The Briefing by the IP Law Blog

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. And if you have any questions about the topics we covered today, please leave us a comment.  

In this installment of The Briefing, Scott Hervey & Jessica Corpuz cover the landmark defamation case Copeland v. Netflix—dissecting the high bar for public figures to prove defamation and the critical concept of “actual malice.” From the Surviving R. Kelly documentary to First Amendment protections, they unpack the legal complexities surrounding public figures and media reporting. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Surviving R. Kelly was a Netflix documentary series that delved into the extensive allegations of sexual abuse, misconduct, and predatory behavior leveled against the R&B singer R. Kelly. Diana Copeland, Kelly’s former personal assistant, claims she was falsely portrayed in the documentary as being essentially a co-conspirator in Kelly’s alleged sex crimes. Copeland sued Netflix and the producers of the documentary, Lifetime and A&E for defamation. There was a recent decision in Copeland versus Netflix, one that emphasized the stringent First Amendment protections for media when reporting on a public figure. How high is the bar for a public figure to prove defamation against the media outlet? And what does the legal concept of actual malice truly entail in such case? I’m Scott Herbie, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpus. Stay tuned as we dissect this significant decision and its implications for producers of programming of this type on this installment of the briefing. Jessica, welcome back. It’s good to have you. Jessica: Thanks so much for having me, Scott. Scott: This one, I think, is going to be quite interesting. I always like defamation cases because there’s always a lot to unpack. Jessica: Oh, they’re very exciting cases. We get this question a lot, and having to educate people about the standard of defamation happens all the time in our world, so it’s good to talk about it. Scott: Yeah, and more and more, you’re seeing defamation claims come out of not just documentaries, but scripted, essentially, fictional docudramas. But today, we’re looking at the R. Kelly documentary. And this is the recent decision in Diana Copeland versus Netflix. And it comes out of the United States district Court for the district of Delaware. That’s a district we don’t hear from very often, but we’re hearing from them today. Jessica: So this decision comes as a result of Netflix’s motion to dismiss. A motion to dismiss in federal court is called a Rule 12(b)(6) motion, and it’s where a defendant moves to dismiss the complaint because the plaintiff has failed to state a claim upon which relief can be granted. In other words, the defendant is arguing that even if everything that the plaintiff claims is true, those claims still don’t provide a legal basis for the court to grant them any relief. Scott: Well said. So this case centers on a lawsuit brought by Diana Copeland, who was the personal assistant for the singer R. Kelly. Following R. Kelly’s arrest and charges relating to sexual abuse, Lifetime Entertainment produced a documentary series called Surviving R. Kelly. Copeland did not participate in the documentary. However, she alleges that an episode contained several false and defamatory statements about her, portraying her as a co-conspirator in Kelly’s crimes. She subsequently sued Netflix, which distributed the series, along with its producers Lifetime and A&E, for defamation. Jessica: Those defendants moved to dismiss Copeland’s claims. Netflix based its motion on the following arguments. First, that the fair report privilege protects the statements. Second, that the statements are non-actionable opinions based on disclosed facts. And three, that Copeland is a public figure and that she failed to plea that defendants published the statements with actual malice. Scott: That’s right. Now, the court said it didn’t need to address the first two arguments advanced by Netflix because Copeland failed to meet the actual malice standard. Jessica: So just a little bit of history here behind the actual malice standard might be good. Scott: Yeah. No, I agree. Why don’t you go for it? Jessica: So the actual malice standard in defamation law originates from the landmark Supreme Court case of New York Times versus Sullivan. That case established that the First Amendment protects even defamatory speech against public figures, as long as the speech was not made with, quote, actual malice. To establish actual malice, a plaintiff must show that a defendant either knew that the statements were false or acted with reckless disregard for whether or not they were true. This standard