The Briefing by Weintraub Tobin

There is some concern that the Supreme Court’s decision in Andy Warhol Foundation v. Goldsmith will harm the documentary filmmaking community. Scott Hervey and Tara Sattler discuss the implications of this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: When Andy Warhol Foundation versus Goldsmith was pending before the Supreme Court, a group of prominent documentary filmmakers, including the makers of The Last Days of Vietnam, The Invisible War. Won’t you be my neighbor? And RBG filed an amicus brief and claimed that the Second Circuit’s proposed change to the way fair use is analyzed could, quote, devastate now that Warhol has been decided, it’s clear that the way in which fair use is now to be determined will have an impact on documentarians who rely on the use of unlicensed third-party materials as part of conveying their story. We are going to talk about this on this installment of The Briefing. We covered the Supreme Court’s decision in Andy Warhol Foundation versus Goldsmith in a previous episode, but let’s hit on some highlights relevant to the impact of this decision on documentarians. The decision changes the way fair use is analyzed. In determining fair use, four factors are examined. The first fair use factor examines the purpose and character of the use. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell versus Acuffro’s 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 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. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. If the work was transformative, it was almost always found to be fair use. The importance of transformativeness all changed with this opinion. The fact that the second work conveys a different meaning or message from the first work without more is not dispositive. Now, the focus of the first fair use factor, the purpose and character of the use, has shifted from a context-based analysis to a purpose-based analysis. Scott: That’s right, Tara. Now, the first fair use factor will analyze whether the purpose of the use of the second work is different enough from the first to reasonably justify a copying. So now let’s talk about how this decision will and will not change how documentarians can use third party footage under fair use. So documentarians frequently use third party footage in order to comment on or critique the footage itself. Section 107 of the Copyright Act provides that the fair use of a copyrighted work, including such use for purposes such as criticism and comment, is not an infringement of copyright. Tara: At oral argument in Warhol, both Goldsmith and the US. Government agreed that commenting on the original work, criticizing it, or otherwise shedding light on the original work is the most straightforward way to establish fair use. Scott: Right. In its opinion, the Supreme Court reasoned that where the use is for commentary or criticism, a copying of the first work may be justified because copying is reasonably necessary to achieve the user’s new purpose. Also, the Court observed that criticism of a work ordinarily does not supersede the objects of or supplant the work. Rather, it uses the work to serve a distinct end. Tara: But what about uses that are not for the purpose of criticism or commentary, but for a biographical purpose? Documentarians often use third party footage as a biographical anchor to convey a biographical fact about the subject. Would such uses reasonably justify the use of the underlying material? Scott: That’s a great question, Tara. Let’s take, for example, the copyright infringement case filed by the rights holders to The Ed Sullivan Show against the producers of the Broadway hit Jersey Boys. That’s the case of Sofa Entertainment versus Dodger Productions. In that case, Sofa Entertainment took issue with a segment in the play where one of the band members speaks to the audience directly about how the band was coming of age during the British invasion. And then he speaks to the audience, or as he’s speaking to the audience. A clip of The Ed Sullivan Show is shown where Sullivan introduces the band, and then after that, the stage actors perform in. Tara: Sova the 9th Circuit said that using it as a biographical anchor, the producers put the clip to its own transformative ends, and that being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music. Scott: The 9th Circuit’s analysis of the purpose of the use of the clip the Ed Sullivan clip was contextual. Had the 9th Circuit engaged in a purpose-based analysis, this factor may have favored the plaintiff. Given that, there is a strong argument that the purpose of both uses are extremely close the original being to introduce the band to the Ed Sullivan audience, and the purpose of the second use being to show the introduction of the band on The Ed Sullivan Show. Tara: Right, and prior to the US. Supreme Court’s decision in Warhol, it was well established that the use of third-party content to serve as a biographical anchor is fair use. Scott: That’s true, and I gave that advice previously many times to documentary producers. However, it’s not so clear that that will always be the case in light of Warhol going forward. While a different contextual purpose may be relevant, as you said earlier, it’s no