The Briefing by Weintraub Tobin

What happens when a business built on a celebrity’s name no longer controls the name itself? In this episode of The Briefing, attorneys Scott Hervey and Jessica Marlow break down the Nicklaus Companies v. GBI decision and what it means for venture funds, PE firms, and brand-driven businesses. They discuss how Jack Nicklaus was able to legally walk away from the company bearing his name—and start competing—because the company failed to secure critical rights to his name, image, and likeness. Scott and Jessica examine the key legal documents that every investor should review when financing a business tied to personal branding, and the structures that can help prevent this kind of brand exodus. Whether you’re a creator behind a growing company, venture financing an influencer, a sports icon, or a lifestyle mogul, this is a must-listen for anyone putting money into a business that leverages a personal brand. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: It’s not unusual for celebrities and influencers to build an empire around their personal brand. But what happens when they sell a piece of that empire and later want back in the game? That’s the question at the heart of a recent New York Supreme Court decision in Nicholas Companies versus GBI Investors and Jack Nicklaus. The court had to determine who owned the commercial rights to the name and image of one of golf’s most iconic figures, and whether he, Jack Nicholas, could compete against the very company he helped create. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Marlow. We are going to talk about branding rights, post-sale competition, and the high-stakes world of influencer-built businesses on today’s installment of The Briefing. Jessica, welcome back to The Briefing. Jessica: Thank you. Thank you for having me. Excited to talk about this very timely topic. Scott: Yeah, I think it is really, really timely with the continued evolution of the creator economy and some of their businesses just getting bigger and bigger and huge financing transactions for a number of them. I think this is a timely lesson, both for influencers and for those that are buying or financing those businesses. Jessica: Absolutely. I don’t I don’t think there’s any slow in this business, so better for everyone to get on the same page and avoid some of the pitfalls that we’re about to talk about. Scott: Right. Well, let’s dive right into it. So in 2007, Jack Nicklaus and GBI Investors, it was a company owned and controlled by Jack Nicklaus, entered into an agreement with Nicklaus Companies, LLC. This was a company that was formed by a real estate magnate, Howard Milstein. And Nicklaus Companies, for $145 million, purchased certain assets of GBI, which included a substantial portfolio of trademarks and applications, wealth registrations and applications related to Jack Nicklaus’s name and his signature and the Golden Bear nickname in the United States and various other countries around the world, more than 600 in the US and 50 other countries. It also included in the purchase was the exclusive right to the golf course design service business that was rendered by GBI and marketing, promotional, and branding businesses of GBI, which included the right to use Jack Nicklaus’s name, image, and likeness. The complaint alleges that Nicklaus Companies became the sole owner of all of the rights to use all of the intellectual property related to Jack Nicklaus. GBI and Mr. Nicklaus became members the company, and Mr. Nicklaus became a manager. Jessica: Fast forward to 2022, Jack Nicklaus retires from his day-to-day involvement with Nicklaus Companies, but then started to pursue deals for the use of his name, likeness, and trademarks, including personal endorsements outside of the Nicklaus Companies, which included Jack Nicklaus being paid to promote a European tour golf tournament and the tournament’s right to use certain Nicklaus IP. Nicholas Companies sued him, alleging breach of contract, among other claims, and seeks to stop him from competing and using his name. Scott: Early in the litigation, Nicklaus Companies filed for a temporary restraining order and argued that the 2007 transaction, the $145 million transaction, resulted in the purchase of all golf course design services branded and identified under Nicklaus, Jack Nicklaus, and Jack Nicklaus’s signature brands, the various marketing, promotional, and branding activities involving the use and licensing of Jack Nicklaus’s persona in endorsements, other commercial rights, publicity rights, and intellectual property rights related to his identity and history as one of the most recognizable public figures in golf. So essentially, they claimed that they owned absolutely everything. Jessica: And in opposition to the temporary restraining order, Jack Nicklaus argued that he is free to conduct his own business because the non-compete agreement he signed in connection with the 2007 transaction expired when he left Nicklaus Companies in 2017. Nicklaus argued that it was GBI that sold the assets and businesses to the plaintiffs, not him personally, and that he was only bound by the non-compete. Scott: Yeah, that’s right. And after a three-day hearing, the New York Supreme Court issued a preliminary injunction prohibiting Nicklaus from using his name and likeness from competing with the Nicklaus companies. Although Jack Nicholas can compete with the Nicklaus companies for golf course design jobs, he can’t use his name and likeness in doing so. And that’s what the court said. While the non-compete has expired, the ownership of the Jack Nicklaus intellectual property is with the Nicklaus Companies, and that isn’t something that expires, the judge said in ruling on the TRO. The exploitive value of his name as an endorser of products and the like is where the line is drawn, so said the court. Jessica: But the court also made clear that the conclusions underlying the court granting a plaintiff’s TRO were preliminary and could be revisited based on additional evidence available, whether after the conclusion of the discovery on summary judgment or at trial. Scott: And that brings us here. The court’s ruling on the party’s cross motion for summary judgment. The court examined the agreements from the 2007 transaction and analyzed whether GBI, as a matter of law, had the authority to convey to Nicklaus Company the rights to Jack Nicklaus ‘s name, image, and likeness, being exclusive to the Nicklaus Companies, even against Jack Nicklaus himself. Based on the evidentiary record, the court found that Nicklaus Company had not demonstrated that GBI had that authority. Jessica: And specifically, the court noted that the purchase and sale agreement was between Nicklaus Companies and GBI and not Jack Nicklaus himself. Therefore, any rights transfer were limited to what GBI legally possessed. The court concluded that Nicklaus Companies failed to demonstrate that GBI had the authority to grant exclusive rights to the Nicklaus’ name, image, and likeness that would bind him personally. Scott: Right. And as a result, the court granted Jack Nicklaus’ motion for summary judgment, effectively dismissing all of the claims brought by Nicklaus Companies. The decision allows for Jack Nicklaus to use his name, image, and likeness in his business ventures moving forward. Okay, this case does provide some takeaways for influencers and branding transactions, wouldn’t you say? Jessica: Absolutely. There’s a lot to pull from this ruling and apply going forward. And from the perspective of Jack Nicklaus, the individual, the court’s decision reflects a successful preservation of his right to control and exploit his own name, image, and likeness, despite the existence of a seemingly expansive intellectual property sale involving his personal brand. Scott: Yeah, expensive is one way to say $145 million. Jessica: $145. Yeah. Scott: Okay, so this approach included both strategic strengths and legal risks on Nicklaus aside. So let’s break those down. Let’s first start with what Jack did write. Jessica: Sure. He did not personally to find a way his name, image, and likeness rights. So despite the 2007 transaction, Nicklaus never executed a personal assignment transferring his name, image, and likeness to the Nicklaus companies. This was critical. The court emphasized that only GBI was a party to the PSA, and individual rights of publicity must be conveyed personally and explicitly. As a result, he retained control of his personal brand because the contractual paper trail did not bind him individually. Scott: Right. He used a corporate vehicle, GBI, as the seller. So structuring the deal through his wholly owned entity gave him this layer of separation between himself and the assets that were sold. While GBI might have owned IP assets like trademark registrations and applications or licensing rights, it did not own his full personal publicity rights. This structure allowed him to sell assets but avoid personally limiting his future autonomy. A savvy move for someone with ongoing business ambitions. Jessica: Savvy indeed. He also allowed the non-compete to lapse and then waited to act. So rather than immediately competing or challenging Nicklaus Company’s use of the brand, he waited for the non-compete period to end before reentering the marketplace. This demonstrated respect for the terms of the original 2007 deal and helped bolster his position that he did not intend to abandon his name, image, and likeness rights permanently. Scott: Right. Okay. There were some risks to the strategy that he took. Let’s talk about what he did and the aspects of what he did that had significant potential risks. So first, he allowed for this ambiguity over the 2007 documents, what they really did or did not do, to persist for years. For over a decade, he operated under a structure that led Nicklaus companies to, some would say, reasonably believe that they had the exclusive rights to his brand and name, image, and likeness. While that ambiguity ultimately worked in