The Briefing by Weintraub Tobin

The U.S. Supreme Court will hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to register trademarks using the name of a living person without their consent. Scott Hervey and Tara Sattler discuss this on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: The U.S. Supreme Court has agreed to hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to secure registration of a trademark using the name of living persons without that person’s consent. That’s what we’ll be discussing in this installment of the Briefing by Weintraub Tobin. Tara: Last year, the Federal Circuit overturned a decision from the USPTO Trademark Trial and Appeal Board in which the USPTO refused to grant a trademark registration for the mark TRUMP TO SMALL for use on t-shirts. The USPTO refusal was based on Section 2(c) of the Lanham Act, which requires the USPTO to refuse registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”. Scott: After the TTAB affirmed the trademark examiner’s refusal to register, the applicant, Steve Elster, appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that “the government has no legitimate interest in protecting the privacy of President Trump.” Tara: Elster argued that the phrase was “political criticism” and accordingly protected by the First Amendment. The Federal Circuit agreed and overturned the USPTO’s refusal to register. The USPTO appealed to matter to the Supreme Court and suspended applications on all pending applications for trademarks that are critical of public or government officials until the Supreme Court weighs in on the issue. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided. Scott: In its petition to the Supreme Court, the Trademark Offices argued that enforcing the decision conflicts with the plain language of section 2(c) of the Lanham Act. Tara: The Trademark Office also argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent’s — not the refusal to register them — that would ‘chill’ such speech.” Scott: This is an interesting issue for the Supreme Court. Is a section 2(c) refusal to register the same thing as a government restriction on free speech? If the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, trademark examiners will have to make a decision about whether a particular trademark expresses protectable speech under the First Amendment. That isn’t the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue and a case we will be watching. Thanks, Tara.

The U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. Scott Hervey and Tara Sattler talk about this decision on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Andy Warhol Foundation v. Goldsmith Campbell v. Acuff-Rose Music Show Notes: Scott: In a closely watched copyright case, the U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. The decision affirms a previous ruling by the Second Circuit, which found that Warhol’s artwork shared the same commercial purpose as the original photograph taken by photographer Lynn Goldsmith. The Supreme Court seemed to make a great effort to state that its analysis was limited to the specific use alleged to be infringing – the foundation’s licensing of Warhol Prince portrait to Conde Nast – and stated that the court is not expressing an opinion as to the creation, display or sale of the original series of Warhol Prince portraits, and the case itself presents the unique situation of the two works actually competing in the same marketplace. However, this opinion is now the go-to for determining fair use, and it will have a very wide impact. We are going to talk about the impact of this case in this installment of the briefing by Weintraub Tobin. Scott: These are the underlying facts. In 1981 Lynn Goldsmith was commissioned by Newsweek to photograph a then “up and coming” musician named Prince Rogers Nelson. Newsweek later published one of Goldsmith’s photos along with an article about Prince. Years later, Goldsmith granted a limited license to Conde Nast publication – Vanity Fair, for use of one of her Prince photos as an “artist reference for an illustration.” The terms of the license included that the use would be for “one time” only. Vanity Fair then hired Andy Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400. Tara: After Prince died in 2016, Condé Nast contacted the foundation about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince.  Condé Nast learned about a series of orange silkscreen portraits of Prince created by Warhol. This Orange Prince image is one of 16 works that Warhol derived from Goldsmith’s photograph. When Condé Nast learned about the Orange Prince Series images, it opted instead to purchase a license from the foundation to publish it instead. Apparently, Goldsmith was unaware of the orange prince Series until 2016, when she saw it on the cover of Condé Nast’s magazine. And from there, this lawsuit commenced. Scott: The sole issue on appeal to the Supreme Court was whether the first fair use factor, the purpose, and the character of the use weighed in favor of the foundation. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell v. Acuff-Rose Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether   “the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[,]. . . in other words, whether and to what extent the new work is transformative. . .” Tara: This transformative use analysis took on great importance and often eclipsed the other fair use factors. If the work was transformative, it was almost always found to be fair use. Scott: Agreed. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. According to the Second Circuit in the Cariou v. Prince case, the second work did not need to comment on or parody the original work, and the creator of the second work did not need to articulate a transformative intent for one to be found. In response to the Foundation’s argument that the first fair use factor weighs in its favor because the works convey a different meaning or message than Goldsmith’s photograph, the majority of the Court said that this, without more, is not dispositive of the first fact. Rather, the majority focused on the specific use of the infringing work…the licensing to third parties. The majority said, “As portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and the Foundation’s copying use of it share substantially the same purpose.”  The majority went on to say that even though the Foundation’s work adds new expression to the original photograph, in the context of the challenged use, the first fair use factor favors Goldsmith. Tara: So, the focus of the first fair use factor…the purpose and character of the use …has seemingly shifted from a content-based analysis…an examination of the works themselves…to purpose-based analysis….is the purpose of the use of the second work different enough from the first to justify copying. Scott: That’s right. And as you know, this is quite a shift in how the first fair use factor has been analyzed. Tara: That’s true. So, with the first fair use factor now taken into account…and probably being heavily influenced by….the purpose of the use, the cases following this are likely going to delve into when copying is justified. We know from the majority that where the original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the copying is not justified, but that’s it. Scott: Correct. Also, we now need to look at the purpose of each intended use. While one intended use of the second work may justify copying, another may not. Tara: Scott, how do you think this opinion affects appropriation artists and their work? Artists like Andy Warhol, Roy Lichtenstein, Richard Prince, and Jeff Koons. Scott: This opinion will certainly cause some challenges for that category of art and artists. While artwork that appropriates the image of a Campbell’s soup can would probably constitute fair use for a wide variety of commercial purposes, artwork based on a photograph probably would have greater limitations, including possibly the sale of the original artwork itself. Tara: This will also have an impact on the pending copyright infringement cases related to the use of copyright-protected material in the training of AI models. Prior to Warhol, the AI technology companies contended that the use would fall within the established bounds of fair use, but this seems to be an overgeneralization as Warhol will require a detailed analysis of the facts of each case.

While iconic catchphrases from TV and film can hold significant equity, protection of them can be spotty. Scott Hervey and Tara Sattler talk about the protectability of short phrases on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Show me the money. Who you going to call? Go ahead, make my day. These are a few iconic phrases with significant equity. But protection of catchphrases like this are spotty. We are going to talk about the protectability of short phrases on this next installment of the Briefing by Weintraub Tobin. Scott: Iconic short phrases are worth their weight in gold, and the creators of those short phrases would probably like to prevent others from using those phrases under any circumstances. That’s not always possible. Tara: Let’s first talk about quoting a short phrase in another first creative work, such as in a book, TV show, movie, or song. In order for the author of the short phrase to prevent it from being quoted in such a manner, that short phrase would have to be protectable under Copyright law, and that isn’t the case. Scott: That’s right. Short phrases are not protectable under US Copyright law. According to a Copyright Office Circular, short phrases, such as slogans, are uncopyrightable because they contain an insufficient amount of authorship. Even if the Copyright Office will not register short phrase even if they are novel, distinctive, or lends itself to a play on words. Tara: And if a work is not protectable under copyright, then it can’t be the subject of a copyright infringement claim. But that doesn’t mean that all uses of a third party’s short phrase is always ok. Scott: Right. While the quotation of a short phrase in books and movies may not be actionable, the use of “let’s get ready to rumble” in connection with the sale of goods or services could certainly bring a lawsuit. Tara: It likely would. Michael Buffer, the well-known wrestling and boxing announcer, owns a registered trademark for “Let’s get ready to Rumble” and has been quite active in policing its use. Scott: Trademark protection is the best form of IP protection for short phrases. Short phrases are very well suited for trademark protection as long as such phrase is distinctive and are used in connection with goods or services. Tara: Just Do It is a great example of a short phrase that became a well-known trademark. But what about a quote from a movie? Scott: Well, a quote like “ET Phone Home” could be protectable for the merchandise but not likely for the movie itself.

