The Briefing by Weintraub Tobin

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.

The NFL and Las Vegas Raiders threatened to sue a local law firm for trademark infringement, after the firm hired one of its athletes to appear in an advertisement with black and silver branding. 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: I’m Josh Escovedo with Weintraub Tobin. A dispute has arisen between the owner of the Dimopoulos Law Firm and the NFL over the NFL threatening to sue the firm for trademark infringement. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh: In a recently filed complaint in federal court, the Dimopoulos Law Firm, a personal injury firm based in Las Vegas, Nevada, alleges that it has been using a black and silver color scheme to promote its services since its inception in 2012. However, they recently hired three professional athletes, including Jon Bones Jones of the UFC, William Karlsson of the Vegas Golden Knights, and most importantly for this case, Maxx Crosby of the Las Vegas Raiders, to appear in a new advertisement. According to the firm, the advertisement did not feature any logos or trademarks of the NFL, the Raiders, or any other sports teams. Despite this, the complaint states, the NFL sent Dimopoulos a cease-and-desist letter accusing the firm of unauthorized use of the Raiders’ marks. Scott: That’s quite interesting. So, what are the grounds for this dispute? Josh: Well, according to the cease-and-desist letter, the NFL claims that Dimopoulos used hashtags including the Raiders’ marks and engaged in unauthorized use of their marks. However, it’s worth noting that the Complaint alleges that the advertisement did not feature any NFL logos or names, and the disclaimer on the Dimopoulos Law Firm website and YouTube page make it clear that the firm is not affiliated with the NFL. Scott, based on what know so far, do you think the NFL has a strong case? Scott: Personally, I don’t think so, but all we’ve heard so far are the allegations of the Complaint and the cease-and-desist letter. I may feel differently once more facts are discovered. However, with the limited information we have so far, it seems that the advertisement didn’t feature any NFL logos or word marks. In fact, according to the law firm, the only logo that shown was the Dimopoulos Law Firm logo. Furthermore, we’re informed that the disclaimer on the website and YouTube page clearly state that the firm is not affiliated with the NFL. So, it’s hard to see how a reasonable consumer could be confused into thinking that the firm is affiliated with the NFL. Josh: I certainly understand that position, and I’m not saying I disagree, but what do you think about the point that the firm raises in the Complaint concerning the fact that multiple professional sports teams, including the Los Angeles Kings, the San Antonio Spurs, and the Chicago White Sox use a silver and black color scheme. Scott: Well, it’s a reasonable point to make, but it’s also fair to say that none of those teams play football like Crosby does in the advertisement, and none of those teams are in Las Vegas, where the law firm happens to sit. Josh: True, but according to the Complaint, the Raiders hadn’t even relocated to Las Vegas from Oakland until four years after the law firm started using the silver and black color scheme. With that said, I suppose it doesn’t matter if the team is in Las Vegas or Oakland, if it has protectible IP in its color scheme and the advertisement infringed that IP, it probably wouldn’t matter that the team wasn’t always in the same city as the firm, although it would likely be considered in the intent factor of the Sleekcraft analysis if a claim were asserted for trademark infringement under 15 U.S.C. section 1114. Scott: That’s right. And even if the Raiders had protectible IP in their color scheme, the Raiders’ claim would really be more of a false designation of association/affiliation claim under 15 U.S.C. section 1125. It’s unlikely that there would be consumer confusion in that the consumer reasonably believes that the Raiders are providing legal services, but it is at least feasible that a consumer could believe that the Raiders are associated, affiliated, or otherwise endorse the law firm as a result of the advertise. It really comes down to whether the Raiders and the NFL have protectible IP in the color schedule. Josh: How about the hashtag claim? The law firm alleges that it did not use the hashtags as a source identifier, but it seems to me that given the ability of consumers to search hashtags on social media and discover posts or advertisements tagged with those hashtags, there is a reasonable argument that they should be entitled to protection similar to AdWords, whereby a competitor cannot use another party’s trademarks as AdWords to drive traffic to the competitor’s site. I recognize that here, however, the firm isn’t competing with the Raiders or the NFL, so really the argument would have to be that the use of the marks as a hashtag creates a false designation of association or affiliation with the Raiders or the NFL.  So it’s one step removed from most of the AdWords cases. What do you think? Scott: There isn’t a simple answer here. In any event, when you consider the totality of the circumstances, I suppose it is at least conceivable that if a consumer were to see the silver and black uniforms in the advertisement that was returned in response to a search for #raiders or #raidernation, they could potentially assume there must be a relationship between the firm and the NFL or the team. Then again, there’s the disclaimer. As I said, it’s complicated. Josh: That’s an interesting point, Scott. We’ll have to wait and see how this dispute unfolds. Scott: Thanks for sharing, Josh.