provides a significant shield for publishers when reporting on public figures involved in matters of public controversy. Scott: Right. And in cases like this, cases where the claim is based on the portrayal of an individual in a documentary or a docudrama, we have seen the court focus on whether the producers deliberately portrayed the plaintiff in the hopes of insinuating a defamatory import to the viewer or whether the producers knew or acted in reckless disregard as to whether the portrayal would be interpreted by the average viewer as a defamatory statement of fact. Jessica: Now, this requirement of establishing actual malice only applies to defamatory statements against public figures. Here, Copeland was Kelly’s personal assistant, hardly a position that one generally considers to be a public figure. So let’s talk a little bit about how and why the court found Copeland to be a public figure in this case. Scott: Sure. So for the purposes of establishing actual malice, there are essentially two types of public figures. The first one is the general purpose public figure, an actor, a movie star, a well-known politician, someone that has achieved widespread fame or notoriety, meaning that their name and actions are matters of legitimate public interest wherever they go and whatever they do. The other is a limited purpose public figure, and that’s someone who voluntarily thrust themselves into the vortex of an existing public controversy or engages the public’s attention in an attempt to influence its outcome. Jessica: In order to determine whether someone is a limited purpose public figure, courts usually ask whether the alleged defamation involves a public controversy, and if so, how involved the plaintiff is in that controversy. Scott: Right. So here the court determined that Copeland was a limited purpose public figure. To reach that conclusion, the court applied that to test whether the alleged defamation involves a public controversy, and if so, how involved was the plaintiff in that controversy? So the court found that the allegations against Art Kelly involved sex crimes and child abuse, and those were undoubtedly a public controversy. Jessica: Yeah, that seems very clear in this case, given the serious nature of those charges and the extensive public attention. Scott: Right. And then the court examined Copeland’s involvement. Despite initially declining to participate in the surviving R. Kelly documentary, she later gave a brief interview on Good Morning, America about her experiences with R. Kelly. In this interview, she discussed making travel arrangements for R. Kelly’s girlfriend and her observations about their behavior. The court reasoned that by voluntarily going on national television to discuss R. Kelly, Copeland voluntarily injected herself into the public discourse surrounding this controversy and invited public attention, comment, and criticism. Jessica: So in other words, her own decision to speak publicly on the matter played a key role in the court’s determination that she was a public figure for the limited purpose of this controversy. Scott: Precisely right. Once the court classified Copeland as a limited purpose public figure, the legal standard required her to plausibly plea that the defendants acted with actual malice. This means she had to demonstrate that Netflix either knew the statements in the documentary were false or acted with reckless disregard as to whether they were true or false. Jessica: So the court here provides some good guidance on how to make allegations of actual malice. The court says that actual malice focuses on the publisher’s mental state. While a plaintiff can sufficiently plea actual malice through using circumstantial evidence, it must be enough for the court to draw the reasonable inference that each of the defendants knew the actionable statements were false or that they had acted with reckless disregard as to whether or not they were true. Scott: That’s right. And the court found that Copeland failed to plausibly plea actual malice. While Copeland alleged that the defendants were reckless, deliberate, and malicious, and that they had access to the truth, yet chose to ignore it, the court considered these allegations to be conclusory and unsupported by sufficient factual detail. Jessica: Copeland did include some specific factual allegations in her complaint. She argued that producing had a bad motive or vendetta against her because she chose to do Good Morning America instead of their documentary. She also alleged that the producers asked two former Kelly employees, who allegedly had personal vendettas against Copeland, to appear on the documentary and that the producers encouraged other former Kelly employees to say