The Trademark Trial and Appeals Board denied an application to register a trademark for essential oil dispensers meant to fill smoking devices with cannabis-based oils. Scott Hervey and Tara Sattler talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show notes: Scott: On May 3, the TTAB issued a precedential opinion denying an application to register a line of essential oil dispensers used to dispense premeasured amounts of cannabis-based oil to a vaping or smoking device for ‘dabbing on the grounds that such products are illegal under the Federal Controlled Substances Act. It’s been known since the legalization of medical cannabis that it’s impossible to get a federal trademark. However, here the Applicant argues that an exemption under the Controlled Substances Act makes these goods lawful under federal law and thus eligible for federal trademark registration. We are going to talk about this case next on the briefing by Weintraub Tobin. Scott: National Concessions Group, Inc sought to register the mark BAKKED and a stylized drop design mark for an essential oil dispenser. The trademark examiner assigned to the application contended that this oil dispenser is drug paraphernalia, used in dabbing, and is illegal under the CSA, and refused registration on that basis. Even though the Applicant argued that the goods were intended for and could be used for legal purposes, the examiner looked at extrinsic evidence, including NCG’s website and advertisements for the products, which supported the examiner’s position that the goods were primarily intended for use with cannabis. Tara: Under Section 1 of the Lanham Act (15 USC 1051),  the owner of a trademark used in commerce may request registration of its trademark on the principal register. Section 45 of the Lanham Act (15 USC 1127), “commerce” means all commerce that may lawfully be regulated by Congress. If the record indicates that the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible, and a refusal under Trademark Act Sections 1 and 45 is appropriate.   Where the identified goods are illegal under federal law, including the federal Controlled Substances Act (CSA), the Applicant cannot use its mark in lawful commerce. Scott: Section 863(a) of the CSA makes it unlawful to (1) sell or offer for sale drug paraphernalia. Drug paraphernalia is defined as “any equipment, which is primarily intended or designed for use in introducing into the human body a controlled substance. Marijuana and marijuana-based preparations are controlled substances under the CSA. The denial of a cannabis-related application under the CSA is not new to trademark practitioners. What makes this case interesting is NCG’s argument that two exceptions in the CSA supported registration. Tara: However, the CSA includes two exceptions to section 863. They state that section 863 shall not apply to any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items. And the Applicant argued that its goods qualified for an exemption because the Applicant is “authorized by” Colorado state law to “manufacture, possess, or distribute” such goods, Scott: This argument was a matter of first impression for the board. That doesn’t happen very often, and while it usually means that the TTAB will address and resolve the matter, in this case, the TTAB said that they do not need to decide the merits of the Applicant’s argument. The TTAB said that even if the Applicant’s interpretation of the exemption is correct, it is not entitled to the registration it seeks. Tara: First, the Applicant’s application was not geographically limited to Colorado. A federal registration would give Applicant presumptive exclusive nationwide rights to its mark in association with the identified goods. Scott: Second, the Applicant’s goods are not legal in other states outside of Colorado. Any authorization by Colorado of Applicant’s manufacture, possession, or distribution of the goods cannot override the laws of the other states or federal law outside Colorado. So, despite some, it’s still the status quo.

Major League Baseball player Aaron Judge went before the Trademark Trial and Appeals Board to block a person’s attempt to secure trademark rights for slogans that play on his name. Scott Hervey and Josh Escovedo discuss this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Josh: Welcome to the Briefing. Today we have some interesting news coming out of the sports world. Aaron Judge, the New York Yankees captain, has successfully blocked a Long Island man’s attempt to secure trademark rights on the judicially themed slogans “All Rise” and “Here Comes The Judge” for apparel. The Trademark Trial and Appeal Board issued a 61-page precedential opinion, stating that Judge and the Major League Baseball Players Association had priority of use over Michael P. Chisena’s use of “All Rise,” “Here Comes The Judge,” and a logo design with an image of the scales of justice superimposed on a baseball field, which all cover various articles of clothing. Scott: According to the TTAB, Judge and the MLBPA presented evidence of third-party licensees that paid royalties to use words and designs referring to Judge, often including judicial terminology, on apparel since August 2016. Chisena did not use the marks until he filed the applications in July and October 2017, which worked against him. Josh: That’s right, but Chisena argued that Judge and the MLBPA’s prior use of “All Rise” and “Here Comes The Judge” did not function as source- indicating trademarks and were only meant to “engender acknowledgment of, enthusiasm and overall support” for Judge. But the TTAB stated that the consuming public recognizes the subject slogans and symbols carrying judicial connotations as pointing to only one baseball player on one major league team. Scott: Chisena claimed that he was not a baseball fan and had no knowledge of Judge until “some point in 2017.” He said that his creation of the marks in question between 2012 and 2015 stemmed from his interest in developing a new sports product. Josh: Still, Judge and the MLBPA argued that Chisena adopted his marks in bad faith. The TTAB noted in its opinion that Chisena’s “timing, and choice of marks and colors are indeed eyebrow-raising, and his protestations of good faith strain credulity.” Scott: The TTAB also stated that it was the perception of the relevant public, i.e., baseball fans, rather than the parties’ intent that determined whether a designation functioned as a trademark. Josh: Overall, the TTAB deemed the evidence sufficient to negate Chisena’s protestations of good faith, and Judge and the MLBPA were able to successfully block his attempt to secure trademark rights on the slogans. What do you think, Scott? Is this the right outcome? Scott: So I’d say this was the right outcome. It’s definitely an interesting dispute, Josh. Thanks for sharing. Josh: Thanks, Scott.