his favor, it could have easily backfired had the court found implied consent or detrimental reliance. Jessica: Absolutely. The second part is Jack benefited from the company’s use of his name and goodwill. During the years that the Nicklaus Company operated using his name, image, and likeness, Nicklaus allowed this association without objection, potentially risking a waiver of the stop will argument. A more aggressive enforcement of boundaries earlier might have prevented the litigation altogether. Scott: Right. The reliance on GBI as a corporate proxy was clever, as we discussed previously, but it was fragile. Gbi’s transfer of assets was a legally thin premise for transferring broad name, image, and likeness rights. If a court had found that GBI effectively functioned as an alter ego or that Nicklaus implicitly ratified the transfer, personally, the outcome could have been different. Okay, so we talked about what he did right, we talked about what he did wrong or risky. Let’s talk about what he could have done differently. So So he could have clarified in writing that he was retaining his personal NIL rights. Even a simple reservation clause stating Jack Nicklaus retains the right to use his name, image, and likeness for personal and commercial purposes outside of this agreement after the non-compete period would have saved litigation costs and risk. But I dare say it probably would have lowered the purchase price. Jessica: I think so. He could have entered into a parallel licensing agreement instead of an implied assignment. So rather vaguely permitting the company to use Jack’s name, image, and likeness, he could have structured it as a time-limited license with defined termination and renewal rights, and this would have solidified that Jack remained the ultimate rights holder. Scott: Right. He could have also documented the expiration of his non-compete and his future plans. By communicating his intentions when the non-compete lapsed, he could have helped avoid claims of bad faith or surprise when he began to compete again. All these, though, I think, would definitely lead to a reduction in the purchase price. I think the fact that Nicklaus Companies believed that they were purchasing all these exclusive rights was really what resulted in such a large purchase price. I think otherwise, if they were just getting a license or if they knew that after a particular period of time, Jack Nicklaus would compete with Nicklaus Companies, I don’t know But there’s not much value then to the purchase, really. Jessica: Right. I have to imagine they believed 145 million was a complete and exclusive buyout. Scott: Right. No, I believe that. Okay, so this decision reveals several steps by Nicklaus companies in structuring the purchase and sale agreement and the broader transaction. Let’s talk about what went wrong and what they could have done differently to better protect their interest, particularly in acquiring and enforcing rights to Jack Nicklaus’ name, image, and likeness. Okay, so I think the first and most obvious mistake was that they contracted only with GBI and not with Jack Nicklaus personally. The purchase and sale agreement, the IP assignment agreement, all these related documents were executed between Nicklaus Companies and GBI, a corporate entity that was wholly owned by Jack Nicklaus, but Jack Nicklaus himself was not a party to the PSA. So let’s Let’s talk about why this matters. GBI cannot assign rights that it does not own. The court found that there was no evidence that GBI independently owned the rights to Jack Nicholas’s name, image, and likeness, including his personal rights of publicity or any enforceable trademark rights beyond those already in use or already registered or pending by GBI. I don’t know. I think I chalk this up to really bad due diligence, where a company is is based on an individual’s brand. Scott: You want to make sure that those assets sit within the company that you’re buying. Jessica: Well, next, there was a lack of a personal assignment of NAL rights from Jack Nicklaus. While Jack Nicklaus was involved in the transaction and held roles within the company, he never executed a personal assignment of his name, image, and likeness or signature as commercial property in a way that bound him. And why this matters? Rights of publicity and privacy are inherently personal. So if an individual doesn’t personally transfer those rights in writing, then any purported ownership by a third party is vulnerable to challenge. And that’s exactly what occurred here. Scott: There was a lot of ambiguity about exclusivity in the scope of IP rights in this transaction. And if you’re the buyer selling out $145 million, even if you’re selling out $50 million, ambiguity is not your friend. The PSA was vague. It seems like due diligence might have been not as due or diligent as it should have been. They really didn’t dig into the exclusivity and the scope of the IP rights being transferred. Even when branding rights were mentioned, the documentation failed to specify that Nicholas himself would be restricted from using his name, image, and like this in future business activities. So why does this matter? Well, without clear language about exclusivity, courts will not infer that a person has given up the rights to exploit their identity, especially when they’re not a party to the agreement. Jessica: Absolutely. So let’s talk about now what the Nicklaus Company could have done differently to prevent some of these issues. Scott: Yeah, great. So first, Nicklaus Companies could have required Jack Nicklaus to personally sign a rights assignment agreement or some similar agreement, explicitly transferring all of his name, image, and likeness rights, including his voice and his signature for specified commercial uses. Ideally, it would have been irrevocable and with clearly defined business sectors. Jessica: Certainly would have helped. Another thought is, Nicklaus Company could have included a personal services agreement or a spokesperson type agreement as part of the transaction, and that agreement It would have had language that said something along the lines of Jack Nicklaus will act exclusively through the Nicklaus companies for any public appearance, endorsements, branding work. This would have created a performance obligation and not just a straight asset sale. Scott: Right. That would have been a good strategy. Some states do have a statutory limit on the length of a personal service contract. California imposes a seven-year cap on certain personal service contracts. I know the agreements in this case had both Florida and New York choices of law, and I don’t believe that either of those states have a similar type of cap on the length of a personal service agreement. So that might have worked under either Florida or New York law. Okay. Nicklaus companies had a better non-compete with Nicholas. The non-compete… It’s odd how they structured it. The non-compete with Jack Nicholas, it had a 13-year term. If Nicklaus companies didn’t want Jack competing, they probably should have negotiated for a longer term. Now, granted, the scope of a non-compete has to be reasonable, both in terms of length and the scope, the geographic scope. But that’s always in the context of the amount of the purchase price and the size of the transaction. So, I think for a transaction of this size and given the context of the transaction, they probably could have gotten away with asking for a much longer non-compete. Agreed. Okay. So in the creator economy, we are seeing a lot of interest in businesses that creators have built, based in part on leveraging their personal brands. Scott: Whether that’s a purchase transaction or a financing, there are some deal pitfalls, this case highlights, that the buyer or the financier of such a company needs to be aware of. Jessica: Let’s start with the basics. Who actually owns the brand? Has the individual legally transferred their NL rights, their name, their image, their likeness, their voice, their signature? Have they transferred all of this to the company? If not, what you’ve really got is a license, and a license can expire, or worse, they can be revoked. Scott: Exactly. And you want to see a perpetual exclusive irrevocable license, or better yet, an outright assignment of those personal branding rights to the company. And if you’re stuck with a license, make sure it has teeth, strong renewal rights, a clear scope, and the ability to enforce it against third parties. Jessica: Absolutely. And then there’s the non-compete. The only thing stopping Jack Nicklaus from going back into business under his own name was a 13-year non-compete, which expired in 2020. Once that was gone, there was nothing stopping him from launching something new. Scott: Right. That’s a huge lesson. Non-competes expire. So investors need to secure talent deals with ongoing incentives for exclusivity, performance-based equity, earnouts, or other golden handcuffs to keep the talent committed. Jessica: And also, don’t overlook the personal services agreement. If the brand relies on the personality being visible, whether it be on socials, on TV, at events, you need those appearances contractually nailed down. How many, how often, what happens if they don’t deliver? That should all be in the contract. Scott: Right. And finally, make sure the IP actually lives inside the company. That includes trademarks, domain names, social media handles, even catch phrases. You’d be surprised how many of those are still held in the founder’s personal LLC or or worse, unregistered entirely. If the investors behind Nicklaus Companies had required a signed assignment of Jack’s name, image, and likeness rights, not just the non-compete, we might be She’s having a very different conversation, Jessica. Jessica: Absolutely. That’s right. For investors backing brand-driven businesses, that’s a story worth learning from. Scott: Well, 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 that 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.