negative things about Copeland. Scott: Right. And as to this, the court said that at most this just suggests a bad motive or ill will, but that’s not equivalent to actual malice. The focus of actual malice is the publisher’s state of mind regarding the truth of the statements, not their feelings toward the plaintiff, whether ill or positive. Jessica: Yeah, this is a really important distinction. Even if the defendants harbored negative feelings towards Copeland, that wouldn’t satisfy the actual malice standard if they believe the statements that they published were true. Scott: Right, right. The court further noted that Copeland provided no basis to infer that the defendants seriously doubted the veracity of their sources or the accuracy of the information presented in the documentary. She didn’t allege that the defendants knew their sources were unreliable or had any specific reason to distrust them. Jessica: You know, it seems like the court is emphasizing significant protection the First Amendment affords to publishers when reporting on public figures involved in public controversies, and therefore requiring a really high bar to prove defamation. Scott: Absolutely. So here the Court explicitly stated that the First Amendment shield publishers from lawsuits when they report inaccurately about public figures involved in public controversies, as long as they do so without actual malice. Now, some claim and argue that this protection aims to ensure a robust and open discussion of matters of public concern. Others believe that New York Times versus Sullivan is a bad case, and the requirement of establishing actual malice basically leads to poor reporting and a lack of follow-through on the part of reporters. Jessica: Yeah, I absolutely agree. Here in this case, because Copeland did not plausibly please to actual malice, the court dismissed her defamation claim and her other related tort claims that relied on the same allegations, such as false light, invasion of privacy, and intentional and negligent inflection of emotional distress. The court also dismissed her claim for appropriation of her name and likeness. However, the complaint was dismissed without prejudice, meaning that Copeland has the option to refile her complaint if she can present more substantial factual allegations to support her claims. Scott: Right. That’s a key point for Copeland. While this round didn’t go her the court has left open the possibility of a renewed legal effort with more concrete evidence. Jessica: Absolutely. So what are the crucial takeaways from Copeland v. Netflix for our listeners? Scott: Well, this case really highlights the heavy lift for public figures to win a defamation lawsuit against media entities. The actual malice standards has a very high legal threshold. Plaintiffs must demonstrate that the publisher had actual knowledge of the falsity or had a reckless disregard for the truth. Simple negligence or even ill will just won’t work. Jessica: And the determination of public figure status is very fact-dependent. Voluntarily engaging in public discourse on a matter of public controversy can lead to being classified as a limited purpose public figure, even if that public engagement is limited. Scott: Right. And finally, this case underscores the necessity for plaintiffs and defamation cases involving public figures to plea specific factual allegations of actual malice, rather than just stating legal conclusions. A plaintiff needs to provide details that suggests that the publisher had serious doubts about the truth of what they were publishing. This case serves as a reminder of the robust protections for free speech, or at least the high pleading requirements required, particularly when it comes to reporting on individuals involved in matters of public interest. Jessica: It’s going to be really interesting to see if Copeland will file an admitted complaint here. Scott: Yeah, it will be. We’ll keep an eye on this case and certainly report back. Jessica, thanks for joining me today. Jessica: Thanks for having me. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Jessica 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. And if you have any questions about the topics we cover today, please leave us a comment.

A petition is calling for the Supreme Court to decide on the validity of the “discovery rule,” which allows copyright claims long after the alleged infringement. NBA teams like the Indiana Pacers and Denver Nuggets are even weighing in, worried that social media posts from years ago could be used as grounds for lawsuits. Scott Hervey and Tara Sattler dive into this game-changing copyright case in this installment of The Briefing. Watch this episode on the Weintraub YouTube channel.

