source identifier, the court may have dismissed the a trade dress infringement claim. Now, the court allowed the misappropriation of likeness claimed to proceed, suggesting that imitating someone’s outfit, poses, hairstyles, makeup, and voice could constitute appropriation of their likeness. However, if Shell argued that the plaintiff was merely trying to protect this general style or persona rather than her specific identifiable likeness. And think about it. These were pictures of Shell. These were not pictures of Guilford. So Guilford’s actual likeness, and her obvious her voice wasn’t there, but her actual likeness were not reflected in those images. And I think a court may have viewed those claims differently. We talked a little bit, Jessica, about this case and if Guilford’s copyright and trade-risk claims are allowed to stand how this case could affect the creative marketing industry. But let’s assume even if these claims are dismissed, you still have this deterrent effect of an influencer bringing a lawsuit against another influencer merely because they share a similar esthetic. Jessica: I mean, there may be some other detailed elements that were not not visible to us yet or not clear to us yet. But to me, it seemed as if this was broadly based upon this shared vibe and look. How do you think this case Do you think this case may act as a deterrent in the way that other clean girl creators express their look? I do. I think this is a very challenging case if it does end up standing because every creator certainly has their own vision, their own style, their own tone, their voice, and how they create, produce, and ultimately upload their content. But if there’s a creator who does have this similar vibe or aesthetic, and they inadvertently have a similar style or tone, what are we talking about? Is there liability in that instance? At the very least, is a case going to be brought and these creators are going to be defend themselves over their vibe, over having similar types of content, promoting similar types of products? I think it walks us down the wrong road and could be really dangerous. Scott: Yeah. I mean, I think I tend to agree. I think that I hope that the district court, on its own accord, looks at the copyright infringement claims and makes a determination as to what aspects of of Guilford’s claims cover protectable or unprotectible elements and really, really parts what Guilford’s claims. And then I think we’ll be, we’ll have a clearer picture as to what she may or may have not infringed. But I I also think that it’s incumbent on the court to be clear here that an esthetic is not protectable. And to the extent that Guilford’s claims are based solely on this shared esthetic, then I think the court should dismiss the case in its entirety. Maybe the court might consider this to be one of those exceptional cases and allow Shell to recover her attorney’s fees. And that would maybe send a deterrent message to other creators. Don’t bring cases like this where you’re trying to protect an unprotectible esthetic. Jessica: I agree. I mean, an esthetic is not protectable under law, despite what we’ve discussed. Scott: All right, Jess, thanks for joining me today. Jessica: Thank you for having me. Scott: So that’s all for today’s episode of The Briefing. Thanks to Jessica for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.    

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

This Thanksgiving, we’re diving into the world of intellectual property and recipes. Can chefs own their culinary creations? Can a recipe be copyrighted? From Turducken trademarks to creative cookbooks, we’re discussing the legal side of your favorite holiday dishes. Tune in to The Briefing’s milestone 200th episode with Scott Hervey and Tara Sattler for all the tasty legal details. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: There are numerous ways to cook a turkey and thousands and thousands of recipes for turkey. Some are old fashioned like roasting with stuffing, some are newer like Tandoori Style, and some, well, I still just don’t get like the turducken. But who exactly owns all of these turkey recipes, not to mention all the recipes for stuffing and cranberry sauce. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin. And today I am joined by my partner, Tara Sattler. We’re going to talk about IP protection for recipes on this special Thanksgiving episode of the Briefing. Tara, welcome back to the Briefing. Happy Thanksgiving to you. Tara: Thanks, Scott. Thanks for having me. And this is an exciting topic to dig into. Scott: Yes, I see we both have our like, fall themed backgrounds up, despite the fact that it’s 71 degrees here today in Los Angeles. Tara: Well, not for much longer. Scott: Yeah. Well, so today we’re diving into the fascinating and often murky world of intellectual property protection for recipe recipes. So can a chef actually own their culinary creation? And what about their cookbooks? And what happens when recipes are copied and shared? Tara: All great questions. So let’s start with the basics. Protection of a recipe. So some famous chef creates a dish that is huge and a really big hit. But legally, how much protection does a recipe actually get? Scott: Well, that’s a great question. So U.S. copyright law protects any original work of authorship that’s fixed in a tangible medium of expression. So one would think that an original recipe that a chef creates and writes down and may include in the cookbook or online is protected by copyright. However, that is not necessarily the case. In the United States, recipes generally don’t receive strong intellectual property protection. Copyright