longer dispositive. Further, it may be challenging to determine when the first factor would favor copying, since the determination of whether the second use shares the purpose or character of the original work or instead has a further purpose or different character is a matter of degree, and that degree of difference must be balanced against the commercial nature of the use. As said the Supreme Court in Warhol, and there is scant little case law to provide guidance here. Tara: The Warhol Court focused significantly on balancing the first fair use factor against the copyright owner’s right to create derivative work. The court said that Campbell cannot be read to mean that the first fair use factor weighs in favor of any use that adds new expression, meaning or message. Otherwise, transformative use would swallow the copyright owner’s exclusive right to prepare derivative works. Perhaps the extent to which a secondary work could or could not be considered a derivative of the first is part of the measurement of the degree to which the second work has or doesn’t have a further purpose or a different character. Scott: I agree with that. I do think that whether or not the allegedly infringing work could be considered a derivative of the original will be part of the measurement of the degree to which the second work has or doesn’t have a further purpose or a different character. In light of the refocusing of the first fair use factor, the remaining fair use factors also take on renewed importance, and they will require a deeper inquiry post Warhol. So what might this look like for a documentarian who uses a third party clip as a biographical anchor? Well, some guidance may be found in Sofa Entertainment, the Ed Sullivan case that we just talked about, where the clip is used and where it conveys mainly factual information. The second factor, the nature of the copyrighted work, will favor the documentarian. Since factual information is not as close to the core of intended copyright protection as for the third factor, the amount and substantiality of the portion used. If the clip used is short, and in Sofa it was 7 seconds, then its use may be quantitatively insignificant. Tara: But what about that fourth factor, the one about market harm? Generally, a documentary that uses the clip as a biographical anchor will not be a market substitute for the clip’s source. However, what if the plaintiff actively licensed its content for a fee? Scott: In Bill Graham archives versus Dorling Kinserly, the court said that the market harm suffered due to the loss of license fees was not sufficient to sway the fourth factor, where the use of the images was contextually transformative. However, in Warhol, the Court of Appeals found that the Warhol Foundation’s commercial licensing of its image encroached on Goldsmith’s protected Market to license her photographs. Tara: Given the shift in how the first fair use factor is analyzed, even if the purpose of use is different in a situation where the plaintiff licensed its content, would the use be different enough to reasonably justify a copying? Scott: So that’s the million-dollar question, and that one will probably have to be worked out in litigation in lower courts. And while Warhol does not seem to impact a documentarian’s ability to use third party content for criticism and commentary, it does complicate the ability of a documentarian to use third party content for biographical purposes. This uncertainty isn’t good for documentarians or the consuming public that enjoys compelling documentaries. Tara: Yeah, I think that’s true. I think in the documentaries and docuseries that we watch, it really helps to draw in the viewer and attract the viewer when clips such as The Ed Sullivan Show or other well-known pop culture icons can give context to a story that the documentary or the docu-series is telling. Scott: Right. And it definitely makes it more difficult for the likes of you and I to provide guidance to our clients on whether or not they can use third party content. Because right now it’s a big I don’t know, or it really may be risky and there’s no clear path that there’s no clear path yet. Tara: Yeah. Anything that relies on a specific degree where there isn’t a clear line differentiating the appropriate and inappropriate degree, that really creates a lot of work for lawyers and a lot of risk analysis that we’re going to be doing. Scott: Right. Really, this is going to have to be fleshed out in future litigation. And I know I don’t want my clients to be part of that litigation. So, I think, unfortunately, this is one where analysis, or at least the advice given, will have to be a little bit more conservative until there’s lower court litigation, giving us some milestones that we can rely on, especially where the plaintiff has a licensing program where they actively license their clips. I think it’s just very risky, but we’ll see what litigation will come because it certainly will come from this. Tara: Yeah, absolutely. Thanks for talking to us about this. Scott: Thanks, Tara. Tara: Thanks for tuning into this installment of the briefing. We have a lot more content like this over a hundred more episodes wherever you find podcasts or on YouTube, so please subscribe like us or leave us a comment.