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

Did you know the popular Stanley Travel Cup is tied to Stanley Black & Decker? A lawsuit is brewing over trademark rights and branding disputes. Is PMI overstepping, or is Stanley Black & Decker overreaching?  Weintraub Tobin attorneys Scott Hervey and Tara Sattler discuss the legal battle over the iconic cup on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott Most people who have spent any time in a Home Depot, a Lowe’s, or an Ace Hardware are well aware of Stanley Black & Decker Company. They’re a manufacturer of a wide variety of tools and equipment. Well, did you know that the very popular Stanley Travel Cup is manufactured in connection with an agreement with Stanley Black & Decker? Well, I didn’t know of this relationship. Well, it seems that that relationship is soured, and there’s some trouble brewing in that Stanley insulated Stanley Black & Decker, which has filed a lawsuit against the Cupmaker Pacific Market International for trademark infringement and breach of contract. I’m Scott Herbie, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. We’re going to talk about this case and some issues related to Stanley Black & Decker’s claims on this installment of the briefing. Tara, welcome back to the briefing. Tara Hi, Scott. Always great to be here. Scott Do you own a Stanley Cup? Tara I do. I have one sitting right here on my desk out of the screen. Scott I have one as well. Okay, so that’s why I picked this case for us to talk about because I think everybody has a Stanley Cup. Let’s set the stage here. Stanley, Black & Decker, let’s just refer to them as Stanley. They were founded way back in 1843 and built a solid reputation over nearly two centuries. They have a family of trademarks associated with Stanley, many of which have become incontestable. Tara Now, Pacific Market International’s predecessor, Aladdin Industries, started selling Stanley-branded insulated containers in 1913 when William Stanley Jr. Developed the revolutionary vacuum flask. The complaint alleges that beginning in 1966, Stanley and Aladdin entered into a series of agreements which sought to limit Aladdin’s use of the Stanley trademark. Scott These agreements, at least as it’s alleged in the complaint, restricted Aladdin and the company that bought Aladdin, Pacific Market International, we’ll just call them PMI, their use of Stanley to specific goods. Fast forward to 2012, the parties entered into another agreement to address PMIs, then allegedly non-use of Stanley, which exceeded the scope of the previous agreement. This new agreement, according to the complaint, again further limited PMI’s use of the mark to insulate food and beverage containers and placed requirements on how Aladdin and PMI could use the Stanley name in advertising and online. Tara Okay, so then what triggered Stanley to file a complaint? Scott Well, according to the complaint, PMI has been willfully and intentionally disregarding the 2012 agreement. Specifically, Stanley accused PMI of dropping PMI in its company name, that it changed its company name to just Stanley. Stanley also says PMI expanded its product offerings beyond food and beverage containers to include items such as apparel. Tara The 2012 Agreement expressly limits PMI’s use of Stanley solely to use as a trademark to promote and sell insulated and non-insulated containers for food or beverages and carrying cases for transporting the same. Scott Right, that’s what the complaint says. The complaint also accuses PMI of using the domain name www.stanley1913.com without prominently displaying PMI, and also failing to include PMI prominently in advertising materials and on products, including point-of-sale displays. Tara It sounds like Stanley Black & Decker is claiming PMI essentially tried to rebrand themselves as just Stanley in order to capitalize on the brand recognition. Scott Exactly. That’s what the complaint essentially says. That lines up with the allegations that PMI stopped, including PMI and its company name, and changed its name to Jess Stanley. Tara The complaint also goes on to say that PMI’s actions have caused negative press associating Stanley with things like lead poisoning and burn hazards and a recall of 2. 6 million travel months. Scott Right. Let’s break down the specific allegations. Stanley, Black & Decker is claiming that PMI breached the 2012 agreement by using Stanley as a company name, violated restrictions on advertising and product marketing, expanded product offerings beyond food and beverage containers, as was restricted in the 2012 agreement, failed to properly identify itself as PMI in advertising and in press releases, and use social media in a that infringes on Stanley’s trademark rights. Tara The legal claims brought by Stanley based on PMI’s actions are a breach of contract, alleging PMI violated the 2012 agreement, unfair competition, claiming PMI’s actions create confusion among consumers, trademark infringement, asserting PMI is using the Stanley trademark without authorization, or Connecticut Common Law claims. For trademark infringement, management, and