law does not cover lists of ingredients or basic instructions on how to use setting ingredients. In 1996, the SEC, the Seventh Circuit case of Publications International Limited versus Meredith Corporation involved claims of copyright infringement of a number of recipes. And in that case, the court said that recipes that were involved in that case comprised merely of the list of required ingredients and the directions for combining those ingredients to achieve the final product. The recipes contained no expressive elaboration upon either the functional components or how to create the end result. And as a result, the court found the recipes to be not protectable. Now, this is as opposed to recipes that might spice up functional derivatives by weaving in creative narrative. Tara: But digging into what the court said, if a recipe included expressive elaboration, then that may be protectable. This probably explains why some cookbooks and food bloggers weave personal stories into Their recipes. Scott: That is true, and probably the case. But regardless how creatively a cookbook may lay out a recipe filled with stories from the chef’s childhood pictures, et cetera, the ingredients and the process for making the dish itself are not protectable. Tara: Okay, so this probably accounts for the thousands of Turducken recipes that we can find on the Internet. Scott: It probably does. But speaking of Turducken, let’s talk about what can be protected. And that’s a trademark. So, Tara, did you know that Turducken is a registered trademark? Tara: I did not know that. Scott: Yes, it is. So that mark was registered in 1986, and it covers the combination of turkey, duck, and chicken entree for consumption on or off the premises. And it was originally registered by Chef Paul Prudhomme and his his company entity. Now, I couldn’t find any evidence of the chef suing over the use of Turducken, but that trademark is still registered. It’s on the principal register. And it has prevented other potential registrants from registering similar trademarks covering similar food items. Tara: So if a chef comes up with a unique and distinctive name for a dish, that can be protected as a trademark. And the chef can, if he or she wants to prevent others from using that mark in a competitive manner. Scott: That’s true. Think of the Big Mac and how much strength that trademark has. However, if a trademark begins to be used by the public at large to describe the food product like Turducken, I think that mark runs the risk of becoming generic. Tara: But just because the chef owns a trademark doesn’t mean that he or she can stop others from making the dish. Trademarks are more about branding. A chef can trademark the name of a dish, like Traducan or Big Mac or the Bloomin Onion, as long as it’s distinctive and tied to their business. But trademarking won’t stop someone from recreating the dish and just using a different name. Scott: That’s right, Tara. Since we’re talking about what can be protected now, let’s talk about cookbooks. A cookbook can be protectable as a compilation if the selection, arrangement, and the coordination of the included recipes is creative. Also, everything other than the list of ingredients and the instructions on how to create the dish are protectable. So all the photographs are protectable under copyright law, as well as all of the other text content. Tara: So with the lack of protection around recipes themselves, it is a bit odd that chefs so readily share recipes. However, I can see that by doing so, it may raise the profile of. Scott: The chef that’s true. I mean, it’s also a great way to sell cookbooks. Right. And I know from my own experience, while I might go to a website and print out a specific recipe from a specific chef to try if it’s a chef that I know and if it’s a recipe I like, and even if it isn’t a chef that I know and it turns out to be a recipe that I love, I’m more likely to seek out more of those recipes from that chef and buy a cookbook or two from that chef. Tara: Yeah, I think that’s right. And I also like to buy cookbooks that have a particular theme, so from notable restaurants or acclaimed restaurants around Los Angeles. And that is all very chef-driven as well. Scott: Right. And I think, I don’t know, chefs have kind of become the new celebrity, so to speak. So you may buy a cookbook or two that actually might sit on your coffee table and you may open it maybe once or twice in the entire time that you own it, but you might not even use it for any of the recipes, lest you get the book itself messy. At least you would if you cook the way I cook with stuff all over the place. Tara: Yeah. Cookbooks as a form of art. Scott: Yeah. So I guess we can close out this Thanksgiving episode by being thankful that copyright law allows for the sharing of recipes, because where would we be if it didn’t? And that we’re lucky enough to have a culture where chefs share their recipes, including Paul Prudhomme’s famous Cajun recipe, a turducken, so we can try making them at home. So with that, Happy Thanksgiving, Tara. Tara: Happy Thanksgiving, Scott. And good luck with cooking your turducken. Scott: Well, yes, my I won’t be cooking at Turducken because, as you know, we’re pescatarian. How very California of us. So we’ll find some other thing to shove inside of a fish. So Happy Thanksgiving, everybody. Tara: Happy Thanksgiving. Scott: Well, that’s all for today’s Thanksgiving episode of the Briefing. Thanks to Tara for joining me today and thank you, the listener, for viewing or tuning in. We hope you found this episode informative and enjoyable, and if you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.