The Universal Music Group is accusing a TikTok creator of copyright infringement after they published an AI-Generated song that was made to sound like a Drake and Weeknd collaboration. Scott Hervey and Josh Escovedo discuss this dispute in this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Middler v. Ford Astley v. Matthew Hauri, pka Yung Gravy Show Notes: Scott: Last week, a new Drake and Weeknd collaboration disrupted the Internet. The only problem is that it wasn’t a Drake and Weeknd collaboration, after all. The song “Heart on My Sleeve” was written and produced by TikTok user ghostwriter977. The vocals for “Heart on My Sleeve” were generated by artificial intelligence, made to sound like Drake and The Weeknd. UMG, the record label behind the artists, is furious and is pushing music streamers to block AI tools from training on its artists’ melodies and lyrics. While “Heart on My Sleeve” was ultimately removed from Spotify due to a copyright issue…the song had an unauthorized sample in it…we could see more original AI fake Drake songs from ghostwriter 977, and there may not be anything UMG or the artist can do about it. We are going to talk about this next on the Briefing by the IP Law Blog. Scott: The music industry sees generative AI tools that can create music that sounds like a specific artist, as a real threat to business. In response to the fake Drake AI song, UMG issued a statement publicly encouraging digital service providers not to let generative AI tools train on music issued by their artists. UMG considers this a violation of copyright law. Josh: As we have previously covered, this issue-whether the training of an AI tool on existing copyright-protected works constitutes infringement or is fair use – is currently being litigated in a number of cases. Whether the initial content-copying AI tool does as part of its learning process constitutes infringement or protectable fair use will have a profound effect on the future of AI. The court’s focus will be on whether this copying is part of an overall transformative process to be weighed against the commercial impact the tool has on the applicable industry. Scott: Focusing on the output, most, if not all, of those cases deal with generative AI platforms that create visual works. Here we are talking about the creation of a musical work where the song itself was original, written by ghostwriter977.   And since UMG based its takedown on a small sample audio tag included in Heart on My Sleeve, it seems fair to assume that the original components of the song itself probably are not infringing. Josh: “Heart on My Sleeve” wasn’t the last of the Fake Drake. Another Fake Drake AI track recently dropped. The track “Winter’s Cold” was posted to Soundcloud on April 18, featuring the artificial vocals of Drake. The track has already garnered over 120,000 listeners on the platform. This, I am sure, has the record industry strategizing on how to put this all back in the bottle. And I assume further legal maneuvering is in the works. Scott: I agree. I suspect the next step could include the artist filing a right of publicity claim. Josh: California’s right of publicity statute is Civil Code section 3344 prohibits the use of another’s name, voice, photograph, or likeness on or in products, merchandise, or goods or for purposes of advertising or selling…..such products, merchandise, goods without such person’s prior consent. California also has a common law right of publicity that’s a bit broader than the statute. The Ninth Circuit has adjudicated two right of publicity cases involving sound-alike recordings. Scott: That’s right. The first was Middler v. Ford, in which Ford hired a singer who sounded like Bette Midler to sing a recording from one of Midler’s albums in a TV commercial. Middler sued for violation of her right of publicity…both under the civil code and under common law. The trial court initially granted Ford its motion for summary judgment. On appeal, the 9th Circuit addressing Middler’s common law claim held that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California. Josh: However, this holding from the Midler case doesn’t seem to be of much use to either UMG or Drake. The fake Drake AI songs were not being used to sell products. Also, the Midler court’s analysis of the interplay between the First Amendment and Midler’s publicity claim seems relevant here. The Midler court noted that if the  purpose behind the use of a person’s identity is “informative or cultural,” the use is immune; if the use serves no such function but merely exploits the individual portrayed, immunity will not be granted.” Scott: There is another part of the Midler case that will not be favorable to the record companies and recording artists; that is the court’s review of the application of Civic Code section 3344. This section prohibits the use