After nearly 30 years of litigation, a federal court has canceled General Cigar’s U.S. trademarks for COHIBA cigars — all because of a little-known treaty and a Cuban brand once favored by Fidel Castro. What does this mean for U.S. trademark law and the future of the COHIBA brand? Tune in to this week’s episode of The Briefing as Scott Hervey and Jessica Corpuz unpack this high-stakes decision. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: It’s a battle decades in the making. Two cigar companies, one Cuban and one American, locked in litigation over one of the most iconic cigar trademarks in the world, Cohiba. And in a recent decision, a federal District Court in Virginia upheld a ruling canceling the US trademark registration long held by General Cigar. The reason? A rarely used international treaty and the trademark’s Cuban origin. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpuz. We’re going to talk about the Cohiba Trademark decision and what it means for brand owners on today’s installment of The Briefing. Jessica, welcome to The Briefing. It’s been a little while, but it’s good to have you back. Jessica: Thanks for having me, Scott. Scott: So this case isn’t It’s new. In fact, this dispute has been going on for nearly 30 years, and it’s between Cigar General, which is a US company, and Cuba Tobacco, a Cuban state-owned enterprise. Both claim rights to the Cohiba trademark. Have you ever had a Cohiba cigar? Jessica: Not personally, no. Have you? Scott: I have, yes. Outside of the United States, of course. Cigar General in the US, which held the Cohiba trademark, and Cuba Tobacco, which held that trademark in Cuba. Jessica: Yeah, that’s right. So it all started in the late 1990s, when Cuba Tobacco applied to register Cohiba in the United States. The problem was that General Cigar already had registered the Cohiba marks, a wordmark and a stylized version, both used for cigars. Cuba Tobacco asked the USPTO to cancel General Cigar’s registrations, claiming it had prior rights under international law. Scott: Right. Initially, the ETTAp suspended the cancellation case while Cuba Tobacco pursued litigation in federal court. That case made its way all the way up to the Second Circuit, which blocked Cuba Tobacco from getting injunctive relief, saying that any court-ordered transfer of the trademark to a Cuban company would violate US sanctions under the Cuban Assets Control Regulations. Jessica: Exactly. But then things shifted. The federal circuit later said that Cuba Tobacco could still pursue cancellation Installation of General Cigar’s marks at the T tab under a separate theory. Article 8 of the Inter-American Convention, sometimes known as the Pan-American Convention, a treaty both the US and Cuba are parties to. Scott: Okay, so let’s pause here for a second and let’s unpack a few things. First, let’s get some background on the Pan-American Convention. The Pan-American Convention, now you know why they call it the Pan-American Convention, is formerly known as the General Inter-American Convention for Trademarks and Commercial Protection. That’s a long one, was signed in 1929 and entered into force in 1931. It was one of the earliest multinational efforts to create a uniform protection system for trademarks and commercial names across the Americas. And this was at a time when international trademark protection was really still developing. The convention was groundbreaking for expanding reciprocal rights among member nations and recognizing foreign trademark rights that went way beyond traditional territorial principles. Jessica: Yeah. So the convention’s core goal was to protect legitimate business interests and prevent unfair competition across national borders. It sought to establish a framework whereby companies in one signatory country could assert rights against conflicting registrations in another. This included not just registration-based protections, but also protections based on prior use and legal recognition in the country of origin. Article 8, which is the key provision issue in the Coheba litigation, reflects that exact purpose, allowing a trademark owner in one contracting state to cancel conflicting mark registered another if it had prior legal protection and the registrate had knowledge of the original use. Scott: While the Pan-American Convention has often taken a back seat to more prominent treaties like the Paris Convention or the TRIPS Agreement, the Pan-American Convention remains in force and has been recognized by US courts as self-executing, meaning that it becomes US law upon ratification without the need for additional legislation to actually implement the treaty. That status gives it the same force as federal law. And as the Cohiba case shows, it can be a powerful tool in cross-border trademark disputes, especially among countries, well, primarily among countries that are parties to the treaty like the United States and Cuba. Jessica: So, Scott, what other countries are members of the Pan-American Convention? Scott: In addition to US and Cuba, member states include Mexico, Guatemala, Honduras, Nicaragua, Costa Rica, Panama, Colombia, Venezuela, Peru, Brazil, and Paraguay. Jessica: It’s really too bad that China isn’t a member, huh? Scott: Right. Given the problems US brands have in China with Chinese actors filing for Chinese trademarks that belong to a growing brands in the US before those brands file in China, the ability to use Article 8 in China to cancel a trademark would be a wonderful thing. Jessica: It would be great. But here, let’s talk about Article 8. So it allows a trademark owner in one contracting state, in this case, Cuba, to cancel a mark registered another here in the United States if two key elements are met, right? Scott: Right. And the first element is that the foreign mark was protected in the country of origin prior to the US registration. And the second is that the US registrant had knowledge of the foreign mark’s use before the filing in the US. The idea is to prevent companies from racing to the trademark office in another country to grab a brand that they know is being used abroad, exactly like they do in China. In this case, Cuba Tobacco had registered its Cohiba mark in Cuba in the early 1970s and had been selling the cigars since 1970, including diplomatic gifts and retail outlets for foreign nationals in Havana. And yes, Cohiba really was Fidel Castro’s favorite cigar, and he often gave it to dignitaries as gifts. Jessica: Well, the court actually found that General Cigar knew all of this. In fact, internal memos from 1977 referred to Cohiba as, Castro’s Cigar, and noted that it was used in Cuba. Still, General Cigar pushed ahead with its application in March of 1978, apparently deciding that securing a US registration was more important than avoiding a conflict. Scott: So the TTAB ultimately canceled General Cigar’s registration under Article 8, finding both legal protection of the Cuban mark and knowledge on the part of General Cigar. And when General Cigar appealed to the federal court in Virginia, the court upheld the TTAB’s decision. Jessica: So, General Cigar tried to argue that the cancellation itself was a prohibited transfer of property under US embargo laws. But the court disagreed, finding that the Cuban Assets Control Regulations didn’t bar the T-Tab from canceling the registration because a cancellation, unlike a court order transferring a mark, doesn’t hand property over to a Cuban entity. It simply removes the registration. Scott: Right. Now, that’s right. And that’s an important distinction and one that could have broader implications. This ruling reinforces that international treaties, even lesser-known ones like the Pan-American Convention, can create real, enforceable rights in US trademark law. Jessica: Yeah. And it also underscores the importance of good trademark hygiene. If a company knows about an existing foreign brand and still tries to register it here without disclosure, it may be vulnerable under Article 8. Scott: So Jessica, what do you think? Is this the end of the line for General Cigar and its use of Cohiba? Jessica: Not necessarily. The ruling doesn’t actually give Cuba tobacco the US rights yet. It just clears the way. Whether Cuba tobacco can actually register and use the market in the US still remains to be seen, especially since the embargo is still in place and the CACR limits Cuban companies’ ability to acquire US trademarks. Scott: Okay. So let’s talk about what happens now for a General Cigar, given that its trademark registration for Cohiba has been canceled. Cancellation doesn’t automatically mean that General Cigar has to stop using the mark. In the United States, trademark rights are based on use, not just registration. That means that General Cigar could, in theory, continue using the Coheba brand in commerce just without the benefit and legal presumptions that come with federal registration. Jessica: Yeah, but that comes with some serious risk. Without a federal registration, General Cigar loses the legal presumption of ownership, the to enforce the mark in certain venues and keep protections like nationwide constructive notice. More importantly, Cuba Tobacco, now holding a potential priority claim under Article 8 of the Pan-American Convention, may be in a stronger position to argue that general cigars continued use of cohiba actually constitutes infringement. Scott: So could Cuba tobacco sue for trademark infringement in the United States? Possibly, but there’s a catch. The US embargo against Cuba still bars many commercial transactions, including the transfer of trademarks. The Second Circuit, as we know, previously held that giving ownership of the Cohiba mark to Cuba tobacco through a court order would violate the Cuban asset control regulations. So unless Cuba tobacco obtains a specific license from the US Treasury Department’s Office of Foreign Asset Control, it may still be blocked from enforcing or benefiting from trademark rights in the US, even if it technically has priority. Jessica: Yeah. In short, General Cigar is in a complete legal gray zone. It can still sell cigars under the coheban name, but it does so without the protection of a federal registration and with a potential infringement claim looming, if and when US sanction policy changes or if OFAC issues a license. It’s really a stark reminder here that trademark law doesn’t operate in a vacuum and that the geopolitical forces can shape even the most brand-driven legal battles. Scott: I guess one could say that general cigars use of Coheba is somewhat smoky and cloudy right now. That was terrible. Well, thanks for joining me today, Jessica. That’s all for today’s episode of The Briefing. Thanks to Jessica for joining me. 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. And if you have any questions about the topics we covered today, please leave us a comment..

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

A class action lawsuit has hit ALO Yoga and influencers for failing to disclose paid promotions on social media. Legal experts dissect FTC regulations and the critical need for transparency in influencer marketing. They emphasize the consequences of vague disclosures and the shared responsibility between brands and influencers. The discussion also highlights the importance of clear communication to protect consumers and adhere to advertising standards. Tune in for valuable insights on avoiding costly legal issues in marketing!