Discover the swirling chaos when docudramas collide with defamation claims. The discussion dives into the ongoing lawsuit by Fiona Harvey against Netflix over 'Baby Reindeer,' questioning the thin line between truth and fiction. Learn how anti-SLAPP laws play a critical role in these situations, and explore what makes a defamation lawsuit tick in California. The talk also highlights the tricky landscape of public versus private figures and the implications of portraying real-life events in a dramatized format.

The 90s hip-hop group 2 Live Crew won big in their copyright case against Lil’ Joe Records. Scott Hervey and Jamie Lincenberg break down termination rights, bankruptcy, and what it means for artists reclaiming their work on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: In mid-October, a Miami federal jury handed a win to Luther Luke Campbell and the heirs of Mark Ross and Christopher Wong Won of the 2 Live Crew in their long-running copyright reclamation lawsuit against Lil’ Joe Records. The Master Sound recordings were transferred in 1990 to Skywalker Records, the label that once released the iconic 2 Live Crew albums.   The court case had its twists and turns, including a ruling earlier this month that copyright termination rights survive bankruptcy. I’m Scott Hervey with the Entertainment and Media Group at Weintraub Tobin, and I’m joined today by Jamie Lincenberg, and we’re going to talk about this case on this installment of The Briefing. Jamie, welcome back to the briefing. It’s been a little while. Jamie: Yeah, thanks for having me. Scott: Jamie, before we get into this, I don’t know. I thought we’d chat about what’s on your desk. Is there anything interesting that you’re working on? Jamie: There’s a lot on my desk, always. But let’s see. Lately, I’ve been working on some production legal for a feature film that is going to start principal photography on Sunday. So, it’s been tying up all the loose ends, making sure that we have all of the financing in place, and getting ready to roll camera. Scott: It’s always busy right before the start of principal photography, for sure. Yeah. All right. Well, let’s get into this. Just some quick background. So, Skywalker Records was formed by Luther Luke Campbell, and it was the record label that owned the master recordings to all five. I didn’t know they had that many, but all five of the 2 Live Crew albums. Now, the name Campbell and Skywalker should ring a bell with those of you that follow copyright law, because Campbell was one of the name parties in a case that transformed copyright law, literally. Campbell versus A Cuff Rose, which introduced the concept of transformative use into the lexicon of copyright law and fair use. Skywalker later changed its name to Luke Records. Jamie: In 1995, Luke Records then filed for bankruptcy. Joseph Weinberger, a tax lawyer that served as Luke Records’ CFO and In-House Counsel, bought the rights to 2 Live Crew’s master recordings out of bankruptcy for $800,000, and he then formed his own label, Lil Joe Records, to distribute them. Scott: In 2020, Luke Campbell, Mark Ross, and the heirs of Chris Juan, served a notice of termination on Little Joe Records and others purporting to terminate the transfer of the rights to the various 2 Live Crew albums that were transferred to Skywalker Records via a 1987 recording agreement, and then the subsequent transfer from Skywalker/Luke records to Little Joe records pursuing to a bankruptcy court purchase. Jamie: Scott, as we know, Section 203 of the Copyright Act permits authors, or if the authors are not alive, their surviving spouses, spouses, children or grandchildren, or executors, administrators, personal representatives or trustees, to terminate grants of copyright assignments and licenses that were made on or after January first, 1978, when certain conditions have been met. Scott: On the effective date of termination, all rights in the work that were conveyed by the terminated grant revert to the author. Jamie: Copyright termination rights were created by Congress in the 1976 Copyright Act. They allow authors or their heirs to terminate or cancel a prior grant of copyright, even if they previously sold or licensed it. This gives them a chance to recapitulate capture control over their work after a set period. The idea behind this really is simple. The initial value of a work is often really hard to determine, and artists can therefore be at a disadvantage. These rights are considered inaliable, which means they really can’t be signed away or contracted out. Scott: So the 2 Live Crew argued that the Section 203 termination terminated the initial transfer from the band to Skywalker Records/Luke Records, and that the recapture effected a termination of Little Joe’s ownership of the master. Little Joe, who filed the lawsuit challenging the recapture, argued that, one, all five albums were created as a work for hire for Luke Records, and two, that Luke Records’ bankruptcy proceeding terminated the band’s recapture rights under Section 203. Jamie: The work for hire argument is a viable defense to a recapture claim. Scott: Yeah, that’s correct. Copyrighted works that are works made for hire or works for hire are specifically excluded from Section 203. But that argument from Little