of another person’s “name, voice, signature, photograph or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling…..such products, merchandise, goods without such person’s prior consent”  The 9th circuit pointed out that Ford did not use Midler’s name or anything else whose use is prohibited by the statute. The voice Ford used was that of the sound alike. Josh: I think the biggest problem facing UMG or any recording artist who wants to sue is based on an original generative AI sound recording that has “sound-alike” vocals os Section 114(b) of the Copyright Act. As we previously discussed in our review of Rick Astley’s lawsuit against Yung Gravy’s use of a sound alike, Section 114(b) permits “soundalikes”. A publication by the US Copyright Office specifically says that  “under U.S. copyright law, the exclusive rights in sound recordings do not extend to making independently recorded “sound-alike” recordings. Scott: And if the intent of the scope of Section 114(b) isn’t clear enough from that, the notes to Section 114 by the House Judiciary Committee provide as follows…”Subsection (b) of section 114 makes clear that statutory protection for sound recordings extends only to the particular sounds of which the recording consists and would not prevent a separate recording of another performance in which those sounds are imitated…. Mere imitation of a recorded performance would not constitute a copyright infringement, even where one performer deliberately sets out to simulate another’s performance as exactly as possible. So, subject to the open question about whether the AI training process constitutes infringement, as long as the music and lyrics are completely original…no uncleared samples….then a generative AI sound recording that has “sound-alike” vocals is probably completely legal.

Popular food chains Chipotle and Sweetgreen settled a trademark dispute relating to Sweetgreen’s use of ‘CHIPOTLE’ on its menu. Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: And I’m Josh Escovedo with Weintraub Tobin. Over the course of a few days, Chipotle and Sweetgreen engaged in a trademark skirmish concerning the CHIPOTLE mark and settled the matter just a few days later. That what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: Today we’re going to discuss a recent legal dispute between two fast-casual restaurant chains, Chipotle and Sweetgreen. In short, Chipotle filed a lawsuit in California federal court against Sweetgreen, accusing the rival chain of infringing its trademark by selling a “Chipotle Chicken Burrito Bowl” that Chipotle claims is directly competing with Chipotle’s own menu item. Scott: That’s a bold move by Chipotle. What exactly are their claims? Josh: Chipotle alleges that Sweetgreen has been infringing its well-known Chipotle trademark since March 30 by selling a menu item with very similar ingredients to Chipotle’s own popular burrito bowl and incorporating the CHIPOTLE mark into the name of the item. By now, you may be wondering, how exactly is Sweetgreen infringing on Chipotle’s trademark? Scott: Well, according to the complaint, Sweetgreen’s menu item is listed with a capitalized “Chipotle” or sometimes in all caps on its website and in its social media posts on Instagram or Twitter. In addition, some ads for the allegedly infringing item utilize a font or background color which Chipotle claims is eerily similar to Chipotle’s font and background color. Josh: So basically, Chipotle is claiming that Sweetgreen is trying to create confusion among customers by falsely creating an impression that its product is somehow sponsored or authorized by Chipotle. At the very least, Chipotle is claiming that Sweetgreen has inadvertently created a situation that is likely to create consumer confusion. Scott: That’s right. Chipotle says that Sweetgreen’s actions are likely to cause confusion among customers, and that Sweetgreen is wrongfully profiting from and trading off of Chipotle’s valuable goodwill and reputation. Josh: I see. So, what was Chipotle seeking through this lawsuit? Scott: Well, Chipotle alleged three Lanham Act violations along with a claim under California’s Unfair Competition Law and sought injunctive relief and treble damages, according to the complaint. Josh: Those are some serious allegations. But there’s been a recent development in this case, hasn’t there? Scott: Yes, just days after Chipotle filed the lawsuit, Sweetgreen agreed to change the name of its new “Chipotle Chicken Burrito Bowl” to “Chicken + Chipotle Pepper Bowl” as part of a tentative agreement between the two companies to resolve the suit. Josh: That’s interesting. This really underscores the perils of adopting a mark in the restaurant industry that is also a popular ingredient. Here, it seems to have worked out for Chipotle through a quick resolution. I do question however how this would have