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

Lady Gaga’s “Mayhem” tour has sparked legal trouble. In this episode of The Briefing, Scott Hervey and James Kachmar analyze a trademark infringement lawsuit filed by surf brand, Lost International, which claims Gaga’s use of “Mayhem” on merchandise violates their long-standing rights. The discussion explores the strength of Lost’s trademark, the likelihood of consumer confusion, and key legal takeaways for brands navigating crowded trademark landscapes. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: Lady Gaga brought her Mayhem tour to the 2025 Coachella Music Festival. While her performance was a critical success, there is someone who is not a fan of hers. At a minimum, not a fan of the name she chose for her tour. I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We’re going to talk about the trademark lawsuit filed by the surf and lifestyle brand Lost International against Lady Gaga for her use of Mayhem on today’s episode of the Briefing. James, welcome back to the Briefing. It’s been a while. James: Yes, thanks for having me back, Scott. Like you, I’ve been following this Lady Gaga case, and it certainly raises some interesting trademark law questions. Scott: Oh, absolutely, absolutely. So why don’t we start with the basics? So, according to the complaint, Lost International, they’re a California company that was established in 1985 as a surf and lifestyle brand. They claim to have been using the mark mayhem since 1988 in connection with surfboards, surf equipment, accessories, surf videos, and clothing. Lost owns a registered trademark for Mayhem in the United States, and it was issued on August 11, 2015, and it covers various clothing items like beanies, caps, jackets, pants, sandals, shorts, and, you know, other typical beach surf wear. This particular trademark registration is for a wordmark, which means that it covers the word Mayhem without having any particular font, style or color requirements. James: That’s right, Scott. The complaint alleges that Lady Gaga released a music album called mayhem in March 2025 and announced a worldwide concert tour under the same name. Furthermore, Lost claims that prior to the album’s release, Lady Gaga and associated parties began selling T shirts and other clothing items with the Mayhem mark prominently displayed, allegedly with a nearly identical design to Lost’s own Mayhem products. They’ve even included a side by side comparison of the clothing and their Mayhem logos in their complaint. Scott: So LOST is seeking some significant remedies. James: Yes, they are. Lost is asking the court for a judgment that Lady Gaga has infringed their trademark rights. They are seeking monetary damages and also want an accounting of Lady Gaga’s proceeds, which will result in a possible disgorgement of her profits. They want punitive and exemplary damages, interest costs, and attorney’s fees. Lost is also crucially seeking injunctive relief to stop Lady Gaga from using the Mayhem mark in connection with her merchandise and promotions. Scott: Okay, so let’s dive into the legal arguments. So the complaint asserts nine causes of action. Nothing like a big complaint, right? So these. These causes of Action include federal and common law trademark infringement, false designation of origin, and false advertising under the Lanham act, false advertising under California state law, and federal and state trademark dilution, as well as unfair business practices and common law unfair competition. So I think that the federal trademark claim is going to take center stage in this lawsuit, so let’s focus on that. So in California, a court analyzing a trademark infringement claim is going to look at the sleek craft factors, which are the following. The strength of the plaintiff’s mark, the similarity of the marks at issue, the similarity or relatedness of the goods, the similarity of the marketing channels for those goods, the degree of care likely to be exercised by the consumer of those goods, any evidence of actual confusion, the defendant’s intent in selecting the mark, and likelihood of expansion of the product lines. James: Yes, that’s right, Scott. So why don’t we start at the top? Let’s look at the strength of Lost mark. Scott: Great. Yeah. Okay, So I think Lost has a strong mark. Lost as a federal trademark, registration for Mayhem as a word mark in connection with clothing. The registration provides them with certain presumptions of ownership. The right to use the mark nationwide in connection with the goods, and because it’s on the principal register, the fact that the mark is distinctive, the mark has become incontestable, and they seem to have a long history of using the mark since 1988 in connection with clothing. James: Okay, Scott, but let me play devil’s advocate here. There are many other federally registered trademarks for clothing that include mayhem, which suggests that the term mayhem might not be exclusively associated with Lost in the broader marketplace, and this potentially weakens their claim to having exclusive rights to that mark. Scott: Yes, but those other trademarks include Mayhem with some other words like Miami Mayhem or Mayhem on the mat, and that’s significant. James: Yes. Scott: Now, James, you have to agree with me that the next two factors, similarity of the marks and relatedness of the goods, tend to favor a finding of infringement. James: Let’s hear your argument on that, Scott. Scott: Okay, so determining similarity of the marks involves comparing the the appearance, sound, and meaning of the two marks. Lost complaint emphasizes that the mark Mayhem is identical on both Lady Gaga’s merchandise and Lost merchandise, as we saw above, and that the stylized form, as we saw, is substantially similar, if not nearly identical. And as for the goods at issue, Lady Gaga is selling T shirts and other items of clothing with the mark prominently displayed on it, with, as the complaint alleges, and as we saw, a nearly identical design as used by Lost on its own products. The same type of goods for which LOST has a registered trademark. James: I’m not sure I agree with you, Scott, because I went on Lady Gaga’s website and the uses of Mayhem that I see are used as part of a multi word mark such as I am mayhem and mayhem in the desert. And I think that may go into this analysis as well. Now, why don’t we talk about the channels of trade, because I think loss claim has some real problems here. So this factor examines how and where the respective goods and services are advertised and sold. Loss claims their products have been and are likely to be marketed in the same or similar stores, channels or outlets, and advertising similar media, and that both parties use the Internet for marketing. I don’t know how accurate this is given that it’s just alleged in the complaint. The Lady Gaga website specifically says that the Mayhem merchandise was available at the festival. Fans buying Lady Gaga merchandise at Coachella or even through her website are not going to confuse it with Loss or with a surf and lifestyle apparel product. The core of the trademark infringement claim, I think, is really going to come down to demonstrating a likelihood of consumer confusion as to the source of the product. James: And if Loss cannot sufficiently prove this confusion, I think their claim may fail. Scott: It is true that courts do not treat the Internet as a single undifferentiated channel of trade, and they do look at how and and where on the Internet goods and services are sold or marketed and to whom. And I think it’s the to whom where Lost has a good claim. I think it’s fair to assume a significant overlap between consumers of Lost clothing and fans of Lady Gaga. And I’m sure we are going to see evidence of that introduced in this case. James: That’s right, Scott. I mean, proof of this overlap will come out in discovery and usually it’s through competing survey evidence. While Lost alleges, without any support in its complaints, that the use of the mark by Lady Gaga has led to instances of actual confusion in the marketplace among or by members of the consuming public. If survey evidence shows that a LOST consumer is not a Lady Gaga listener, they may have trouble establishing an overlapping consumer base. Scott: Since the last factor expansion of the product lines will probably not play a significant role here. Let’s talk about the intent of the defendant in selecting and using this mark. So this will consider whether the defendant, Lady Gaga, adopted the mark with the intent of trading on Lost goodwill. Lost alleges that Lady Gaga appropriated the name and identifiable logo Mayhem to identify similar products. Even though Lady Gaga, at least LOST is alleging, is well aware of that Lost owns the mark and that this was done to derive benefit from the reputation of Lost Mark. And further, knowing and intending to cause a likelihood of confusion and loss doesn’t. James: Offer any grounds supporting this claim that Lady Gaga was aware of their mark. Scott: Well, you know as well as I do that they don’t have to do that at the complaint stage, James, but I’m sure this will all play out in discovery that Gaga’s team was aware of Lost Mark. I think it’s fairly safe to assume that Gaga’s team ran a trademark search before search report before selecting this mark. And if they did, they certainly would have seen Lost Mark. Let’s briefly touch on some of the other claims. So, regarding false advertising, Right. Lost argues that Lady Gaga’s use of Mayhem falsely suggest an affiliation, connection or sponsorship with Lost for trademark dilution. They contend that Lady Gaga’s use impairs the distinctiveness of their famous Mayhem mark. James: Right. And the success of these claims generally hinges on the strength and fame of the original mark and the likelihood of blurring or tarnishing, which again ties back to the distinctiveness and exclusivity of of Mayhem in the marketplace. Given the number of other Mayhem trademarks, proving their mark is famous and distinctive in the legal sense for dilution purposes might be challenging. Scott: So what’s your overall take on the strength of Lost’s case? James: Well, I think while Lost has a registered trademark and a long history of use, the existence of numerous other Mayhem trademarks and the likely different trade channels for Lady Gaga’s merchandise may present significant hurdles to lust. The strongest part of their argument likely lies in the direct overlap of using a similar logo on clothing. Scott: Right, but that factor may be complicated by the other clothing related mayhem marks and the inability to establish overlapping channels of trade or consumers. James: Yes. So, Scott, are there any practical takeaways from this case for businesses and individuals regarding products like this? Scott: Yeah, that’s a great question, James. There are. So this case shows the importance of trademark registration, right? Lost International’s lawsuit heavily relies on its ownership of a federally registered trademark from Mayhem. This registration provides them with certain legal presumptions and rights. The fact that LOST registered the mark in 2015 and even filed a declaration of incontestability in 2021 highlights the proactive steps a business can take in protecting their brand names. Registering your trademark provides a strong legal basis for infringement claims. James: Yes. And context matters in trademark use. Lost registration for clothing would generally not automatically block Lady Gaga from using Mayhem for her album and tour titles. This indicates that the context in which a mark is used is crucial. Using a similar mark in a completely unrelated industry or for a different type of product or service may not necessarily constitute infringement due to a likelihood or a lower likelihood of consumer confusion. Scott: That’s right. One caveat though, that might constitute trademark dilution depending upon whether or not that first mark is a famous trademark. Here’s another pointer. A crowded trademark landscape can make it more difficult to claim infringement and establish the strength of your mark. The fact that there are other active trademarks involving mayhem for clothing could really weaken lost claim of exclusivity. This underscores the importance of conducting a thorough trademark search before adopting a brand name. James: Those are really good points, Scott. Thanks for having me on this podcast. Scott: Yeah, good to have you, James. And that’s all for today’s episode of the Briefing. Thanks to James for joining me today, and thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable, 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 or comments about the topics we cover today, please leave us a comment.