Joe Records didn’t fly. The jury ultimately found that the albums were not works for hire, but the bankruptcy argument was something new. Jamie: It is. So in addition to Luke Records’ bankruptcy filing, Campbell, individual individually filed for personal bankruptcy protection. As part of that reorg plan, all copyright rights to 2 Live Crew’s music and compositions were transferred to Little Joe, free and clear of any and all lean’s claims, encumbrances, charges, set offs, or recoupments of any kind. As part of the reorg plan, Luke Records and Campbell agreed to receive no royalties, whether as an artist, producer, writer, publisher, or in any other capacity on any of those masters or compositions. Scott: The reorganization plan did not mention future termination rights, and neither of the remaining members of the 2 Live Crew filed any claims in bankruptcy, asserting that they owned any rights or were entitled to any rights appurtenant to any of the 2 Live Crew copyrights that were transferred to Little Joe. However, subsequent to the bankruptcy filing, Ross filed for bankruptcy, and he settled a claim brought by Little Joe in the Bankrupt Matter, whereby Ross acknowledged that other than the writer’s performance rights, Ross had no rights, master or publishing rights, to any previous recording’s owned by Little Joe records. Jamie: Lil’ Joe also sued Wong Won. In settling that claim, Won agreed that Little Joe owns all right title and interests to all copyrights in the albums conveyed to Little Joe in the bankruptcy of Luke Records and Luther Campbell. So it seems that Lil Joe has tied up all ownership rights to the albums with all of the band members. Why then did the court find that the Campbell bankruptcy and the settlement agreements entered into by Ross and Juan did not prevent the band members from bringing a termination claim? Scott: Yeah, that’s an interesting question. So in bankruptcy, a debtor’s property is generally transferred into an estate that creditors can access. Little Joe argued that a copyright termination right could fall under, quote, property of the estate in bankruptcy, meaning that those rights could be used to satisfy creditors. But the question of whether a copyright termination right could constitute, quote, property of the estate, close quote, which typically includes most of the debtor’s legal and equitable interest at the time of filing hadn’t been decided before. So the big question was, whether copyright termination rights, being personal and inalienable, fit that definition? Jamie: In order to answer that question, the court had to look at the intent of Section 203. The Court said that Congress established termination rights specifically to protect artists, not to create assets for creditors. The House report that accompanied the 1976 Copyright Act made it clear termination rights are designed to protect authors from unremunerative deals due to unequal bargaining positions. So under federal law, these rights are more of a personal safeguard for the author rather than a traditional property interest. So the court finds that the termination rights aren’t property in the traditional sense because they’re personal to the author and generally non-transferable in bankruptcy. But what about the settlement agreements by Juan and Ross, which memorialized Lil Joe’s ownership of the copyright in the albums. Scott: Section 203 of the Copyright Act mentions that termination rights exist, notwithstanding handing any agreement to the contrary. In other words, even if an author signs something in bankruptcy court or a settlement agreement or other type of agreement waiving these rights, that waiver wouldn’t likely hold up. Jamie: So, Scott, is the takeaway here that termination rights are resilient against bankruptcy claims? Scott: To an extent. The court does leave open that a termination right can be relinquished during a bankruptcy. The court notes that there is no evidence in the record to support a finding that Campbell, Ross, or Juan relinquished their termination rights to the two Little Joe during the bankruptcies or as part of the settlement agreements. Neither the bankruptcy filings nor the settlement agreements mention a transfer of these termination rights. So there’s no indication that either Ross, Campbell, or used their termination rights as leverage during negotiation. And the court found that there’s no evidence that they were even aware of these termination rights during the bankruptcy proceeding and during the settlement proceeding. The court notes that even if a copyright termination right can be divested, it was not done properly here. So that leaves it open to the possibility that termination rights can be transferred if they are are specifically transferred and specifically mentioned and referenced in whatever document the parties are entering into to affect a transfer of those termination rights. Jamie: Right. This is really interesting, Scott. I’ve never really looked too far into the transfer of termination right, but I think this is definitely interesting and good to bring to everyone’s attention. Scott: Yeah, I Jamie. Thanks for joining me today. That’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today, and thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.  