The US Copyright Office issued a policy statement regarding the registration of works that contain material generated by AI technology. Scott Hervey and Josh Escovedo talk about this clarification on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: With the buzz still fresh from the copyright office’s partial revocation of the registration issued to Kristina Kashtanova for the graphic novel, Zarya of the Dawn. On March 16 the Copyright office issued a rule concerning the registration of works containing material generated by Artificial Intelligence. We are going to talk about this on the next installment of the Briefing by the IP Law Blog Scott: On March 16, the Copyright office issued a rule concerning the registration of works containing material generated by Artificial Intelligence.  The purpose of the rule, which really is a policy statement, is to clarify the Copyright Office’s practices for examining and registering works that contain material generated through the use of artificial intelligence technology.  First, a little background on why the Copyright Office had to issue this rule in the first place. Scott: Generative artificial intelligence technologies are capable of producing a variety of expressive material, including text and images, in response to text provided by a user.  Most generative AI technologies operate through “prompts,” which are text commands and contain text describing what the AI should generate.  The output can be text, graphics or audio and are based on the input material the AI has been trained on. Josh: Generative AI technologies have raised questions about whether the material produced is protected by copyright, and if not, to what extent a work consisting of both human-authored and AI-generated material may be registered.  These questions are not hypothetical; the Copyright office has received and is receiving applications to register AI generated work, with the first dating back to 2018. That application was for a visual work called “A recent entrance to paradise” We previously covered the decision by the Copyright Office Review Boards’ refusal to register the work based on fact that the work was made without any creative contribution from a human actor. And recently, the office reviewed and partially revoked an application for the graphic novel Zarya of the Dawn where the graphics were created using the AI tool, Midjourney. We recently covered that story as well. Scott: And while the Copyright office’s decision in Kashtanova did provide some understanding as to the Office’s position, this rule provides guidance for persons attempting to register works that incorporate AI generated material. Scott: First, it’s imperative to understand that the Copyright office will not recognize a copyright in AI generated work and due to pre-emption, there is no way that state law could provide any similar type of protection.  This means that any work generated by an AI technology is in the public domain, free for all to use. Josh: So, does this mean that all work generated by an AI technology is not copyrightable. Scott: Not necessarily. It’s about who is ultimately responsible for the creation of a work’s traditional elements of authorship.  If they are produced by a machine solely in response to a text prompt, then the “traditional elements of authorship” are determined and executed by the technology—not the human user.  However, if a human exercised the ultimate creative control over how a generative AI technology interprets prompts and generates material, or if a human selects or arranges AI generated material in a sufficiently creative way or if a human modifies the AI generated material to such a degree that the modifications meet the standard for copyright protection, that the portion of the work representing the human authored aspect of the work would be protectable. Josh: But copyright protection would not extend to the work in its entirety, only that portion of the work over which a human exercised ultimate creative control. Scott: That’s right.  Putting aside manual human manipulation of the AI generated material, the copyright office stated users do not exercise ultimate creative control over how current generative AI technologies interpret prompts and generate material. But, if they did…. if the user exercised ultimate creative control over the output, would the technology still be AI. Scott: The rule ends with guidance for applicants seeking to register works incorporating AI generated material, however on the application an applicant must describe the authorship that was contributed by a human.  Applicants should not list an AI technology or the company that owns such AI technology as a co-author because the applicant used it when creating the work.  Also, an applicant must explicitly exclude AI generated content from the copyright claim. Josh: I am sure this is not the last of this issue Scott: It certainly isn’t.  Last week lawyers for Kashtanova filed a new application for a new piece of artwork produced by Stable Diffusion which uses Kashtanova’s own hand drawn art as one of the inputs.  Her lawyers claim that Kashtanova’s exercise of control over Stable Diffusion made her the author of the work.  This may be the first test case of the offices new registration policy

The United States Patent and Trademark office has suspended action on trademark applications targeting the names of public figures. 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. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: I’m Josh Escovedo with Weintraub Tobin. The USPTO has suspended action on trademark application trying to take advantage of a new appellate decision that would let people license trademarks that poke fun at the names of living people. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh: Scott, have you heard about the recent guidance issued by the US Patent and Trademark Office on trademarks that make fun of living public figures? Scott: I have, but why don’t you tell our listeners what’s going on. Josh: Well, the USPTO has announced that its suspending action on any trademark applications that try to take advantage of a new appeals court ruling that potentially allows people to license trademarks that make fun of the names of living figures like former President Donald Trump. The Trademark Office has indicated that it will continue to do so while it waits for the US Supreme Court to weigh in. Scott: Right, and according to the one-page document issued by the Trademark Office, its examiners will not look at trademarks that cover phrases “that are critical of government officials or public figures,” in line with the agency’s longstanding rules. This is because of Section 2(c) of the Lanham Act, which bans the issuance of trademarks that include names “identifying a particular individual” without their consent. Josh: You might be wondering what led to the issuance of this guidance. Well, last year, lawyer Steve Elster was trying to land a trademark protecting his use of the phrase “Trump Too Small” for use on T-shirts. Both the office and its own appeals body, the Trademark Trial and Appeal Board, had refused to register the mark, citing the Office’s long-standing rules. But Elster then 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.” Scott: Right, I remember hearing about that last February. Josh: Yes, Elster argued that the phrase was “political criticism,” and accordingly to Judge Dyk, it is therefore protected by the First Amendment. The USPTO appealed to matter to the Supreme Court. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided. Scott: The Trademark Offices 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.” Josh: So, for now, the Trademark Office has said that it won’t take any action on trademark applications that are trying to take advantage of Judge Dyk’s decision until the Supreme Court weighs in. It’s unclear how many applications this will impact, as the Office has declined to comment on its decision. One has to wonder, what the Trademark Office will do if the Supreme Court refuses to grant cert like it often does. Scott: That is an interesting question, Josh, and even if the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, wouldn’t such a decision mean that the trademark examiners will have to make decision about a particular trademark expresses protectible 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. Thanks for breaking it down for us, Josh. Josh: No problem, Scott. Thank you to everyone who joined us.