The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce” occurs in the United States. Scott Hervey and Tara Sattler talk about this case on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: Extraterritorial? Not quite for the Lanham Act. The U.S. Supreme Court recently decided that trademark infringement claims under the Lanham Act only apply if the infringing “use in commerce” occurs in the United States. This is what we will be discussing on this installment of the Briefing. Scott: We talked about the facts of this case, Abitron Austria GmbH, v. Hetronic International, Inc., and the holdings of the lower courts on an earlier episode of “The Briefing,” so Tara, why don’t you give us a quick reminder of the facts and how this case came before the U.S. Supreme Court. Tara: Sure, Hetronic International, Inc., is a U.S. company that manufactures radio remote controls used to operate heavy-duty construction equipment. Abitron, the defendant, distributed Hetronic’s products in Europe. When the distributor relationship ended, Abitron started manufacturing their own products that were identical to Hetronic’s and that included the Hetronic trademark. The defendant sold their products with the Hetronic branding in Europe, so Hetronic sued Abitron. A jury in the Western District of Oklahoma awarded Hetronic over $100 million in damages, most of which tied to the defendants’ trademark infringement based on sales outside of the U.S. as 97% of the defendant’s sales were made “in foreign countries, by foreign companies, to foreign customers, for use in foreign countries”. On appeal to the 10th Circuit, the defendants insisted that the Lanham Act’s reach for trademark infringement doesn’t extend to their conduct because their conduct generally involved foreign defendants making sales to foreign consumers. And now, the Supreme Court has remanded the case and held that liability for trademark infringement under the Lanham Act extends only to infringing “use in commerce” in the United States. Scott: The Lanham Act governs federal trademark and unfair competition disputes. It imposes liability on any person who uses in commerce any . . . “colorable imitation of a registered mark,” or “[a]ny person who . . . uses in commerce any” word, false description, or false designation of origin that “is likely to cause confusion . . . or to deceive as to the affiliation,” origin, or sponsorship of any goods. The Act defines commerce broadly as “all commerce which may lawfully be regulated by Congress. In the U.S. Supreme Court’s holding, they focused specifically on the “use in commerce” language in the Lanham Act, in holding that “use in commerce” must occur in the United States in order to constitute trademark infringement under the Lanham Act. Tara: That’s right. The focus on “use in commerce” is different than the holdings that some of the other federal circuits have taken on the extraterritorial application of the Lanham Act. Some federal circuits looked instead to whether the foreign activities of foreign defendants have a “substantial effect” on U.S. commerce. In fact, the only other Supreme Court case that addresses the extraterritorial application of the Lanham Act also discussed the effects of the alleged infringement on U.S. commerce. Scott: That case is Steele v. Bulova Watch Co. and was decided in 1952. In that case, Steele, a Texas man, procured component parts from the United States and Switzerland, assembled watches in Mexico City, and branded them  ‘Bulova’. The Bulova Watch Company’s Texas sales representative received numerous complaints from retail jewelers in the Mexican border area of Texas whose customers brought in for repair defective ‘Bulova’ watches, but upon inspection, it often turned out that the watches weren’t Bulova watches at all. The Supreme Court held that Steele’s activities were covered by the Lanham Act and looked to the impact of Steele’s activities on U.S. commerce. Tara: So, the Supreme Court made sure to distinguish the Abitron case from the Steele case in its recent decision. The court clarified that the Steele case “implicated both domestic conduct and the likelihood of domestic confusion” as compared to the Abitron case, where 97% of sales were made in foreign countries, to foreign buyers, for use in foreign countries. Scott: This case will have broad implications for U.S. companies that sell products overseas, and best practices will probably lead to the registration of trademarks in strategic international jurisdictions. And it seems like this case would also raise concerns for foreign companies who sell products online in the U.S. Tara: That’s right. And Justice Jackson wrote a concurring opinion on that point, suggesting that “use in commerce” in the U.S. would not necessarily require a company to be physically present in the U.S.