In this discussion, Tara Sattler, a partner at Weintraub Tobin and an expert in intellectual property law, delves into the complexities of title clearance following the Jack Daniels Supreme Court ruling. She and Scott Hervey dissect how this case alters trademark use in media, particularly regarding creative projects inspired by dog toys. They also explore conflicts like the HomeVestors vs. Warner Brothers case, highlighting the new hurdles studios face in securing titles while navigating this evolving legal landscape.

Halloween is here, but beware! That killer costume might come with a lawsuit instead of candy. Scott Hervey and Tara Sattler discuss the legal threats associated with unlicensed costumes on this spooky episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: With Halloween just around the corner, we’re diving into a Spooktacular topic. This is the dark side of Halloween, the side where you get a lawsuit instead of a Kit Kat bar. I’m Scott Hervey from the Entertainment and Media Group at the Law Firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. Today, we’re talking about how the unlicensed use of famous movie characters for Halloween costumes could lead to a copyright and trademark lawsuit. On this installment, the spooky installment of The Briefing. Tara, thank you for joining me today. Oh, look, look, both of us have our Halloween-themed background here. How cute. Tara: Thanks for having me, Scott, and for sharing the background. This is definitely a timely topic. It’s not It’s not all bobbing for apples when it comes to infringement claims.\ Scott: No, it certainly is not bobbing for apples when it comes to infringement claims. Every Halloween, people dress up as characters from their favorite movies or their TV shows, whether it’s superheroes, villains, cartoon characters, you name it. Let’s talk about how costumes, as these characters, could potentially be problematic. Tara: Sure. The issue centers around intellectual property rights, both copyright and trademark. Movie studios and companies often hold copyrights over the characters and their distinctive designs, and they use trademarks to protect the names and logos associated with those characters. If you’re producing or selling costumes based on these characters without permission, you’re infringing on those rights. Scott: Yeah, that’s right. The way a court will determine whether a character from an artistic work, like a movie or a television show or a comic book or a book is deserving of its own copyright protection. This is protection separate and apart from the artistic work in which that character is brought to life is by applying the character delineation test. This test is a legal standard that’s used to determine whether a fictional character is sufficiently developed and distinctive enough to qualify for copyright protection. Over the years, courts have applied this test in a variety of cases involving iconic characters. This includes Godzilla, the Batmobile, James Bond, and Rocky Balboa. This means that if you take elements from these kinds of iconic characters, whether it’s their physical look, a vehicle, or even their specific costume, and start selling them as part of a Halloween costume set without a license, you could be infringing both copyright and trademark rights. Tara: Let’s talk about how this could apply to, let’s say, someone selling a Joker costume without DC comics permission. Scott: Sure. Yeah, absolutely. I mean, the Joker is a heavily protected character under both copyright and trademark law. Anyone selling costumes based on the Joker’s likeness without a proper license would face a copyright infringement lawsuit because that costume would be considered a derivative work derived from the Joker character. The court would apply the character delineation test, and they would certainly find that the Joker character is sufficiently developed and distinctive enough to qualify for its own copyright protection. So aside from the copyright issue, there’s also the trademark issue, and the same goes for the use of the trademarks like the Batman logo or the name Joker. The unlicensed use of these elements could also cause consumer confusion. People might think that the costumes are officially sanctioned by DC comics when they’re not. Tara: So if you’re selling or even just marketing Halloween costumes with logos or designs that are close If it comes enough to the original, a company could claim that you’re infringing their trademark and you might be on the hook for damages. Scott: That’s definitely something for people to think about before grabbing their favorite superhero costume. But time for a reality check. People who just want to dress up as their favorite characters for fun are really not going to be facing a lawsuit. Tara: I think you’re right. In all likelihood, probably not. For personal use, like wearing a costume to a Halloween party or around your neighborhood, you’re generally not not going to get sued. The issue really arises when someone starts selling or mass-producing unlicensed costumes. Personal use falls more within the