Is traditional Hollywood facing an existential crisis? Deloitte’s 2025 Digital Media Trends report reveals a massive shift in how Gen Z and millennials consume content. Scott Hervey and Tara Sattler break down the data and explore what this means for studios, creators, and the future of storytelling on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: Deloitte released its 2025 digital media Trends earlier in March. It is a comprehensive look at the seismic shift rocking the media and entertainment landscape. Are traditional studios facing an existential crisis against these hyper scale and hyper capitalized tech giants? And with Gen Z and millennials finding social media content more relevant than TV and movies, what does this mean for the future of storytelling and celebrity? I’m Scott Hervey, partner in the entertainment and media Department of Weintraub Tobin. And today, I’m joined by my partner, Tara Sattler. Stick with us as we analyze these trends and what they mean for both the traditional and new media players navigating this rapidly evolving digital world in today’s installment of The Briefing. Tara, welcome back to The Briefing. It’s good to have you back. Tara: Thanks, Scott. Thanks for having me back. It’s always great to be here. Scott: Yeah. I thought this one was going to be particularly relevant for both you and I because Our practice area is we both straddle both traditional media representing studios and production companies. And also we have another foot really squarely set in the creator economy, digital media, YouTube space, podcast. I think you and I have the benefit of seeing both sides of this. That’s why I thought you’d be the perfect co-host for this one. Tara: We do, Scott. I think you’re right. I’ve been looking through this report. It’s really quite eye-opening. The shifts are significant, especially for the traditional media players who you and I both work with a lot. Scott: Yeah, absolutely. This report makes one thing abundantly clear, and I think it’s something both of us have been talking to our clients about for a while. Social video platforms are becoming a dominant force in media and entertainment, and they do present a challenge to the traditional Hollywood model. So today we’re going to summarize the key findings and discuss what opportunities exist for both traditional Hollywood studios and content producers and the content creators on platforms like YouTube. So let’s dive in. So the report itself, the headline here is that social platforms are becoming the new center of gravity for media and entertainment. According to Deloitte, these platforms are drawing more of consumers’ time and more of advertisers’ money away from traditional media. Tara: Yeah, the report found that US consumers are spending about six hours daily on media and entertainment, and that number isn’t growing. What’s changing is how that time is distributed. Younger generations, especially Gen Z, are spending significantly less time watching traditional TV and movies and more time on social media platforms with user-generated content. Scott: Right. And Those numbers are pretty striking. Gen Z respondents are spending about 54% more time, so that’s about 50 minutes more per day on social media platforms and watching user-generated content than the average consumer. They’re spending 26% less time, so that’s about 44 minutes less per day, watching TV and movies than the average person. Tara: It’s not just about time spent. The report found that 56% of Gen Z and 43% of millennials say social media content is more relevant to them than traditional content like television shows and movies. Plus, about half of these generations feel a stronger personal connection to social media creators than they do to TV personalities or actors. Scott: Let’s now talk about the advertising piece of this because it really is quite huge. The report shows that social platforms are winning the ad battle, too. Gen Z and millennials are much more likely to say that ads on social media influence their purchasing decisions. That’s great for some of our clients who run ads on these platforms and also are creators in their creator economy who live off of these ads. That’s a major source of their revenue. For Gen Z, it’s about 63%, while ads on streaming services come in at about 28%. Tara: That’s a big problem for SVOD platforms that are trying to shift to ad-supported streaming models. They’re competing against platforms that have spent years prospecting their ad technology and their algorithms for recommendations. Scott: Exactly. Meanwhile, traditional distributors and studios are caught in a really tough spot. Paid TV subscriptions continue to decline, down to 49% of consumers from 63% three years ago. Streaming services are facing challenges, too, with 41% of consumers saying the content available isn’t worth the price. Not me, though. Up to five percentage points from 2024. Tara: Yeah, I keep paying, too. And those subscription costs, they just keep going up. They do. And then, SBOD subscribers report paying an average of $69 a month for four services, which is up 13% in just one year. For Genzy and Millenials, they have an average of five paid services, and those costs are up about 20%. Scott: You know, with the password sharing crackdown, it’s actually no wonder that you’re seeing a decrease in the younger generation’s usage of SVOD services. And that’s also no I don’t know why we’re seeing this really high churn rate. The report notes that 39 % of consumers canceled at least one paid streaming service in the last six months, with the number jumping above 50 % for Gen Z and millennials. All right. What does this report mean with regard to opportunities for traditional Hollywood? Let’s talk about this. Tara: I think there are several potential paths forward. First, the report Deloitte suggests that studios need to embrace ad technology and AI. They’re moving to the center of content economics, and studios need to invest heavily in these areas to understand them and to be able to compete. Scott: Deloitte suggests that strategic partnerships might be the way to go. Many studios simply don’t have the in-house expertise to build competitive ad tech platforms. Tara: Yeah, so that consolidation is another opportunity. The report suggests that studios should gather larger audiences, potentially through mergers and acquisitions or clever aggregation, to really be able to achieve the scale needed to compete with the social media platform. Scott: We’re already seeing some of that with bundling deals between streaming services, but the report seems to suggest that they might need to go much further than this. Tara: Yeah, technology adoption another opportunity so studios can leverage virtual production and AI to enable cheaper and faster production or use generative AI for dubbing and translation and even implement AI capabilities that automate certain operational functions. Especially this day and age, this doesn’t come without controversy. Scott: Oh, that’s very, very true. The report also highlights an interesting opportunity, engaging with social platforms rather than just competing with them. Traditional studios could learn from social platforms about content, creativity, and advertising capabilities, while platforms can benefit from premium storytelling, which really is the strength of traditional Hollywood studios. Tara: That’s exactly right, Scott. I have really been thinking about that for quite a while. This report notes that 56% of younger generations watch TV shows or movies on streaming services hearing about them from creators online. Marketing efforts really should start to lean in to these social platforms. Scott: I think there’s also a distribution play there, too. I think traditional Hollywood or independent Hollywood, maybe some of the smaller, more independent studios, could be looking at and should be looking at and thinking about multi-platform deals. Because now more than ever, you really need to squeeze every dollar out of it. Your content. I think just committing to one single platform might not really be the answer. I found it interesting that the report challenges the fear that short-form content doesn’t work for premium IP. Studios could get creative and publish the social platforms, as I said, through a multi-platform approach, using social videos not only to help promote their TVs and movies, but also maybe to distribute original short-form content. Tara: There’s also an opportunity to work with content creators. Those content creators can be powerful advocates for studio content, help engage audiences with greater authenticity, and help with the potential to unlock virality. Scott: Right. In essence, traditional Hollywood needs to adapt by embracing technology, considering consolidation, and engaging with rather than just competing against social platforms. It’s about finding new models that work in this changing landscape shape. But what’s in it for the media creators? What’s in it for your traditional YouTube creators? Let’s talk about the opportunities that exist for them looking to grow their business in this environment. Tara: For creators, I think this report really contains some positive news. The influence of creators is growing, especially with younger audiences. According to the report, about 50% of Gen Z and millennials say they feel stronger personal connection to social media creators than to TV personalities and actors. Scott: I think when you say the influence of creators is growing, I think we just need to look back at a couple of the big deals over the last couple of months. Miss Rachel, Mr. Beast, Dude Perfect. They are the next studios, and their influence is really growing. And these creators are now seen as legitimate entertainment competitors to traditional media. The report notes that for younger generations, especially, trending social videos are often like the new hit TV show, and creators are the new stars. Tara: That right there creates several growth opportunities. First, there’s the potential to cross over into traditional media. Some Some creators have made the leap to network television, streaming platforms, films, and this really secures lucrative contacts for them but also grows their audiences. Scott: Though, interestingly, the report found mixed responses to this. While 29% of consumers say they’d be more willing to watch TV shows or movies starring their favorite creators, 30% feel creators lose their authenticity when featured on TV. But it’s interesting. I didn’t see any I think part of that report that talked about when that content creator’s own show that’s on YouTube is also available on a streaming service or a fast channel, what that impact is. Because I think that’s probably correct. When you take the creator out of the environment in which they’re known to the viewer, it’s not authentic any longer. Tara: Yeah, I think that’s right. I think that the production methods and what is entailed with making longer form content is also different. That may be where the viewer perceives that as a loss of authenticity, but it’s really just what’s needed in order to produce the content at hand. But in any event, this all suggests that creators really need to be careful about how they approach these crossover opportunities and really think about maintaining their authenticity. That seems really important. Scott: There may also be a business need to expand beyond that single platform that they have become associated with. With YouTube always rejiggering its algorithm, and this always seems to result in the devaluing of library content, it may be economically necessary to repackage older content into newer long-form episodes and seek out licensing opportunities with SVOD or AVOD platforms or explore the benefit of launching a branded fast channel. The report also highlights the growing role of AI tools for creators. Social platforms are extending generative AI tools to help creators run their businesses, create content, target audience and advertisers, and match with brand sponsors. Tara: Yeah, so all of this AI technology really creates opportunities for creators to scale their opportunities and grow their businesses more efficiently. Scott: Brand partnerships are another significant opportunity, and it’s the lifeblood for a lot of creators. Creators offer credibility and authenticity to brands and advertisers who may be trying to reach millions of followers. The report notes that younger generations are much more likely to say that ads or product reviews on social media influence their purchasing decisions. Specifically, the report found that Gen Z and millennials, so 63% of Gen Z and 49% of millennials, are more likely to say that ads or product reviews on social media are most influential to their purchasing decisions. That’s really quite stunning, and I think quite a boost for our partner, Jessica Marlo, who basically runs creator brand integration business for the firm. Also interesting is the impact social media has on TV viewership. A significant percentage of younger generations, so 56% of Gen Z and 43% of millennials, watch TV shows or movies based on recommendations from social media. And by the way, I think we were all talking about this in a department meeting last week, the traditional movie and television industry has done a really bad job of engaging in social media advertising and using creators to advertise the content. Really, social media should be a central part of TV and movie marketing strategies targeting these demographics. If it works for cosmetics and other goods, it’s going to work for movies and television. Tara: Well, and I think we saw an example of that with the Barbenheimer explosion on social media, which by all accounts, was really to social media and was not planted or instigated at all by the distributors behind those films. I think that that’s a perfect example, and I totally agree with you and with the report in that regard, Scott. Scott: The report also suggests that there’s value in cross-platform presence. We just talked about that a little bit earlier here. Creators who establish themselves across multiple platforms can build more resilient businesses and reach different audience segments. By the way, as we’ve always said, it’s always a risk to rely on a single platform because that platform can change its algorithm as it’s entitled to, and that can have a devastating economic impact on your business. If you are just on a single platform. Tara: Finally, I think there’s an opportunity for creators to leverage their personal connection with audiences. That parasocial relationship, as the report calls it, drives engagement and keeps people coming back. Creators who cultivate those connections can really effectively build a sustainable business. Scott: Let’s wrap up with some final thoughts. The report clearly shows it The media landscape in transition with social platforms gaining ground at the expense of traditional media distribution. Both Hollywood studios and individual creators need to adapt to this new reality. I think the creators are more apt to to adapt quicker and take advantage of this changing landscape. Tara: I definitely agree with that. Another key takeaway is that neither traditional Hollywood nor social media creators can stand still. For Hollywood, it means rethinking business models, embracing technology, and finding ways to engage with rather than just compete against social platforms. Scott: For creators, it means leveraging their authenticity and personal connections with audiences while exploring new revenue and potentially even crossing over into traditional media. Tara: Yeah, the media landscape is being reshaped. Those who adapt most efficiently will be the ones who thrive. It’s a well-tested and long-running concept that we all know a lot about. Scott: You’re right. Adapt or die. Well, a little grim, but that’s it for today’s episode of The Briefing. Thanks, Tara, for joining me today. Thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.  