The U.S. Copyright Office instituted an inquiry into a registration relating to a graphic novel that uses AI-generated artwork. 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.   Show Notes: Scott: Kristina Kashtanova is the author of the graphic novel, Zarya of the Dawn. Ms. Kashtanova had previously applied for and obtained a copyright registration for the graphic novel. Sometime after the novel was registered, the Copyright office, on its own accord, instituted an inquiry into registration with a specific focus on the artwork in the novel which was generated through the use of Midjourney AI technology. After the inquiry, the Copyright office revised the registration and excluded from protection the images created by the use of the AI technology. We are going to talk about this on the next installment of the Briefing by the IP law blog Scott: Here is the brief history of the matter. In September, 2022 Kashtanova submitted a copyright application for her graphic novel.  Her application did not disclose that she used an AI application to create any part of the novel nor did she disclaim any portion of the work. After the application was registered, apparently the Copyright office became aware of statements made by Kashtanova in social media that she had created the graphic novel using Midjourney’s AI tool. Josh: Don’t you find it a bit odd that the Copyright office was watching or reviewing Kashtanova’s social media. The examiner must have had some belief that AI was somehow involved in the creation of the graphic novel. Scott: I never thought that the registration process at the copyright office was that in depth. I always thought it was more pro-forma, but it seems I was mistaken. In any event, based on this new information, the Copyright office determined that the original application was incorrect or substantively incorrect. The office then notified Kashtanova that it intended to cancel the registration unless she provided additional information in writing showing why the registration should not be canceled. Josh: As we have previously covered, the basis for the Copyright office’s refusal to register AI generate work comes from how the Copyright Act defines the scope of copyright protection.  Under the Act, a work may be registered if it qualifies as an “original work[] of authorship fixed in any tangible medium of expression. Courts interpreting the phrase “works of authorship” have uniformly limited it to the creations of human authors. Scott: According to the internal Copyright Offices practices, as codified in Rule 503.03, In order to be entitled to copyright registration, a work must be the product of human authorship. Works produced by mechanical processes or random selection without any contribution by a human author are not registrable. Josh: In responding to the Copyright office, Kashtanova’s lawyers argued that both the novel’s text and the selection and arrangement of the text and images are copyrightable since the text was written solely by Kashtanova and the text and images were arranged solely by Kashtanova. The copyright office accepted these arguments and held the text to be copyrightable as well as the arrangement of the text and images. With regard to the images, Kashtanova’s counsel argued that she used the AI platform as a creative tool, similar to how a photographer may use Adobe Photoshop. Scott: The decision rendered by the Copyright office goes into great detail about how Midjourney works and how Kashtanova used Midjourney. This is important to understand why the copyright office found the way it did. I am going to simplify the description a bit. Midjourney offers an artificial intelligence technology capable of generating images in response to text provided by a user. Users operate Midjourney through “prompts,” which are text commands. Prompts must start with the text “/imagine” and contain text describing what Midjourney should generate. Users also have the option to include a URL of one or more images to influence the generated output, or parameters directing Midjourney to generate an image in a particular aspect ratio or providing other functional directions. Josh: After a user provides Midjourney with a prompt, the technology will generate four images in response. The images are provided in a grid, and buttons underneath the grid allow users to request that Midjourney provide a higher-resolution version of an image, create new variations of an image Midjourney generate, or to generate four new images from scratch. Scott: Kashtanova’s counsel argued that the artist and not the machine guided the structure and content of each image. Her counsel argued “all the images in the Work were designed by Kashtanova. The visual structure of each image, the selection of the poses and points of view, and the juxtaposition of the various visual elements within each picture were consciously chosen. These creative selections are similar to a photographer’s selection of a subject, a time of day, and the angle and framing of an image. In this aspect, Kashtanova’s process in using the Midjourney tool to create the images in the work was essentially similar to the artistic process of photographers – and, as detailed below, was more intensive and creative than the effort that goes into many photographs.” And it was that “creative process” that Kashtanova applied to the creation of each image that the Copyright Office found fault with. Josh: First Kashtanova entered a text prompt for Midjourney. Then she would pick one or more of the outputs to further develop and would tweaked or changed the prompt as well as the other inputs provided to Midjourney” to generate new intermediate images, and ultimately the final image. Kashtanova did not claim to create any visual material herself. To obtain the final image, Kashtanova describes a process of trial-and-error, in which she provided “hundreds or thousands of descriptive prompts” to Midjourney until the “hundreds of iterations [created] as perfect a rendition of her vision as possible. Scott: The copyright office held that Midjourney users are not the “authors” for copyright purposes of the images the technology generates. The Supreme Court has explained, that an “author” of a copyrighted work is the one “who has actually formed the picture,” the one who acts as “the inventive or master mind.” A person who provides text prompts to Midjourney does not “actually form” the generated images and is not the “master mind” behind them. While the information in the prompt may “influence” generated image, it does not dictate a specific result. Because of the significant distance between what a user may direct Midjourney to create and the visual material Midjourney actually produces, Midjourney users lack sufficient control over generated images to be treated as the “master mind” behind them. And this lack of control over Midjourney’s specific outputs makes the Midjourney AI platform different from other tools used by artists. Josh: The copyright office makes an interesting comparison of the prompts to instructions given to a commissioned artist. If. Kashtanova had commissioned a visual artist to produce an image and gave that artist the same detailed instructions as she included in her prompts to the Midjourney platform, Kashtanova would not be the author of that image. Absent the legal requirements for the work to qualify as a work made for hire, the author would be the visual artist who received those instructions and determined how best to express them. Scott: And while Kashtanova spent a significant amount of time working with Midjourney, that effort alone does not make her the author for copyright purposes. The argument that “sweat of the brow” can be a basis for copyright protection has been rejected by courts and the Copyright Office “will not consider the amount of time, effort, or expense required to create the work” because they “have no bearing on whether a work possesses the minimum creative spark required by the Copyright Act and the Constitution, Josh: So, where does this leave the issue of AI and copyright. Scott: That’s a more nuanced question then it may seem. While the output method Kashtanova used for Midjourney does not result in copyrightable works, the office did say It is possible that other AI offerings that can generate expressive material operate differently than Midjourney does.   