realm of fair use, where there’s no commercial gain involved. But once he enters the picture, that’s when legal troubles can begin. Scott: No, that’s right, Tara. I agree with you 100%. So thanks for joining me today on this spooktacular episode of The Briefing, Tara. Happy Halloween. Tara: It was my pleasure. Thanks, Scott. Happy Halloween to you and everyone else. Scott: Well, that’s all for this spooky edition of The Briefing. Thanks to Tara Sattler for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic. Scott Hervey and James Kachmar discuss this case and how marks become generic on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: Since as early as 1967, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero’, covering a variety of goods, including comic books, action figures, and T-shirts. Most people, myself included, didn’t know that Marvel and DC owned this trademark, and their reaction to this tends to be the same. How could Marvel and DC own a trademark for Superhero? Well, that reaction is essentially the reason why the Trademark Trial and Appeal Board granted a petition to cancel that trademark because that mark became generic. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor James Kachmar. We’re going to talk about this case, what are generic trademarks, and what happens when a trademark becomes generic on today’s installment of The Briefing? James, welcome back to the briefing. It’s good to have you back to talk about generic trademarks. James: Thanks for having me, Scott. I think this is going to be a really interesting discussion, especially since it’s involving heroes. Scott: No, I agree. Let’s get some background on this super dispute. There are a few interesting factual tidbits that I haven’t seen out there in this widely reported case. The case is Super Babies limited versus Marvel Characters, Inc. Super Babies Limited is a comic book publisher, and they petitioned the Trademark Trial and Appeal Board to cancel the trademark superhero. But this isn’t the first time that Super Babies and Marvel or DC have squared off. It seems that since 2021, DC comics had filed numerous petitions with the Trademark Trial and Appeal Board to oppose the registration of the Trademark Super Babies on the grounds that the mark conflicted with with various other DC trademarks, including Superboy, Superman, Supergirl, Super Friends, but interestingly, not superhero. It appears that Super Babies found some kryptonite and decided to go after the SuperHero and Superheroes trademark registrations. In all seriousness, Super Babies legitimately argued that it’s next to impossible to publish comic books about heroes without Baby being able to refer to as Superheros. James: Right, Scott. The key argument in the Super babies petition was that the superhero marks have become generic. The petition alleges that superhero is a generic term used in connection with stories about heroes, their characters and products, and that the term refers to a stock character archetype, Superheros, in a genre of stories that features the archetype and its associated tropes, i. E. The Superheros genre. Super Babies argues that consumers do not associate Superheros with any single brand, company, or character. Instead, consumers understand that the term superheroes refers to a broad category of stories and characters tied together by common themes and conventions, as well as to products that relate to or feature superhero stories or characters. Super Babies introduced evidence showing that superhero, as understood by consumers, refers to a general category of stories and characters rather than a particular or specific source of goods. Scott: Yeah, it was a very well-drafted and interesting petition to read. As a matter of fact, creative, I would say, too, because it included excerpts to certain DC comic issues that that help them make their point. But let’s take a step back and let’s talk about what a generic trademark is. In US trademark law, a generic mark refers to a term that the public primarily understands as the common name for a product or service rather than a name that identifies its source. For example, if I call my brand Apple and I sell apples, well, that’s a generic use. The term is already widely associated with a specific type of product, in that case, the fruit apple. I can’t claim exclusive rights to the trademark apple for apples as a trademark. The USP EBTL will refuse to register a generic trademark on both the principle and the supplemental register. James: Right, Scott. A mark can’t be protected under trademark law if it’s considered generic because generic terms can’t function as trademarks because they don’t distinguish the products or services of one company from another. They simply describe the product itself. On the other hand, if you were to, instead of selling Apple, sold computers or phones and called them Apple, that could be subject to trademark protection because the term is no longer generic. It doesn’t necessarily describe the product you’re selling. Scott: Right. Agreed. That mark would be probably considered a distinctive