played out if it had been litigated. I’m not confident Chipotle would have walked away victorious. What do both parties have to say about the resolution, Scott? Scott: According to statements provided to multiple news outlets, Sweetgreen says it made the change “to focus on business and continue serving our guests without distraction,” and Chipotle says it is “pleased that Sweetgreen has chosen to amend their materials in a manner that protects our trademarks and intellectual property.” Josh: So, it seems like both companies are satisfied with this resolution. Scott: At least to some extent. Now both parties can move forward with their business without the distraction and expense of litigation. I’m also willing to bet that Sweetgreen isn’t going to sell fewer bowls as a result of the name change. Josh: Absolutely. Litigating this issue would have been a pure matter of principle with little to gain at the end. Scott: I agree, Josh. Thanks for sharing.

Journalist Bob Woodward asked the court to dismiss former President Trump’s copyright infringement claim regarding Woodward’s audio book “The Trump Tapes,” which consists of 20 raw audio interviews with Trump. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Trump v. Woodward Taggart v. WMAQ Channel 5 Chicago Show Notes: Scott: Veteran investigative reporter Bob Woodward conducted an audio interview of former president Donald Trump for Woodward’s book, Rage. Woodward later released these recordings as a separate audiobook, and Trump claimed that Woodward did not have his permission to release these audiotapes as a separate audiobook and sued Woodard and his publisher for, among other claims, copyright infringement. Woodward filed a motion to dismiss, arguing that Trump’s complaint is without legal merit. We are going to talk about this. Scott: These are the facts according to Trump’s complaint against Woodward and his publisher, Simon and Schuster. Woodward sought and obtained President Trump’s consent to be recorded for a series of interviews with President Trump. Woodward interviewed Trump, both in person and over the phone, on numerous occasions during 2019, mostly during his term as president. Trump contends that he did not give permission for the recordings to be released as audio recordings and claims that he owns the copyright in the entire sound recording or at least Trump’s response to the interview questions. Josh: We previously covered this when Trump initially filed his complaint, and we questioned the merits of his copyright claim. Did Woodward’s motion to dismiss track our analysis? Scott: Woodward did raise one of the same as us – that Trump lacks any copyright ownership in the answers to interview questions. His motion even cites Taggart v. WMAQ Channel 5 Chicago, which we noted in our story. In that case, a Chicago television station videotaped a prison interview with a convicted sex offender in connection with a report on the lax regulation of summer camps. Taggart alleged that he had requested that the tape not be used in any manner, and when WMAQ broadcast an excerpt, he sued for copyright infringement and other claims. In ruling on the station’s motion to dismiss, the court held that Taggart did not have a copyright interest in unprepared and spontaneous utterances during an interview and dismissed his copyright claim. The basis of this finding is the Copyright Act’s lack of protection for ideas. While courts have recognized common law protection for the spoken word, according to the Taggart holding, courts have not and cannot recognize a proprietary interest where there is no tangible embodiment of the expression of an idea Josh: To qualify as an author under the Copyright Act, one must supply more than mere direction or ideas. According to the Supreme Court in Community for Creative Non-Violence v Reid, “an author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Scott: And based on that, the court found the responses given by Taggart “are not an expression of an idea for the purpose of copyright law.” On a more practical level, the judge noted that the granting of protection for the answers to questions “gathered in the daily task of the news reporter would essentially bring the industry to a halt.” Josh: Woodward raises a few additional grounds in his motion to dismiss. One other ground is that Trump has failed to register a copyright in the work alleged to be infringed prior to filing suit. Section 411(a) of the Copyright Act says, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Woodward contends that couching claims as “Declaratory Relief Regarding Ownership of Copyrights” and “Accounting” under “the Copyright Laws of the United States does not get Trump out from under the registration requirement. Scott: That’s right. I don’t know how challenging this issue will be to overcome. One additional challenge to