Can HBO be sued over a T-shirt? Scott Hervey and Tara Sattler unpack Duke University’s beef with ‘White Lotus’ after a character wore a Duke tee on screen. Does this cross the legal line—or is it just creative expression? They’re talking trademark, the Rogers test, and what it all means for studios on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: In a recent episode, Timothy Ratliff is grappling with possible criminal liability for his involvement in a money laundering scheme. He thinks about taking his own life in a graphic scene where he holds a gun to his head while wearing a Duke University T-shirt. HBO didn’t get permission from Duke, and Duke publicly expressed its displeasure with the situation in a statement with the New York Times. I’m Scott Hervey, a partner with the law firm Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We are going to break down the potential of Duke’s trademark lawsuit against HBO on this installment of The Briefing. Tara, welcome back to The Briefing. Tara: Thanks for having me here, Scott. I do love the White Lotus series, so let’s talk about this one. Scott: Yeah, I love the White Lotus series, too. But this is something you and I deal with a lot in our representation of television studios and production companies. I think this one is really relevant for you and me and also relevant for a lot of our audience. Okay, jumping in. Duke really is not happy about the situation. I’m really not happy. Duke’s vice president for communications shared a statement with the New York Times, which stated as follows, Duke appreciates artistic expression and creative storytelling, but characters wearing apparel bearing Duke’s federally-registered trademarks create confusion and mistakenly suggests an endorsement or affiliation where none exists. He wrote that in an email. He also said, White Lotus not only uses our brand without permission, but in our view, uses it on imagery that is troubling, does not reflect our values or who we are and simply goes too far. Tara: Like you said, Duke really isn’t happy happy at all. But let’s break down whether Duke really has any type of case against HBO besides just being unhappy. The shirt that was worn by the character had the name Duke on it, but it didn’t have any design elements, logos, anything like that. We’re really only talking about a trademark claim. Scott: Right. Yeah, it’s not a copyright claim. Okay, with it being just a trademark claim, what do you think? Does Duke have a case? Tara: No, I really don’t think that they do. As much as Duke may dislike the use of its T-shirt, all the things that the representative said, this is really exactly the situation that the Rogers test is meant to address. Scott: For us. For those that listen to this podcast, know that we talk about the Rogers test a lot. The Rogers test comes from a 1989 Second Circuit case, Rogers versus Grimaldi. It essentially creates a special framework for analyzing trademark claims when they involve expressive works protected by the First Amendment. Under the traditional Rogers test, the Lanamack doesn’t apply to an expressive works use of a trademark unless that use has no artistic relevance to the underlying work or explicitly misleads consumers about the source or content of the work. Tara: That Rogers test went through a pretty significant change in 2023. We’ve talked about this a lot, too. Then the Supreme Court decided the case Jack Daniels Properties versus VIP Products. That case involved a dog toy called Bad Spaniels that parodied a Jack Daniels whiskey bottle. The court there significantly clarified when the Rogers test should apply. Scott: Yeah, the key distinction the Supreme Court made was that the Rogers test doesn’t apply when a mark is used as a source identifier, regardless of whether it is also used to perform some expressive function. Tara: In other words, a third-party trademark is being used to identify the source of a product to tell consumers who made it, then the Rogers test doesn’t apply, and traditional trademark infringement analysis should be used. But if the third-party trademark is being used as part of an expressive work and not to identify who made the work, then the Rogers test does apply. Scott: I agree with you, Tara, that the Rogers test would apply since HBO wasn’t using the Duke Mark as a source identifier for the series. It just used it on a character’s wardrobe. It’s part of the creative, not a designation of who made the show. With Rogers being applicable, the first question is whether the use of Duke has any artistic relevance to the work. Then we’ll have to look at whether that use explicitly misleads consumers about the source of the content. Tara: For the first prong about whether Duke has any artistic relevance to the work. The Ninth Circuit has a very low bar. The artistic relevance just needs to exceed zero. The Timothy Ratliff character is a financier from Durham. Duke is located in Durham, North Carolina. Clearly, HBO was using the brand of T-shirt to establish at a minimum that Ratliff was from Durham. Scott: Right. Duke claimed that HBO’s use creates confusion and mistakenly suggests an endorsement or affiliation where none exist. The second prong of Rogers is supposed to look at whether the use is expressly misleading. Tara, what do you think? Tara: I really don’t think it’s misleading. I can’t see this use explicitly leading consumers to think that Duke was involved with the series or endorsed the series in any way because it’s one character wearing one shirt from a prominent university, from a town that he’s from. It all ties back to that one character. Anybody watching the show, it’s pretty clear that the entire show and the entire series doesn’t really have any other affiliation or otherwise seem to be endorsed by Duke, really, at all. Scott: Right. Going back to the creative relevance of the use, I think it also went towards not only just establishing where this guy was from, but also his prominence as a financier. He’s supposed to be a prominent, upstanding member of the community, a pillar of the financial community, a pillar of the financier community, yet he’s under criminal investigation for money laundering. I think that the use of Duke as a reflective of being a top-tier university, I think it was used for that very purpose. There’s been a lot of banter about this. This has gotten a lot of traction and a lot of talk in our industry. Thankfully, or not thankfully, most of the talking heads who have talked about this have come out with the same analysis that we have that Duke may be upset, but they don’t really have a case. I think that’s also necessary for the type of work that you and I do and the type of work that our clients do, right? Tara: Yeah, I agree. That’s often part of the analysis is Where is the differentiation between somebody being upset that their mark or product, et cetera, has been used and where that use would actually cross the line into giving rise to a where the other party would prevail over the production. We talk about that a lot. Scott: It’s important and necessary for our clients to create a realistic environment, an environment that its viewers can relate to. If you have to fake brands for every single thing, that environment becomes unrelatable. Then it doesn’t. Consumers, viewers, won’t really buy into it. Thank you, Roger’s test. Thank you, Second Circuit and Ninth Circuit. I guess that’s it. I don’t think there’ll be a case. I don’t think, unlike Pepperdine, which filed their lawsuit. I don’t think Duke is going to file a lawsuit here, but stranger things have happened, so we’ll see, right? Tara: Yeah, we’ll see. Scott: Well, that’s it for today’s episode of The Briefing. Thank you, 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 covered today, please leave us a comment.