unfair competition under state law in Connecticut. Scott Right. And this is the relief that Stanley is seeking. So, they want PMI to stop using Stanley in ways that violate the 2012 agreement or infringe on their trademarks. They want a court order for PMI to comply with the 2012 agreement. They want a court order requiring PMI to issue statements clarifying the relationship between the two companies. They want damages, including actual enhanced punitive damages, as well as attorney’s fees. Tara So then it seems pretty straightforward, doesn’t it? Scott It does, but we all know that disputes are never straightforward, and companies only present one side of the story. So, let me break it down. It appears that PMI actually owns a number of federally registered trademarks that incorporate Stanley. This includes the mark Stanley, and Stanley since 1913 with the winged bear logo for insulated food and and beverage containers, both of which have been registered since 2014 and 2020, respectively. Now, the complaint alleges that PMI breached the 2012 agreement by not using PMI on its products. PMI contends that Stanley is overreaching and trying to prevent PMI from using its registered and incontestable trademarks. Tara The complaint didn’t include a copy of the 2012 agreement, so it is tough to assess the breach of contract claims. But Scott, what are your thoughts on the trademark claims? Scott It’s interesting, right? Stanley owns a number of trademarks as well, but they’re all related to tools and building-type products. I didn’t see any trademarks covering goods that are related to food or beverage containers. And I don’t think that an insulated beverage container or a food container is related to hand tools or power tools. I don’t see Stanley’s trademark claim for those goods, for the insulated cups and the insulated food and beverage goods. However, Stanley does own a trademark for Stanley covering work clothing. PMI’s use of its mark Stanley for clothing could potentially be problematic. Tara In a press release, PMI said the companies have distinct market positions, customer segments, and marketing approaches. PMI claims it has grown Stanley into a global lifestyle brand with a focus on innovative food and beverage containers. In contrast, according to its annual report, Fouled the SEC, Stanley holds itself out as a global provider of hand tools, power tools, outdoor products, and related accessories. PMI claims the difference between these two companies and their brands is pretty stark. Scott Right. I guess PMI said that it will vigorously defend the suit. It’s yet to file an answer. This probably isn’t the last that we are going to hear about this dispute. PMI, the manufacturer of the Stanley insulated mugs and other products, they’ve built their brand like Yeti, as an outdoor lifestyle brand, or at least a lifestyle brand. So they’ve got a lot to protect. And in building their brand as a lifestyle brand, they’ve got a lot of real estate opening up in front of them for brands selling new branded products. They do need to be pretty aggressive in defending their turf or the turf they want to take. Otherwise, they may be just restricted to the insulated mugs and other things and related to insulated mugs and food containers. There’s probably a broader universe of merchandise that they could take advantage of if they weren’t regulated by Stanley, Black & Decker. Tara Yeah, and I wonder, when they entered into this, if they even thought that this potential real estate in front of them was something that they may be interested in. Maybe they didn’t. Now, here we are trying to deal with two different companies in the same name. Scott I really wanted to read a copy of the 2012 agreement. Usually, when a plaintiff alleges a breach of contract claim, they have to file the contract as an attachment to the complaint. I didn’t see that in the filings. I assume they’ll probably file it at some point in time, and then we’ll have an opportunity to read it and see what it says because I am curious what the actual restrictions in the 2012 agreement are because we really are at this point only getting one side of the story. But because I own a Stanley mug, I thought this was an interesting topic to cover. Also, probably, depending on what the 2012 agreement says, there’ll probably be some good takeaways for drafters of agreements of that type. Tara Yeah, I definitely agree. This will be an interesting one to keep an eye on. Scott Okay. Thanks for joining me today, Tara. Tara Thanks, Scott. Scott Thanks for listening to this episode of The Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.  

Joining the discussion is Andy Tan, an attorney at Weintraub Tobin specializing in AI deals and law. He dives into the recent Delaware court ruling in Thomson Reuters v. Ross AI, which may reshape AI copyright law and training practices. The conversation highlights the complexities of AI training and potential market shifts, emphasizing the growing importance of original datasets. Andy also addresses the implications for content creators as the power dynamics in the industry evolve with AI integration.