Based on what the Copyright Office said here, it seems that there would need to be a more of a nexis between prompts and output, once an image was generated, further prompts would need to reflect a direct control on the next image generated.  Also, the copyright office did say that had Kashtanova made substantive edits to an image generated by Midjourney, those edits could provide human authorship worth of a grant of copyright protection

Singer Rick Astley is suing rapper Yung Gravy for vocal imitation in his smash hit, Betty (Get Money). 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: Richard “Rick” Paul Astley vs. Matthew Hauri PKA Yung Gravy; Nick Seeley PKA Popnick; Dillon Francis; David Wilson PKA dwilly; Republic Records Midler v. Ford Motor Co. Waits vs Frito Lay Show notes: Scott Hervey: I’m Scott Hervey with Weintraub Tobin. Josh Escovedo: And I’m Josh Escovedo with Weintraub Tobin. Rick Astley has sued Yung Gravy for use of an imitation voice in his smash hit, Betty (Get Money). That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh Escovedo: Rick Astley, artist of the hit song Never Going to Give You Up from 1987, has filed suit against rapper Yung Gravy for impersonating his voice on Yung Gravy’s breakout hit, Betty (Get Money). Astley claims that Gravy imitated his voice without legal authorization and has therefore filed suit in Los Angeles County Superior Court, alleging violation of his right of publicity under California law. Josh Escovedo: According to Astley’s complaint, Gravy seeks to capitalize off of the immense popularity and goodwill of Mr. Astley by creating a nearly indistinguishable imitation of Mr. Astley’s voice throughout the song. For reasons that we’ll be discussing, Astley did not file a claim for copyright infringement. But while copyright law may not be at issue in the complaint, it is likely to be at issue in the dispute itself. Scott, can you explain to our listeners why Astley did not file a claim for copyright infringement? Scott Hervey: Sure. In order to understand why Astley didn’t file a claim for copyright infringement, it’s important to understand that music has two different copyright elements. First, there’s a copyright element in the composition or publishing elements which protects the lyrics and musical arrangement. And then there is a copyright interest in the actual sound recording, which protects the song as performed by an artist as captured on a master recording. Scott Hervey: Astley’s complaint concedes that he does not have the rights in the composition. Oh, all that publishing money that he’s missing. But it also indicates that he has a partial interest in the copyright in the recording. So apparently, Gravy obtained what’s called a synchronization license to use the copyright in the composition. But he didn’t obtain a copyright to use the master recording. But he didn’t need to do that because he recorded his own performance of the composition. Scott Hervey: A copyright in the recording would only have been necessary if Gravy had actually used part of the existing master recording in his track as a sample, but he didn’t do that, and thus he did not need to get a master use license. For the same reason, Astley’s partial ownership in the copyright of the master recording of Never Going to Give You Up was not infringed because Gravy did not sample the master recording in his song. Apparently, Gravy had, I believe it was, his producer sings that part of the track. But as Josh said, that doesn’t mean that copyright won’t be an issue in this dispute. Josh Escovedo: That’s right, Scott. In fact, the Copyright Act is one of the two key reasons why Yung Gravy is likely to walk away from this lawsuit relatively unscathed. The Copyright Act expressly provides that a state cause of action is preempted if it creates rights that are equivalent to any of the exclusive rights within the general scope of copyright in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright. Josh Escovedo: Of course, express preemption is not necessary for a law to be preempted, as the law also provides for implied conflict preemption, which occurs when a state law poses an obstacle to the accomplishment and execution of the full purpose and objectives of Congress. Here, there’s a strong argument that the Copyright Act was intended to address this exact situation. Josh Escovedo: Section 114(b) of the Copyright Act provides that the rights of an owner of a copyright and a sound recording are limited to the right to duplicate the actual sounds in the recording and the right to prepare derivative works in which those actual sounds are rearranged, remixed, or otherwise altered in sequence or quality. In other words, as the copyright office has published, permission from the copyright owner of a preexisting sound recording is not necessary when interpreting a musical work, regardless of how similar the new record may be to an old recording. Josh Escovedo: This is because under United States copyright law, the exclusive rights in sound recordings do not extend to making independently recorded soundalike recordings. So the question here is whether Astley’s right of publicity claim should be preempted by these provisions of the Copyright Act since Astley wouldn’t be able to state a claim for copyright infringement. Scott Hervey: Interestingly, the Ninth Circuit has had two opportunities to address this issue. Midler versus Ford Motor Company and Waits versus Frito Lay. In both of these cases, the Ninth Circuit addressed claims involving the right of publicity for the use of a soundalike in the commercial context of a commercial. One was for Ford and the other was for a Frito Lay product. Scott Hervey: In Midler, the Ninth Circuit found that the claim wasn’t preempted by the Copyright Act because Midler was not seeking damages for Ford’s use of the song at issue, but was instead seeking damages for Ford’s use of her voice, for the use of her name, voice, and likeness, which was not copyrightable. In Waits, the Ninth Circuit indicated that as a three-judge panel, they were not at liberty to reconsider Midler and would not have disturbed the ruling, even if they could. The preemption analysis in both claims is sparse. Josh Escovedo: That’s right, Scott. And Astley’s counsel actually mentions the Midler case repeatedly in the complaint, interestingly enough. But I think that both of those cases were wrongly decided, at least with respect to the preemption analysis, which, as you mentioned, is pretty sparse. So neither