mark and highly protectable. So let’s talk about what happens if a trademark becomes generic over time because a trademark can start off strong. You and I were talking before we started taping about this superhero’s trademark. And way back in 1967, it probably wasn’t widely used. And at that point in time, maybe it was distinctive of the DC comic books and the products and services that they filed the trademarks for. A trademark that was once strong can lose its protection. This is called genericide. James, you wrote an article about this back in 2017 when you reported on Google successfully fending off a genericide attack against its trademark, Google. James: That’s right. Genericide is one of the biggest risks for a well-known brand. When the public starts using a trademark as the generic name for a product category or service, the brand risks losing its trademark protection. Classic examples of this include the words like aspirin, escalator, or thermos. These started out as trademarks but became generic over time because the public used them to describe the entire category of products rather than a specific company’s product. Could you imagine if Google loses its trademark rights as to its mark Google due to the prolific use of googling as a verb to describe the act of searching the internet? Scott: Yeah, that would be horrific for Google. I guess we can add now superhero to the list of Mark that have become generic over time. Given that the risk of having a trademark become generic is the loss of its trademark rights, the loss of the exclusive right to use the mark in connection with goods or services, and the ability for competitors to use that mark in connection with their goods as describing the function of their goods, it’s a big deal. Once a trademark is deemed generic, it’s no longer enforceable. As I said, competitors can start using that same term to describe their products, and that can dilute a brand’s identity and value. It can be incredibly damaging, especially for companies that have invested millions of dollars in building their brand. James: Yes. Imagine spending years and millions of dollars building brand recognition, only to lose it because your trademark has become so ubiquitous that it becomes generic. Let’s talk about steps that companies can take to prevent this from happening, Scott. Scott: Sure. That’s a good idea. There’s a few key strategies companies can implement to prevent genericide. First, they need to consistently remind the public that their trademark is a brand name and not a product category or a verb. This can be done through proper use in marketing and advertising. For example, you’ll often hear companies say things like, Use Kleenex brand tissues instead of just Kleenex. James: Right. Second, companies should actively monitor how their trademark is being used by consumers, the media, and even competitors. If they notice misuse of their trademarks, like people using the brand name generically, they need to take some type of action, sometimes even just issuing a public correction. Scott: Another important tactic is using trademarks with a generic descriptor. Instead of saying, as I said, use Kleenex alone, you would say, Use Kleenex Tissues. This helps separate the brand name from the product category. James: Right. Companies can also educate consumers through marketing campaigns, in some cases, seeking court orders to enforce the proper use of their trademarks. In extreme cases, some companies even engage in litigation to prevent competitors from using their brand name in a generic sense. It takes a lot of effort to safeguard a trademark, but the downside of losing trademark rights would seem to justify that effort in most cases, especially the amount of money and time companies spend in building their brands. Scott: Yeah, I agree with you on that, James. One last point, in addition to educating the general public, it’s also important to educate your internal team, your marketing department, your customer service reps, and even the legal team. They need to be vigilant about proper trademark usage. James: Totally agree, Scott. Scott: James, thanks for joining me to talk about this super important trademark case and shedding light on the risks of generoside and how to prevent it. I’m sure our listeners will appreciate these insights. James: Thanks for having me, Scott. Scott: That’s all for today’s episode of The Briefing. Thanks to James Kachmar for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.

In this discussion, James Kachmar, an intellectual property law expert, dives into California's new AI legislation aimed at protecting individuals' voices and likenesses, especially those of deceased celebrities. He and Scott Hervey explore Assembly Bill 1836, which enhances legal safeguards against unauthorized digital replicas. This conversation reveals the complexities of First Amendment rights, jurisdiction challenges, and the potential confusion arising from overlapping laws as AI technology evolves. Expect engaging insights on this pressing issue!

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