Is ‘The Pit’ a spinoff, sequel, or something else entirely? Scott Hervey and Tara Sattler break down the lawsuit over ‘ER’ and whether ‘The Pit’ crosses the legal line into derivative territory on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: A legal battle is in full swing over the hit medical drama, ER and the Pit, a new medical drama set in Pittsburgh. The agreement between the creator of ER, Michael Crichton and WB, says that any sequels, remakes, spinoffs, and/or other derivative works require the approval of Crichton, Amblin, and Warner Brothers. So, is the Pit any of those things? I’m Scott Hervey, a partner at the law firm of Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We are going We’re going to discuss ER versus the Pit. What is the Pit? On this installment of The Briefing. Tara, welcome back. Tara: Hi, Scott. I’m happy to be here, especially talking about this topic. I really love all these medical traumas and was a big fan of ER back then, so this is going to be a fun one. Scott: Right. Did you do your homework this weekend? Tara: I did. Scott: Yeah, I did, too. I think Binge about five episodes of The Pit. Tara: And I liked it. Scott: Yeah, it was good. Tara: It was easy to do. Scott: I got to say, I Before we get into it, I am amazed at how the actors really sell themselves as doctors. I’m not a doctor, so probably maybe when a doctor is watching this, they probably look at it and go, They did that all wrong. We do when we watch legal traumas and we’re like, This is wrong, all wrong. But from a layman, non-doctor, it looks quite, quite impressive. Tara: I agree. Scott: Well, so we previously reported in an episode where we broke down the initial skirmish between Crichton and W. B. And how Sherry Crichton survived Warner Brothers’ attempt to shut down the lawsuit, her lawsuit, against Warner Brothers with an anti-slap Today, we are going to look at what will likely be next for Sherry Crichton, and that is establishing that the pit is some type of derivative of E. R. The 1994 agreement between Michael Crichton and Warner Brothers regarding the hit series E. R. Specifically freezes any subsequent productions. The exact wording used in the 1994 agreement is as follows, Any and all sequels, remakes, spin in-offs and/or derivative works shall be frozen, with mutual agreement between Creighton, Amblin, and Warner Brothers being necessary in order to move forward in any of these categories. Tara: That’s really the crux of Creighton’s case against Warner Brothers. What exactly is the Pit? Scott: Right. Let’s go through that part of the 1994 agreement, and let’s start with the question of whether the Pit is a sequel of E. R. I think the place to look at for the definition of sequel is probably the Writers Guild of America Minimum Basic Agreement. Under the WGA, a sequel, at least pursuant to the WGA MBA, it’s defined as a film or a picture where the principal character of the original film or picture participate in a new and different story. Tara: On Noah Wiley played Dr. John Carter, and on the Pit, Noah Wiley plays Dr. Michael Robbie Rabinovitch. Are those characters essentially the same, or is Robbie really John Carter, 15 years later? Scott: Yeah, that’s a tough one. On the surface, it seems that the answer is going to be no, because the two characters, they have different names. We don’t really know too much Dr. Robbie’s backstory yet. We know a little, but we don’t know five episodes in. We don’t really know a whole heck of a lot. But I don’t think it’s going to be that simple of an inquiry? Tara: Probably not, but I do think it’s safe to say that the Pit isn’t a remake of ER. Again, going back to the WGA, for definitions, a remake is substantially similar to a prior motion picture or television program regarding principal characters, setting, plot, storyline, tone, events, and structure. Scott: Right. Yeah. It’s very true looking at that. The Pit is not a remake of ER at all. But is the Pit a spinoff? As you know, there’s two types of spinoffs. We have a generic spinoff and a planted spinoff. Tara: Right. A planted spinoff is commonly understood to be a new series in which the main or characters of the new series are not regular characters in the first series, but is someone who’s introduced in the original series for the specific purpose of creating a new series with that character. An example is Melrose Place, which is this planned spin off of Beverly Hills 90210, as the characters in the new series, Melrose Place, were introduced in the original series, specifically to spin off into the new series. Scott: Yeah, I’m going to thank the WGA/MBA specifically for that example, but I will say that they probably need to update it because I bet you a lot of our listeners and viewers are like, What’s Melrose Place? What’s Beverly Hills 90210? All right. A generic spinoff is commonly understood to be a new series using continuing characters from the first series. I’m going to give you an example. Thankfully, these shows are They’re still being broadcast, mostly on fast channels now, but they’re still out there. For example, Fraser is a generic spinoff of Cheers as the character of Frasher was a regular character on the earlier series. If the Pit was going to be anything, it would be a generic spinoff. The argument here would be that the character Noah Wiley plays on the Pit, so Dr. Ravi Rabinovitch, is Dr. John Carter, 15 years later. I guess the problem is, though, he’s not called John Carter on the Pit. He’s called Ravi Ravinovitch. Tara: I think that’s a big problem. I think that’s a big problem with that argument. Another thing to look at is whether the fit is some other derivative work. Let’s look to the Copyright Act there to define derivative works. The Copyright Act says a derivative work is a work based upon one or more pre-existing works such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or other form of work which may be reactive, transformed, or adapted. That’s a lot of examples, but I think that is helpful in our analysis. Scott: Yeah, I don’t know. I think that’s more words than helpfulness. I think it might be more helpful for us to look at it this way. One way to figure out if a work is a derivative is to ask, if the second work was made without permission, would it be an infringement? Because a derivative is basically a work that would be infringing of the original copyright, except that you have permission to make it from the original copyright holder. I think that’s the easier way to look at it. Tara: That’s a lot more It’s accessible. Let’s do that. Scott: Yeah. Let’s look at the PIT and ER through that framework. Would the PIT be a copyright infringement of the ER? In order to state a claim for infringement, a plaintiff must show substantial similarity between the work’s protected elements. Now, determining whether works are substantially similar involves a two-part analysis consisting of the The extrinsic test and the intrinsic test. The extrinsic test assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, whereas the intrinsic test examines an ordinary person’s subjective impression. Although a plaintiff must prove both to establish substantial similarity, a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury. Tara: To apply the extrinsic test, you need to first filter out elements that are not protected under copyright law. These are things like facts, ideas, then there’s a fair, which are situations and incidents that naturally and necessarily flow from a certain plot, and other stock elements. Then make a determination after filtering out certain elements that are not protected, whether the two works are or are not substantially similar. Scott: Right. So I spent my weekend doing my homework, as did you, and watched a number of episodes of The Pit. Look, obviously, there are similarities between The Pit and ER. Both are medical traumas. Both take place at a teaching hospital, and both are set in the emergency room. Both have Noah Wiley as a star, and they also have the same writer, Scott Gramell, who was a writer. I hope I’m pronouncing his last name correctly. He was a writer on ER. He created The Pit. They also have John Wells, the showrunner and executive producer of ER. He was also an executive producer on The Pit. Tara: But there are also some big differences. The Pit utilizes a real-time format, meaning the show unfolds in real-time, like the show 24 with Kiefer Sutherland, and unlike the more episodic structure of ER. The Pit also focuses on what it’s like working in a post-COVID healthcare setting, an exploration into the complexities of the healthcare system and the bureaucracy of working in a hospital. Scott: Right. So let’s subtract the unprotectible elements. The basic concept of a medical drama set in an ER, that is a unprotectible element. Let’s also take away the basic concept of a show set in a teaching hospital. Tara: Yeah, and there are also other medical shows set in a teaching hospital. In fact, a lot of hospitals are teaching hospitals. Scott: Right, that’s right. According to a very quick Google search, there were a lot. Grey’s Anatomy, Scrubs, The Good Doctor, House, The Resident, New Amsterdam, Saint elsewhere, Code Black, and private practice. A lot more than I thought. Tara: Yeah, and I can think of some that even aren’t on that list. Let’s take those things away and analyze What’s similar? Scott: Not a lot, right? I think not a lot. That’s what the argument is going to look like, and that’s what it’s going to come down to. I’m sure both sides will come up with lists of differences and similarities, but having just spent the weekend binging five or six episodes of the pit, I really don’t see much crossover other than the unprotectible elements that we talked about above here. Tara: I agree with you, Scott. I think another thing that the court is going to have to think about is what precedent would they be setting if they do deem the pit to be some derivative work of ER because we have a lot of medical traumas, we have a lot of legal traumas, there’s a lot of emergency crew type traumas. What would we do to the landscape of television if we’re taking something like medical drama and starting to really muddy those waters. Scott: Right. I mean, look, the Pit really could have been a prequel to ER. I mean, if this was John Carter, and if it were in Boston, and if it were the same ER, but just the same settings, was post-COVID, the hospital had gone through a M&A, and maybe it was more corporate, and dealing with the economic pressures, okay, then it definitely would have been a prequel. Not a prequel, sorry, a sequel. But also you can take those elements. It’s a teaching hospital, it’s ER. You’re dealing with a very stressed-out doctor, figuring how to navigate health care delivery post-COVID, dealing with private care and private pay, and and all of the consolidation in the health care industry and the lack of economic resources, you can make that a new television show, I think. I think so. Tara: I think so, too. And just because there’s a lot of the same people involved, part of the reason that I’m sure they’re involved is because they’re familiar with how to run a successful medical drama show. That doesn’t mean that it’s necessarily infringing or derivative. Right. Scott: I agree with you. Well, look, let’s see what happens with the Sherry, Kreight, and Warner Brothers case. It will be interesting. We will definitely keep an eye on that case because that impacts a lot of what you and I do. Tara: Absolutely. Scott: Well, 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 covered today, or if you disagree with us, please leave us a comment.