The subjects of a documentary have dropped their long-standing defamation lawsuit against Netflix and producers. Scott Hervey and Jamie Lincenberg talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show notes: Scott: As of last week, a longstanding lawsuit against Netflix and producers, Doc Shop Productions, has been dropped. In a previous episode of The Briefing, we discussed the then-current status of the case where seven subjects of the Netflix docuseries “Afflicted” sued Netflix for claims of defamation, fraud and invasion of privacy.  We are going to take a look at this dismissal on this installment of the Briefing by Weintraub Tobin. I am Scott Hervey of Weintraub Tobin and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to The Briefing. Jamie: Thank you, Scott. I’m happy to be here. Scott: Jamie, can you provide a quick recap on the lawsuit. Jamie: Sure.  the seven-part series “Afflicted” explores the world of chronic diseases, following a number of patients and their loved ones suffering from the same. The show casts a skeptical eye on some of the subject’s illnesses and those subjects then brought claims accusing Netflix and the producers for editing the show to make the subjects’ rare illnesses look psychosomatic and alleging that the plaintiffs were “duped by the defendants into participating in a salacious reality television program that questioned the existence of chronic illness and portrayed the plaintiffs as lazy, crazy, hypochondriacs who were deserving of scorn and who in fact have since received scorn and abuse because of the shows false representation. Scott: Netflix and the producers fired back – filing an anti-SLAPP motion to quickly block the lawsuits, based on the right to free speech. However, an LA county judge rejected the motion, and the appeals court agreed in a unanimous decision where the judges found that “undisputed facts concerning the plaintiff’s diagnosed medical conditions, when contrasted with the show script excerpts and aired version of “Afflicted” were sufficient to constitute a threshold showing that the defendants could reasonably be understood as falsely implying that the sick plaintiffs were imagining their illnesses due to some psychological condition and that their caregivers were gullible pawns or enablers who had been duped into providing care for persons who did not need it.” The plaintiff’s attorney called the ruling a “Significant Win” and we discussed in our episode that such a ruling could in fact be a shift in the norm and represent major issues for documentary/non-scripted film and television producers. Jamie: Now, almost four years since the initiation of the lawsuit, the case has been dropped. From limited sources, it seems that both sides have agreed to drop the suit, according to a request for dismissal filed on June 6. Details of the deal have not been disclosed, but of course, this is a win for Netflix, and the producers. Scott: Of course, Netflix is no stranger to defending itself from accusations of defamation. This is one of many defamation lawsuits that have been brought against not just Netflix, but many studios and producers working in the documentary space. This case addresses a number of issues that are generally always present in documentary industry and highlights important lessons for both producers and subjects of those documentaries. Jamie: These issues are present now, more than ever. Given guild strikes halting much of traditional production and the significantly decreased cost of non-scripted content, documentaries, docuseries, and other non-scripted productions are booming and regularly ranked among the most viewed shows on Netflix and other streamers. Scott: Despite the dismissal, this case is a cautionary tale for produces in the documentary space. Jamie: I agree. This show was controversial from the moment it began streaming in 2018. Dozens of doctors, scientists, artists and writers, including names such as Lena Dunham and Monica Lewinsky, signed an open letter to Netflix a few years back, accusing the producers of the flagrant misrepresentations present in the show. In looking at the details of the case, it seems that the producers of the show likely used creative tools and journalistic practice to advance a narrative that is not actually supported by fact – from early misrepresentations of their intentions with the show, to showing apparent diagnoses from doctors who had never even examined the subjects. While we understand the need to produce a compelling documentary production, but I don’t think that can be at the cost of the subjects of those shows and the audience, who are also being misled by a false narrative. How do you think we reconcile this in the industry? And what is the advice to provide producers and studios as the documentary/non-scripted industry? Scott: I think the industry needs to understand that if you obtain a release by deceiving the subject, that release may not stand up under challenge. So despite the fact that the written release signed by the subject says that they could be portrayed in an unflattering manner or even defamed and advises the subject to consult their own attorney, if the producer is not truthful with the participant about the nature of the program, the release may be voided due to fraud which could then expose the producer to a defamation claim.  Now I don’t think that most documentary producers intend to defame a subject, but some producers have a strong sense of the story they are trying to tell and that may result in an unflattering portrayal of a subject.  But truth is always a defense to a defamation claim so the producer should always be prepared to show that the portrayal is true.