In the case of Sydney Nicole vs. Alyssa Sheil, a federal district judge ruled that certain vibes and aesthetics can be protected under copyright law. Weintraub attorneys Scott Hervey and Tara Sattler break down this decision and what it means for content creators and brands in the digital age on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In December of last year, we talked about the report and recommendation of a magistrate judge that would hold that a vibe or a look could be protected under copyright law. That report was adopted by the district Court for the Western district of Texas. So, it seems, at least in the Western district of Texas, that copyright law extends to protection of ideas, concepts, or general styles. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, I’m joined today by my partner, Tara Sattler. Given the adoption of the Magistrate Judges recommendations, we are going to discuss the potential implications of this case, Sydney Nicole versus Alyssa Sheil, on the creator marketing industry on this installment of the briefing. Tara, welcome back to the briefing. Tara: Hi there, Scott. Always great to be here. Scott: Good to have you again, Tara. I think this is going to be a real interesting discussion here. As a quick recap, this case involved a dispute between Sydney Nicole, a content creator, and Alyssa Sheil, another creator, accused of copying Nicole’s online content. Sydney Nicole alleged that Sheil’s work closely mimicked her original content, including the themes, style, and presentation of her videos. However, she’ll argue that she was merely drawing on a general model and idea and concept that copyright law has traditionally deemed unprotectible. Namely, this Clean Girl look, a very popular look among content creators and the creator marketing community. Adopters of this look include the likes of Hailey Bieber, Bella Hadid, Selena Gomez and Kim Kardashian, to name just a few. Tara: The federal magistrate judge issued a report and recommendation, which was later adopted by the district court, siding with Nicole. The ruling found that Sheil’s content bore sufficient similarity to Nicole’s protected expression rather than just her general ideas, effectively expanding the scope of what might be considered copyright infringement in the digital content space. Scott: So we’re not going to analyze the decision itself. For that, I recommend our listeners check out our previous episode on this case back in December. We’re going to put a link in the episode description to make it easy for you to find. What I want to talk about today are the critical issues for content creators and brands and the broader creator economy because of this case. So The first thing I want to talk about is that the finding of this case potentially blurs the line between protecting expression and protecting ideas. Tara: I definitely think you’re right, Scott. One of the foundational principles of copyright law is that it protects the specific expression of an idea, but not the idea itself. However, this ruling raises concerns that court may be moving towards an approach that grants de facto protection to certain creative concepts, especially within digital content creation. Scott: That’s right. The similarities in this case were largely thematic or conceptual. I think there’s a chance that this decision risks chilling the very creative development that copyright law has meant to foster. Creators often build upon common trends and esthetics and industry norms, and if those elements can be locked down as protected expression, it could deter new entrance and limit creative evolution. Tara: That’s right. This case could also open the door to secondary liability for brands that work with influencers. If an influencer unknow post content that closely resembles another creator’s work, there is a distinct possibility that brands that sponsor or collaborate with those creators could be held secondarily liable. Scott: Yeah, I can certainly see that under a theory of vicarious liability. So vicarious liability is generally found where the defendant has the right and ability to control the infringing activity, and the defendant derives a direct financial benefit from the infringement. So for example, where a brand hires or contracts with an influencer to create content, and that brand has the ability to review or direct that content, the brand might be found vicariously liable if the influencer infringes somebody else’s vibe and the brand benefits from it, which they will be deemed to because this is an advertisement. Tara: Courts have historically been cautious about extending liability in such cases. But as influencer marketing becomes a dominant advertising strategy, we may see an increased focus on due diligence and compliance by brands to avoid potential legal entanglements. Scott: Beyond the legal risk, this increased exposure to liability could also slow the growth of brand spend within the creator economy. If brands fear legal consequences, they may reduce investment in influencer partnerships or ship their budgets to lower risk advertising channels. Additionally, companies may impose stricter content review processes and demand more extensive indemnification clauses and contracts, which could make influencer deals more complex more time-intensive, and less attractive, particularly for smaller creators. In addition to potentially stifling brand spend, this decision could potentially stifle competition in the creator economy. Tara: I agree. The creator economy really strives on iteration, remixing, and reinterpreting of popular trends. This decision could make competitors wary of engaging in common industry practices out of fear that their work might be deemed infringing. If courts begin interpreting copyright law in a way that grants broader protection to influencer-driven content, it could discourage new creators from