Midler nor Waits bothered to consider whether the plaintiff was suing over the use of the plaintiff’s voice in the abstract or as applied to a specific recorded performance. Josh Escovedo: If the courts had taken the time to consider that fact, it seems to me that they would have had to find that the right of publicity claim, at least in this context, should be precluded by the Copyright Act, which permits soundalike recordings under federal law. It would seem to me that to allow a right of publicity claim to move forward, despite this clear permissive use under copyright law, it would be a direct conflict between the right of publicity and the Copyright Act. Scott Hervey: That’s interesting, Josh. I don’t know if I agree with you. At the same time, I don’t know that I disagree. I just haven’t given this enough thought yet. But I will say this, if you are correct, then that means that it’s open season for celebrity singers for the ability to use their voice or the sound of their voice to sell products or services in commercials, which is different. Scott Hervey: It’s a different scenario than what’s at play here in the Yung Gravy-Astley case, where Yung Gravy is using a singer who sounds a lot like Rick Astley in a creative work, a creative speech, non-commercial speech, as opposed to Waits and Midler, where the soundalike singer was used in commercial speech, which arguably or understandably is entitled to lesser degree of protection under the First Amendment than non-commercial speech. It’s interesting, though. You raise an interesting point. But let’s talk about this other potential defense as well. Josh Escovedo: Sure. And just to briefly respond to what you just said, Scott, I think that if the courts were to find that there should be preemption, I think that preemption would need to be narrowly tailored. It would have to be in this context where the soundalike… It can’t actually be the celebrity, it would have to be a soundalike. And then I think it would have to be in the context of a work that had already been reduced to a prior recording. And in that context, I think that preemption would make sense. Scott Hervey: But I think both in Midler and Waits, they were prior recordings. They were recordings that Midler and Waits had already made, I believe. And the advertising agencies just got a soundalike to sing those exact songs. So, what the preemption argument does is it blows a big hole in 3344 where you’re using a renowned singer’s sound, voice to sell goods and services where that singer did not authorize their use to sell those goods and services, maybe doesn’t believe or support that organization or company that’s selling those goods and services. I don’t know. I just see this as being extremely problematic. Josh Escovedo: Sure. I mean, it’s a fair point. That is certainly true. But I suppose if we think about it, that same situation would be permissible under the Copyright Act, so long as the party who utilizes the soundalike actually procured the license to utilize the copyright in the composition. And the celebrity or artist wouldn’t be able to do anything about that. Scott Hervey: Well, true, they wouldn’t be able to do anything about it if the advertising agency secured a sync license, but the singer who sings the song for the commercial, arguably, going along with this hypothetical, wouldn’t sound like Tom Waits or Bette Midler. And that’s the difference. Scott Hervey: Maybe the preemption argument needs to focus on whether it’s commercial speech or non-commercial speech and the degree of protection that that type of speech is entitled to under the First Amendment because as you know, commercial speech is entitled to a lesser degree of protection than non-commercial speech under the First Amendment. Interestingly, maybe that’s where the case would have to draw a line. Scott Hervey: While we’re talking about 3344, I think Rick Astley has a problem there anyway. Let’s assume that the preemption doesn’t apply. I think he’s got a problem anyways. I don’t think he’s got a case under California Civil Code Section 3344, which specifically addresses, as we’ve just been discussing in the case of Waits and Midler, the use of a celebrity’s name, voice, or likeness on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise, goods, or services. What do you think about that? Do you agree? Josh Escovedo: Yeah, I agree with you on that, Scott. I think, in fact, that the 3344 claim is likely to be dismissed at the onset of this case, assuming there’s motion practice, which I fully anticipate. It’s possible that Yung Gravy will first remove this case to federal court because the federal judiciary more commonly deals with these issues of copyright law and federal preemption. So, it’s possible he’ll remove first, in which case the plaintiff would be facing a motion to dismiss as opposed to a demur. Josh Escovedo: But for purposes of the discussion, really the same thing here. But the question would be, does 3344 permit a claim in this specific context? And it does not. So, I think that the plaintiff will have to pursue a common law claim for the violation of his right of publicity. But I don’t think he has grounds to move forward under 3344. Scott Hervey: I agree with you. And let’s remember the de Havilland versus FX case where there was a 3344 claim that was raised. The court assumed for argument’s sake that a television program is a product, merchandise, or good, but it found that de Havilland’s claim failed. The court noted that the speech in FX is fully protected by the First Amendment, which safeguards the storytellers and artists who take the raw materials of life, including the stories of real individuals, ordinary, extraordinary, and transform them into art, be it books, movies, plays, or in this case, sound recording. Scott Hervey: The fact that FX did not get de Havilland’s rights to use her name, voice, or likeness did not change the court’s analysis. I think the court’s ruling in the Havilland that the First Amendment, for the purposes of a creative work, outweighs somebody’s right of publicity under 3344 will rule the day here as well. Josh Escovedo: Right. And that brings us back to the other defense that I was mentioning, Scott. And I think at this point, it’s the elephant in the room, and that’s the First Amendment. Midler and Waits both involved commercial use, so not a truly expressive work. Here, Betty (Get Money) is clearly an expressive work, and as such, it’s entitled to significantly greater protection than commercial speech, which was what was at issue in Midler and Waits. Josh Escovedo: So as a result, the court will give Gravy more leeway in terms of how he could have imitated Astley’s voice without violating the right of publicity. Of course, the distinction between the expressive work in this case and the commercial work in the Midler case and the Waits case could also serve as a basis for distinguishing this situation from the Midler precedent without having to overturn it for purposes of the preemption analysis that we had been discussing. Scott Hervey: Yeah, it’s a significant distinction. It’ll be interesting to watch this case if this is litigated through motion practice and if a court does find… Let’s assume they don’t find preemption, but in fact, they do find that this is not a violation of 3344. This actually might open up a whole new industry or an alternative to sampling. If you want to sample an audio clip, you don’t necessarily need to get a master-use license. You can just get the sync and rerecord that hook and drop it into your track and not have to deal with artist permission. Scott Hervey: This has a bigger ramification than this Rick Astley, like this narrow issue of the use of this hook in Rick Astley’s hook in this song. It can have a much bigger impact on the music industry as a whole. Josh Escovedo: Right. I’m sure the entire music industry is watching this one. Scott Hervey: Yeah. Well, we’re going to watch it too, and we’ll report back if there’s some motion practice. Josh Escovedo: Thanks, Scott. Scott Hervey: Thanks, Josh. Josh Escovedo: Thanks for tuning into this installment of the Briefing by the IP Law Blog. Don’t forget to subscribe to our podcast and YouTube channel. Leave a positive review. And for additional content, visit our website at the iplawblog.com. Thank you.