Trump’s copyright ownership is that his responses are government works. Section 105 of the Copyright Act provides .that “copyright protection…is not available for any work of the United States Government,” which is defined as any “work prepared by an officer or employee of the United States Government as part of that person’s official duties”  Trump, as president, was an employee of the federal government and Woodward contends that speaking with reporters is clearly conduct ‘of the kind [a President] is employed to perform.'” Josh: Here, the Interviews all occurred when Trump was in office, and Woodward alleges were clearly “part of his official duties.” Woodward contends that allowing federal employees to own a copyright interest in their portion of an interview would give President Trump and other public officials interviewed by the press the right to sue over any critical or unwelcome use of their statements. Since copyright equates to legal control over expression and requires journalists to negotiate authorship rights away from interviewees, particularly public officials, would invite contractual censorship of criticism and chill open discourse. Scott: Woodward also contends that the use of Trump’s responses, to the extent Trump does have a copyright interest in the recordings, the use constitutes fair use in that it is news reporting. Woodward cites to a Second Circuit case that held that Bloomberg’s unauthorized publication of an entire recorded earnings telephone call led by Swatch executives was fair use based on the rationale that “in news reporting,” the “need to convey information to the public accurately may, in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work without alteration.” Josh: It does seem that Woodward raised some very compelling points in support of his motion to dismiss. Scott: I have to agree Josh; Woodward’s motion does seem extremely strong. We will see what former President Trump has to say.

The Supreme Court has finally heard arguments in the VIP Products v. Jack Daniels case, in which the whiskey company accused the dog toy maker of infringing its trademark with its whiskey bottle chew toy. Scott Hervey and Josh Escovedo discuss this dispute in the episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: and I’m Josh Escovedo with Weintraub Tobin. The Supreme Court has finally heard arguments in the much talked about VIP Products v. Jack Daniels matter concerning the balancing of free speech under the First Amendment and trademark rights under the Lanham Act. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: As many of you know, Jack Daniel’s is claiming that the “Bad Spaniels” dog toy made by VIP Products infringes JD’s trademark, as it replaces key elements of their whiskey bottle with dog and poop references. Perhaps what is most interesting about this case is that it requires The Supreme Court to try to figure out what test is needed to balance trademark rights under the Lanham Act and Free Speech under the First Amendment. Scott, let’s tell the readers about the arguments. Scott: Sure. Jack Daniel’s argues that VIP’s dog toy is trademark infringement that needs to be reined in so customers don’t presume the liquor company is associated with the product. So, the main question is whether the so-called Rogers test should apply. The Rogers test provides First Amendment protections to works with others’ trademarks on them, so long as the work is considered “artistically expressive” and does not “explicitly mislead” consumers. As you know, the Ninth Circuit had said VIP’s toy met the test. Josh, can you tell our listeners about the government’s stance on the Rogers test? Josh: The federal government wants to get rid of the Rogers test, calling it “inconsistent” with the Lanham Act. Plain and simple. But what wasn’t so plain was the fact that the justices ran through various colorful scenarios with attorneys for Jack Daniel’s, VIP Products, and the government trying to figure out what test is needed to decide whether a work is protected by free speech or infringes trademarks, leading to a lot of laughter and some odd exchanges. They even discussed bad advertising, drunken animals, urine sales, and dog ownership. Scott: It was definitely a lively exchange. Josh: Definitely. Justice Samuel Alito called it unlikely that “any reasonable person” would look at the dog toy and assume Jack Daniel’s had approved it, leading to a long back-and-forth encapsulating much of Wednesday’s oddness. They even discussed the controversial Nationwide Insurance commercial that featured a child who was revealed to be dead. Scott: It’s fascinating to see the Supreme Court justices discussing such odd scenarios. I can’t wait to see the outcome of the case and how the Court will deal with the conflicting interests. Thanks for sharing, Josh. Josh: Of course. Thanks, Scott.  