The estate of ‘ER’ creator Michael Crichton is suing Warner Brothers, claiming their new medical drama ‘The Pit’ is a derivative of ‘ER.’ IP and Entertainment attorneys Scott Hervey and Jessica Corpuz discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Scott: A legal battle is unfolding over the hit medical drama, ‘The Pit,’ which the estate of Michael Crichton claims is the unauthorized successor to ER. The estate, represented by a roadrunner, JMTC LLC, has sued Warner Brothers television over The Pit, a new medical drama set in Pittsburgh. Warner Brothers attempted to shut down the lawsuit by using California’s anti-slap statute, arguing that the case threatened their free speech rights, but the court didn’t bite. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpuz. We are going to talk about the court’s decision to deny Warner Brothers’ anti-slap motion and what this means for contract rights in the entertainment industry on today’s installment of The Briefing. Jessica, welcome back to The I’m glad we could get my people to call your people and get you booked again. Jessica: Thanks so much for having me, Scott. Scott: Thanks. Well, why don’t we jump right into this? Jessica: Thanks, Scott. So today we’re unpacking a high-profile case in the entertainment world, Road Runner: JMTC/LLC versus Warner Brothers Television, which involves the estate of legendary author and screenwriter Michael Crichton, the long-running medical drama, ER, and a new TV show called The Pit. Scott: That’s right. This case revolves around claims of breach of contract, interference with contractual relations, and whether the pit is a derivative of ER. Warner Brothers attempted to shut down the lawsuit with an anti-slap motion under California law, but the court denied it. So let’s break it down, starting with some background on the parties. Jessica: So Michael Crichton, of course, is best known for Jurassic Park, but he also co-created ER, the wildly successful medical drama that ran for 15 seasons. After his passing, Crichton’s widow, Sherry Crichton, on behalf of his estate, represented in the dispute that we’re talking about today by Roadrunner J. M. T. C. Lllc, has been involved in legal efforts to protect his contractual rights as the creator of ER. Warner Brothers television, on the other hand, is a dominant force in TV production, and they’re behind The Pit, a new medical drama set in Pittsburgh. The estate argues that the Pit is a derivative work of ER, and that Warner Brothers breached the 1994 agreement between Crichton Warner Brothers, concerning the ER pilot and the series. Scott: That’s right. The 1994 agreement between Crichton and Warner Brothers specifically freezes any subsequent productions. The exact wording used in the 1994 agreement is as follows, Any and all sequels, remakes, spinoffs, and/or other derivative works shall be frozen, with mutual agreement between Crichton, Amblin, and Warner Brothers being necessary in order to move forward in any of these categories. Jessica: Okay, so that’s the contract. But let’s talk a little bit about the facts surrounding the party’s discussions about the pit, since those facts play a really big role in this outcome we’re talking about today. Scott: Yeah, you’re right. They really do. So the complaint says that around Thanksgiving 2022, Sherry Crichton got a call from John Wells. Wells was one of the producers of ER, who purportedly told Sherry that there was going to be a big press release on deadline within days announcing an ER reboot, starring Noah Wiley, and that Wells would be producing it with Warner Brothers television for the HBO Max streaming service. According to the complaint, Warner Brothers made an offer, Crichton made a counter offer, and that included a guaranteed created by credit for Michael Crichton. The complaint alleges that Warner Brothers basically said that Crichton’s estate would have to basically take it or leave it, that there would be no improvements upon the offer that was made. So Crichton told Warner Brothers that they were going to leave it and that they were not going to grant permission for the pit. Jessica: So supposedly after this, Noah Wiley contacted Sherry in an attempt to find some way to move the project forward. The complaint includes an excerpt from an email that she sent to Wiley. It’s a very long email, but a portion of it says, and I’m quoting here, I deeply appreciate your classy note to me today, and also for your efforts to find a bridge between the parties that would allow for the series to go forward. The idea of you returning in your signature role as Carter, which, as you know, was based on Michael’s own life, with John as the showrunner, is exciting and filled with tremendous potential. But ultimately, all of this rests with Warner Brothers. If Warner Brothers wants to reengage a fair and appropriate negotiation for a series as successful as ER and treat us respectfully through the process, my representatives stand ready to talk. Scott: Right. After that, there continued to be some negotiations with Welles, and Wiley, taking the lead. They, Welles, Wiley, and Sherry, seemed to reach terms acceptable to Sherry, and this included a commitment to support a created by credit for Michael Crichton before the WGA and a $5 million guarantee in the event the WGA did not accord Crichton, the created by credit. However, it seems that, at least according to the complaint, once Warner Brothers came back into the picture, those two essential deal terms went away, and Warner Brothers then claimed, after they couldn’t come to an agreement, that the project was dead. Jessica: Well, was it really, though? So according to the complaint, the project wasn’t dead at all. The complaint states that shortly after Warner Brothers claimed that the ER Reboot was dead, the Pit was announced. It has the same producers, the same star, and is on the same network as the project proposed to Sherry Crichton. The main difference, according to the complaint, is that the Pit is set in Pittsburgh rather than Chicago. Go. Scott: Right. In a press release, the Crichton team says that changing the show’s name does not change the fact that The Pit, which has exactly the same premise, structure, themes, pace, producers, and star, is ER through and through. Warner Brothers countered with its own press release, which called the suit Baseless, and claimed that the Pit is a new and original show. Jessica: So we know that Sherry Crichton sued Warner Brothers and others for breach of contract. Warner Brothers moved to dismiss the lawsuit under California’s anti-SLAP statute, and SLAP stands for a strategic lawsuit against public participation. The court heard oral arguments on the motion, which I bet were probably as dramatic as the first episode of The Pit. Scott: Yeah, I bet you they were. So, okay, this brings us to the legal issues at play, the anti-slap motion. California’s anti-slap statute under California Code of Civil Procedure, Section 425. 16, is It’s designed to prevent lawsuits that aim to silence free speech, particularly in matters of public interest. It’s a two-step process. First, the defendant, Warner Brothers, in this case, must show that the claims arise from protected activity like free speech or petitioning. If the defendant succeeds, the burden then shifts to the plaintiff, so Crichton’s estate in this case, to show that they have a probability of prevailing on the merits of the claim. Jessica: Yeah, that’s exactly right. Here, Warner Brothers argued that producing the pit is a protected form of speech. Here, the court agreed that creating a television show qualifies as free speech, meaning that Warner Brothers met the first prong of the anti-slap analysis. However, the estate, the plaintiff, countered that their claims really weren’t about protected activity, a public discussion of the challenges in urban medicine, but rather a breach of contract, specifically a violation of the frozen rights provision from a previous agreement regarding in the ER. Scott: Right. That was a really interesting attempt to try to parse that claim and take it out of the scope of California’s anti-slap statute. But ultimately, the court agreed with Warner Brothers and cited the case, Newman versus Ross, a case about a writer who sued a producer and others, alleging that they stole her idea for a television show and used it for a spinoff series. The Norman Court found that the breach of contract and the intentional interference with contract claims that issues in the matter were both premised on the protected activity of making the television show. Jessica: Yeah. So because Warner Brothers prevailed on the first prong, the court then went to the second prong. Could Crichton show a probability of prevailing And this is where Warner Brothers lost its argument. Scott: That’s right. The court found that Crichton had submitted enough evidence to meet the minimal merit standards to show that a prima facia case, that the pit was derived from ER and that Warner Brothers could have violated their prior contractual obligations. Jessica: Yeah. This is a great illustration of how anti-slap motions aren’t a silver bullet. They’re meant to stop frivolous lawsuits that stifle free speech, but they can’t be used to escape legitimate breach of contract claims. But what if things were a little bit different? What about an alternative scenario where the parties had previously negotiated over an ER reboot? What do you think? Scott: Yeah, that’s an interesting hypothetical. If there had There had been no prior discussion between the Crichton estate and Warner Brothers. I think Crichton’s case would have been much weaker. The estate’s argument hinges really on the prior negotiations between the parties, the crossovers between the proposed reboot of ER and the pit, and the relatively short period of time between Warner Brothers telling Crichton that ER reboot was dead, and the announcement of the pit. I mean, those facts just don’t look good for Warner Brothers. Warner Brothers could have more easily defended the pit as an entirely new and independent work rather than something derived from ER, had there never been a discussion with Sherry Crichton. At least that’s what I think. Jessica: I agree completely. So the initial framing of the project by Wells and Wiley as an ER reboot and the history of negotiations between Warner Brothers, Wells, and Wiley played a huge role in this case in allowing it to survive the anti-slap stage. It’ll be really interesting to see how this plays out moving forward. Scott: Yeah, absolutely. I think that’s where we’re going to have to leave it for today and see what happens next. So thanks, Jessica, for joining me today. And thank you, the viewer, for tuning in to the briefing. Don’t forget to subscribe and to follow us for more deep dives into the legal side of the entertainment industry. If you enjoyed this episode, please leave us a review and share this episode with your friends and colleagues. 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