Getty Images filed a lawsuit against startup tech company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases discussed: Getty Images (US), Inc. v. Stability AI, Inc. Visual Arts v. Goldsmith Show Notes: Josh: Getty Images, a preeminent global visual content creator and leading source for visual content, has filed suit against startup technology company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent or compensation. Getty Images also alleges that Stability removed or altered Getty Images’ copyright management information, such as watermarks, and provided false copyright management information. Accordingly, Getty Images’ complaint includes claims for copyright infringement, providing false copyright management information in violation of 17 U.S.C. section 1202(a), removal or alteration of Copyright Management Information in violation of Section 1202(b), trademark infringement, unfair competition, trademark dilution, and deceptive trade practices under Delaware law. In order to understand the nature of the claim a bit better, it’s important to understand what these parties do. Scott, do you mind providing a brief overview of what the parties do for our listeners? Scott: Sure. Getty Images is a visual media company and a supplier of stock images, editorial photographs, video, and music for businesses and consumers. It has over 477 million assets, and it generates revenue by licensing the right to use these assets to creatives, the media, corporate entities, and general consumers. Many of you have probably seen their images online, complete with the Getty Images watermarks. They’re all over the place. On the other side of the case, we have Stability AI. Stability AI is a startup technology company that has created an image-generating platform called Stable Diffusion that uses AI to generate computer-synthesized images in response to text prompts. There is an open-source version of Stable Diffusion, as well as a revenue-generating version known as DreamStudio. To simplify the description of what Stability AI does, we can refer to the example used by Getty Images in its Complaint. If a user wanted to generate a photo of a cat wearing a scarf, the user would type “cat wearing a scarf” into Stability AI’s platform, and the platform would generate an image of a cat wearing a scarf. Of course, the returned image would not be a real photo of a cat wearing a scarf, it would be a computer-generated version of a cat wearing a scarf. And it is the process of how the AI platform generated that image that is at the heart of this Complaint. Josh: That’s exactly right. In order to generate images in response to prompts submitted to Stability’s platform, the platform relies on various images that Stability utilized to teach its platform what a cat is and what a scarf is. The platform then utilizes those images to generate a synthesized version of what the user has requested, so in the example above, a cat in a scarf. With that understanding, we can discuss the specifics of Getty Images claim. According to Getty Images, Stability copied over 12 million photographs from its portfolio and used those images to train its Stable Diffusion model. Getty also claims that Stability used associated text and metadata, which it contends are also protected as copyrighted expressions to train its model. This, according to Getty Images, constitutes copyright infringement. Scott: Getty explains in its complaint that its assets are highly desirable for use in connection with AI and machine learning because of its high quality and because the assets are accompanied by content-specific, detail captions, and rich metadata. Apparently, Getty Images has licensed millions of digital assets to technology innovators for various purposes related to AI and machine learning. Of course, here, Getty Images alleges that Stability didn’t even attempt to negotiate a license with Getty Images for the content, but instead copied the images without Getty’s consent, in violation of the Getty Images terms of use and allegedly United States Copyright Law. Josh: But according to a variety of AI technology companies, the practice of using copyrighted materials for the purpose of training an artificial intelligence platform constitutes fair use under United States Copyright Law. Whether that’s true or not remains undecided. The rise of technology has created this issue of first impression, so it remains to be seen how the Courts will apply the fair use doctrine in this context, which, as many of you know, permits the use of copyright-protected work, in certain contexts, to promote freedom of expression and for other purposes. In my opinion, this isn’t an issue that will be decided through just one case. Fair use is a multi-factor analysis that takes a number of items into consideration when determining whether a use was fair under the doctrine. Two of the most significant factors are the purpose or nature of the use and whether the allegedly fair use has an effect on the market for the protected work. With that said, it may be the case that using copyright protected works to train a platform would constitute fair use, but using it to generate new content may not be. In other words, it may be fair to use someone else’s IP to train your platform, but if you use it to generate a new product that may not be fair. Scott: And its even a bit more nuanced than that. For example, if millions of photos were provided to an image generating platform and it generated a novel image, it seems unlikely that that would constitute copyright infringement. On the other hand, if the platform only had a small sample of photos to work with, and if perhaps those photos were from the same creator, the resultant product may constitute infringement. Josh: Exactly. And as to the latter, exactly how different the resultant product would need to be to be considered transformative in nature and therefore protected by fair use is a question that is currently before the Supreme Court in the matter of Andy Warhol Foundation for the Visual Arts v. Goldsmith, which has already been argued and should be decided this term. As many of you know, that case deals with how different a work must be from the original protected work to be considered transformative and not infringing. That decision will have consequences in the AI-IP disputes as well. Scott: There are so many interesting IP issues involved in this dispute, and it’s just getting started. I do not foresee this case resolving right away, so we’ll be watching very closely. Thanks for sharing, Josh.