entering the market and inadvertently strengthen the position of already established influencers. Scott: Less competition within the creator economy could lead to a less diverse and not so innovative content landscape. New and smaller creators may struggle to gain traction if they fear illegal consequences for inadvertently producing a similar vibey content to an existing influencer. This could concentrate marketing power among top influencers who, having more resources, are better positioned to assert and enforce their copyright claims, even if those claims are nebulous. Tara: However, there could be some potential benefits for certain groups. Established influencers and content creators might benefit from increased legal protections that shield their work from being copied in the future. Scott: True, but this would come at a cost which creates a huge barrier to entry and also would artificially inflate the cost to advertisers. If there are only a handful of creators that would be able to emulate a specific look or vibe, naturally, the cost to work with those creators would increase substantially. Ultimately, while the ruling might provide some advantage for market leaders, it risks stifling creativity and competition, making it harder for emerging creators to build their presence in the industry and making it tougher for emerging brands to use creator marketing to expand their market share. I also think that this case could result in an increase in copyright litigation among influencers. With the rise of social media content creation, this case might embolden more influencers to file copyright claims against their competitors. Could this Can we create an environment where disputes over content style and approach become more litigious rather than fostering creative competition? I mean, we’ve already seen it in this case. Tara: Yeah, we have, and I agree. It or not, we all know that litigation is a business strategy, and if it makes economic sense to use litigation to whittle down the competitive landscape, more litigation is probably going to come. Scott: I agree. As lawyers, we are very much in favor of helping our clients use the law to advance their business endeavors. I mean, that’s what they hire us to do. This finding by the district Court is precedent, at least within the Western district of Texas, and it would be 100% acceptable for any influencer to protect his or her rights and business interests in line with this decision. Let’s talk about how this case might have an effect on platform moderation policies. If more courts begin recognizing this broader form of copyright protection for digital content creators, platforms like YouTube, Instagram, and TikTok may need to revise their copyright enforcement policies. This could lead to stricter takedown policies and increased content takedowns. This could also mean more aggressive use of automated copyright filters, which could result in faster and broader removal of content flagged for infringement and less room for creators to dispute takedown claims before their removal. Tara: You could also see stricter algorithmic policing. Ai-powered copyright detection could become more sensitive, leading to more false positives where non-infringing content, for example, fair use or independently created materials, get flagged and removed. Scott: That’s right. I could also see platforms expanding the use of content fingerprinting technologies, which could prevent certain styles, esthetics, or trends from being used across multiple creators, even if they are not directly infringing. This could result in preemptive blocking becoming more common where content is not even published if it triggers copyright algorithms. Tara: All of this really would have a chilling effect on competition within the greater economy. It will be harder for creators to establish originality, and even where they can, the smaller creators who lack legal resources could It can be disproportionately affected as they may struggle to dispute automated takedowns. Scott: Let’s wrap this up. While this case does not set binding precedent beyond its jurisdiction, there’s a question as to whether or not this is a signal of a potential shift in how courts are now going to analyze copyright disputes in the creator economy space as it may address a esthetic or a vibe. As litigation over digital content continues to grow, creators and brands alike are going to need to pay close attention to how courts balance the need for protection with the imperative to keep creative industries dynamic and competitive. Lawyers like us who advise both brands and content creators within the space are going to have to be aware of this decision and counsel our clients on how to avoid potential liability, and frankly, avoid being the defendant in a lawsuit alleging copyright infringement where the content allegedly infringed is an esthetic or a vibe. Tara: Yeah, that’s absolutely right, Scott. I think the conversations between brands and creators that already exist about approvals over content and direction given by the brand to the creator are only going to deepen when these types of precedents start to get set because both sides have higher stakes and more worries than they did before. Scott: Yeah, I agree. We’ll see if this decision goes up on appeal, but until it does, it is at least precedent within the Western district of Texas. Who knows how other courts might view this decision. We’ll definitely need to have our eye on this ball and advise our clients of this potential risk. Thanks for joining me today, Tara. Tara: Absolutely. It was great to talk to you about this one, Scott. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to 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. If you have any questions about the topics we covered today, please leave us a comment.

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