The U.S. Supreme Court provided clarification on the application of the Rogers test in relation to Jack Daniels v. VIP Products. Scott Hervey and Jamie Lincenberg talk about this ruling on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In the case of Jack Daniel’s Properties, Inc. v. VIP Products, the Supreme Court has spoken and provided clarification on the application of the Rogers test and whether the parodic use of another’s trademark is always non-commercial use for the purposes of a dilution claim. We are going to talk about this ruling and its potential future applications on this installment of the Briefing by WT. I am Scott Hervey of Weintraub Tobin, and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to the briefing. Scott: On June 8, 2023, the United States Supreme Court handed down its opinion in JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS. The dispute dates back to 2014 when Jack Daniel’s sent a series of cease and desist letters to VIP products concerning its squeaky dog chew toy, Bad Spaniels. This toy parodies the Jack Daniel’s product;  “Jack Daniel’s” becomes “Bad Spaniels.” And the phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” Jack Dailes claimed that VIP Products had infringed and diluted its trademarks. In 2018 a district court judge ruled in Jack Daniels’s favor. Jamie: In its ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s marks. Scott: On appeal to the Ninth Circuit, VIP argued that the district court erred in finding that the toy wasn’t expressive. The Ninth Circuit, therefore, remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work. Jamie: In reviewing the Ninth Circuit’s holding, the Supreme Court framed its analysis by starting its opinion with a discussion of the purpose and function of a trademark, which is to serve as an identifier of the source of certain goods and services. From there, the Court then looks at the Ninth Circuit’s application of the Rogers test and its analysis of Jack Daniels’ dilution claim. Scott: Right. With regard to the application of the Rogers test, the Supreme Court said the issue is not whether the dog toy is an expressive work. The issue is the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, was for the purpose of serving as a source identifier…trademark use, in other words. That didn’t seem to be a controversial analysis since, in its complaint, VIP claimed trademark rights in Bad Spaniels, and VIP had, in fact, secured trademark registration of Bad Spaniels. This use, use as a trademark, is outside of the application of the Rogers test and instead should be analyzed under the multi-factor test like Sleekcraft. Jamie: The Supreme Court said that this approach….confining Rogers to instances where a trademark is not used to designate a work’s source but solely to perform some other expressive function….. is not new and has been followed by lower courts in other cases. Scott: That’s an important point you raise. The use of the trademark must only be to perform some other expressive function. Where a mark is used both to perform an expressive function and also as a source identifier, the Rogers test is not applicable. Jamie: Scott, do you think the Court’s analysis would have been different if VIP had not claimed trademark rights in Bad Spaniels? Scott: That certainly gave the Supreme Court an easy out. The Supreme Court said that the lower Court got it right when it said that “VIP uses its Bad Spaniels trademark and trade dress as source identifiers of its dog toy,” and the Supreme Court said that this point was conceded by VIP when it said in its complaint that it both owns and uses the Bad Spaniels trademark and trade dress for its dog toy. For certain, the Supreme Court points to some other factors, but this seems to be the proverbial nail in the coffin. Jamie: Continuing with this hypothetical, what if VIP didn’t claim that Bad Spaniels was a trademark, didn’t treat it as a product name, and rather claimed that its use was merely humorous and ornamental and not any form of trademark use? Scott: That probably would have helped. It’s certain from this opinion that this threshold analysis of whether the use is trademark use, even if it’s parodic or humorous, is going to be case by case. Jamie: The Supreme Court engaged in a similar analysis in its treatment of Jack Daniel’s claim of dilution by tarnishment. The Ninth Circuit had dismissed that claim based on the Lanham Act’s exclusion from liability for dilution for any non-commercial use of a mark, and VIP’s parodic use constituted non-commercial use. Scott: The Supreme Court took issue with that. It said that not every parody or humorous commentary is a non-commercial use and that use as a designation of source for the person’s own goods or services, even if a parody or humorous commentary, is not a non-commercial use. Jamie: Scott, I know that you regularly look to the Rogers test for guidance with your creative clients who may include third-party brands in their programs. How do you think this case will impact them? Scott: Good question. As a threshold matter in determining whether Rogers applies, we will ask, is this use trademark use….are we using it as a source identifier? For example, where a production company films a character getting out of a Ferrari and where that’s done to establish some characteristic about that character (for example, rich, stylish, risk taker), that’s not going to be source identifier use, As such, we will just apply the Rogers test, where this case will present issues for companies that build a business around poking fun at or commenting at other brands.

A court denied Netflix’s request for GoTV Streaming to supply documents relating to the source of its patent litigation funding. Scott Hervey and Eric Caligiuri discuss this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Read more about this case here.

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.