The jury hearing Hermes v. Rothschild found the artist’s ‘MetaBirkin’ NFTs constitutes trademark infringement and trademark dilution. 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.   Show Notes: Scott: The jury hearing Hermes v Rothschild found Rothschild liable for trademark infringement and trademark dilution.  The matter went to trial after the judge dismissed both Hermes and Rothschild’s motions for summary judgment.  Should the court have sent the matter to the jury and what may be the basis for an appeal. We are going to discuss this case on the next installment of the briefing Scott: Mason Rothschild is an artist who has created a series of digital artworks called MetaBirkins. The artist claims that each work comment on Hermès’ “Birkin” handbags. is a unique, fanciful interpretation of a Birkin bag. Rothschild claims that the depiction of each bag as fur covered, Comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags.  He has over 100 pieces as part of the collection and has sold over 1.1 million. Josh: Hermes filed suit in January 2022 alleging trademark infringement and trademark dilution.  Rothschild moved to dismiss, relying heavily on Rogers v Grimaldi. The court dismissed Rothschild’s motion because the amended complaint included sufficient allegations that Rothschild entirely intended to associate the MetaBirkins mark with the popularity and goodwill of the Hermes Birkin mark rather than intending an artistic association Scott: Shortly thereafter both parties moved for summary judgment.  Although the court found that the Hermes’ claims should be analyzed under the Rogers test, the court found that a genuine issue of material fact remained as to whether under the Rogers test Rothchild’s NTFs infringe and/or dilute Hermes’ trademarks. Josh: The Rogers court held that where the defendant’s product is artistic or expressive, the Lanham Act must be interpreted “narrowly in order to avoid suppressing protected speech under the First Amendment.”  The two parts of the Rogers test are artistic relevancy and whether the use of the mark is explicitly misleading. Scott: Citing to a 2012 Southern District of NY case, Louis Vuitton Mallatier S.A. v. Warner Bros. Entm’t Inc., The artistic relevance prong of the Rogers test “ensures that the defendant intended an artistic – i.e., non-commercial association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark’s popularity and good will. . Josh: Under Rogers, however, a showing of artistic relevance is easily satisfied: it is met “unless the [use of the mark] has no artistic relevance to the underlying work whatsoever,” and was instead chosen merely “to exploit the publicity value of [the plaintiff’s mark or brand].” Scott: This court, in denying the cross motions for summary judgment said that “there is a genuine factual dispute as to whether Rothschild’s decision to center his work around the Birkin bag stemmed from genuine artistic expression or, rather, from an unlawful intent to cash in on a highly exclusive and uniquely valuable brand name” Josh: In the courts order it cited to Rothschild’s comments to investors that “he doesn’t think people realize how much you can get away with in art by saying ‘in the style of'” and that he was “in the rare position to bully a multi-billion-dollar corporation” as being probative of an intent to exploit. Scott: Right, and this was despite the fact that the court recognized the existence of evidence which suggested that Rothschild viewed the project as a vehicle to comment on the Birkin bag’s influence on modern society.  To me it seems that the court may have evaluated the weight or veracity of the artistic relevance proffered by Rothschild.  Yes, Hermes offered evidence tending to show that Rothschild true intent was to make money and “capitalize on the hype”.  I don’t think the court can do that.  In Dillinger, LLC v. Electronic Arts, Inc the 9th circuit said ““not the role of the Court to determine how meaningful the relationship between a trademark and the content of a literary work must be; consistent with Rogers, any connection whatsoever is enough for the Court to determine that the mark’s use meets ‘the appropriately low threshold of minimal artistic relevance.’” Scott: Even where the use of a trademark bears “some artistic relevance” to an underlying artistic work, the First Amendment does not protect such use if it “explicitly misleads as to the source or the content of the work.  A work is “explicitly misleading” if it “induces members of the public to believe” that it was created or otherwise authorized by the plaintiff. In the 2nd circuit, “This determination is made by application of the Polaroid factors,” As the 2nd Cir said in Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., the opinion written by the same judge who wrote the Rogers opinion, If, after applying the Polaroid factors, a likelihood of confusion is found, it must be “particularly compelling to outweigh the First Amendment interest recognized in Rogers.  The Rothschild court said “Because there remain substantial factual disagreements between the parties with respect to many — if not most — of the eight Polaroid factors, any of which could be dispositive to the outcome, the Court declines to grant summary judgment for either party on this issue.  Does this sound like the court kept in mind what the 2nd cir had said in Twin Peaks? Josh: In Rogers v Grimaldi, the court gave some examples of what would constitute “explicitly misleading” such as a book title “Nimmer on Copyright” for a treatise that was not authored by Nimmer, or “Jane Fonda’s Workout Book” for a book Jane Fonda had nothing to do with. Scott: According to the motions for summary judgment filed by both parties, there doesn’t see, to be that type of evidence.    Hermès pointed to a study it commissioned that found a 18.7% net confusion rate among potential consumers of NFTs, and noted third party social media posts which mistakenly assumed an association and the fact that an IP lawyer in Paris wrongly stated that Hermès and Rothschild collaborated on the METABIRKINS NFTs. According to Hermes, this lawyer thought this because “the names of the NFTs include the famous trademark ‘BIRKIN’ and reproduced the shape of the bag.”  