The Anne of Green Gables Licensing Authority is accusing a New York theater production company of trademark infringement for producing a show titled ‘Anne of Green Gables – The Musical.’ Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Anne With An E, Limited Liability Company v. Anne of Green Gables Licensing Authority Inc. Hermes v. Rothschild Show Notes: Scott: Copyrights have a finite lifespan and after the copyright term expires the works fall into the public domain. That’s not the case with trademarks which can last indefinitely. Anne of Green Gables was a children’s book originally published in 1908. This means that the work is now in the public domain. However, Anne of Green Gables Licensing Authority owns various trademarks for Anne of Green Gables. What happens when the right to create a musical interpretation of the public domain work and use Anne of Green Gables in the title runs headlong into the trademarks owned by the Licensing Authority. Are the producers who created a new musical interpretation of Anne of Green Gables, actually prohibited from using the name of the work in the title of the musical. We are going to talk about this on the next installment of the briefing by the IP law blog Scott: Anne With An E, LLC is a New York theatrical production company that is developing the musical, ‘Anne of Green Gables: A New Musical,’ based on the Public Domain Novel, ‘Anne of Green Gables’ by L.M. Montgomery. The musical features new original dialogue or book and music. Anne of Green Gables Licensing Authority is a Canadian corporation, jointly owned by the Province of Prince Edward Island (the location where the original novel took place) and the Heirs of the books author. Apparently, this entity claims to be the sole licensing agent for the trademark ANNE OF GREEN GABLES in the United States and abroad and claim to have licensed the use of the ANNE OF GREEN GABLES trademark in connection with a musical production, titled, ‘Anne of Green Gables: The Musical’ which has been continuously produced since 1965. Apparently, Anne of Green Gables Licensing Authority has been threatening Anne with an E with a potential trademark infringement claim ever since Anne with an E mounted its first production in 2018 and apparently in December 2022, escalated the situation by also sending a draft copy of a complaint. Anne with an E filed a complaint for declaratory relief with the Southern District of NY in February of this year, Josh: I can understand Anne of Green Gables Licensing Authority obtaining a trademark registration for ancillary merch but how did they get a trademark registration for the musical. That would be the title of a single artistic work which is not protectable as a trademark. Scott: That’s correct. The trademark examiner assigned to the trademark application refused to register the mark on that basis many, many times. The applicant tried to argue that the mark is used in association with a number of different productions, all of which are based upon the same general of the public domain work, but, all of which are different. The examiner cited to the TTAB decision in In re Posthuma, provides that where the mark identifies the title of a live theater production, such a theatrical production is a single creative work even if individual performances may have some variations. Eventually the applicant pointed to various different productions, produced by different production companies, each with a book and different lyrics and arguing that this makes them more like a series then a single work. Josh: And apparently the trademark examiner accepted this argument because the mark because registered. Scott: That’s right. I see a problem with this. The Licensing Authority didn’t claim that the other productions using the title ‘Anne of Green Gables: The Musical’ made use of the title was under their authority, thus failing to meet the use in commerce requirement that it be the applicant who uses the mark Josh: And if the registration is revoked, then the basis of its trademark suit goes away. Scott: That’s right. But still. I think this goes back to one of the reasons why trademark rights are not recognized in a single work of authorship. When a work falls into the public domain, others would have the right to reproduce the literary work. However, if the title to the work enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published only under a different title. Josh: And I can see that applying the Rogers test might not provide immediate relief. While the first prong, artistic relevance, is satisfied, but the second prong… whether the use explicitly misleads as to the source or the content of the work might not be so easy to overcome, especially in the 2nd Circuit where they apply the Polaroid factors to determine this factor. Scott: Right, the question for that factor would be whether the likelihood of confusion here was.  “particularly compelling to outweigh the First Amendment interest recognized in Rogers. And, as we saw in the Metaberkin case, this probably isn’t a question that can be resolved on a motion to dismiss. Josh: Courts will protect the title of works that have acquired secondary meaning through the common law unfair competition claims of passion off and misappropriation. And while the original book may have acquired secondary meaning, despite the long running nature of the original musical, it’s hard to say whether it, the original musical, acquired secondary meaning in its title.