Rothschild pointed out the fact that he never made any affirmative statement linking his project and.  When several publications mistakenly reported an affiliation between Hermès and the MetaBirkins project.  To the contrary, Rothschild’s publicist asked that these publications issue corrections regarding the mistaken affiliation. Rothschild included a disclaimer.  Josh, do you think this rises to the level of explicitly misleads as to the source or the content of the work Scott: And as to Hermes dilution claim, Jack Daniels v VIP products held that the noncommercial use of a mark is expressly excluded from being actionable as blurring or tarnishment. In VIP the court’s stated that “speech is noncommercial if it does more than propose a commercial transaction” and that the “use of a mark may be “noncommercial” even if it is used to “sell” a product”.  The court allowed Hermes dilution claim to go forward.

Journalist Bob Woodward conducted an audio interview with former President Donald Trump for his book ‘Rage’ and later released the tapes as its own audiobook. Now, Trump is suing for copyright infringement. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.   Cases discussed: TRUMP v. SIMON & SCHUSTER INC et al Falwell v. Penthouse Community for Creative Non-Violence v. Reid Read Scott’s article about this dispute on the IP Law Blog here. Watch this episode on the Weintraub YouTube channel here. 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, Trump claims 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. Does Trump have a claim or is his copyright claim “trumped up”.  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 and repeatedly informed him that such interviews were for the sole purpose of a book. Woodward interviewed Trump, both in person and over the phone, on numerous occasions during 2019 and 2020.  The audiobook, The Trump Tapes, is comprised of 20 audio interviews, one with Trump during his presidential campaign in 2016 and the remaining 20 from the interviews conducted during his term as president.  In his complaint, trump states that during the Interviews, he repeatedly stated to Woodward, in the presence of others, that he was agreeing to be recorded for the sole purpose of Woodward being able to write a single book. Josh:The complaint notes a December 30, 2019 interview which, according to Trump, exemplifies that the rights granted were limited. Woodward: On the record for the book, unless you— Trump: For the book only, right? Only for the book. Woodward: The book only, yeah, I’m not— Trump: For the book only, right? So, there’s no— Hogan Gidley, the former White House deputy press secretary then says Right. So, there’s no stories coming out, okay. Trump contends that Woodward did not request to expand the scope of release or furnish a release to use the Interview Sound Recordings for an audiobook or any other derivative work, as is customary in the book publishing and recording industries. Trump alleges that he told Woodward numerous times that the Interviews were to be used by Woodward—and Woodward only—for the sole purpose of accurately quoting President Trump for his forthcoming book “Rage”, and not for any other purpose, including providing, marketing, or selling the Interviews to the public, press, or the media, in any way, shape, or form. Scott:So best practices would have been for Woodward to get a written release from Trump assigning over any rights Trump may have had in the interview. According to the complaint that didn’t happen and according a press release by Woodward responding to the complaint, that seems to be the case. Josh:Based on this Trump claims that he owns the copyright in the entire sound recording or at least Trump’s response to the interview questions. But the failure of Woodward to obtain a written release doesn’t mean that Trump owns the copyright in the recording. Scott:True. The audiobook may likely be considered a joint work. According to the Copyright Office compendium, The Copyright Act defines a joint work as a work “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” A work of authorship is considered a joint work “if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as ‘inseparable or interdependent parts of a unitary whole.’” The key requirement “is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit. Josh:If the audiobook is a joint work, then Trump would own AN INTEREST in the audiobook.  According to the Copyright compendium, the authors of a joint work jointly own the copyright in each other’s contribution. In other words, all the authors are “treated generally as tenants in common, with each co-owner having an independent right to use or license the use of a work, subject to a duty of accounting to the other co-owners for any profits. Scott:Interestingly, there is precedent that an interviewee does not hold any copyright in an interview. In the 1981 case of Falwell v. Penthouse Reverend Jerry Falwell gave an interview to two journalists who sold the interview to Penthouse magazine. Falwell sued Penthouse for infringement of common law copyright, among other claims. In dismissing Falwell’s copyright claim the court said that Falwell “cannot seriously contend that each of his responses in the published interview setting forth his ideas and opinions is a product of his intellectual labors which should be recognized as a literary or even intellectual creation.  And then there is the more recent case of Taggart v. WMAQ Channel 5 Chicago, in which 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 and his publisher argue that Trump’s claim is meritless and that it will be vigorously defended. I am not so certain that, at this point in time, we can label Trump’s claim as being completely meritless. Scott:I agree with you Josh. It’s not completely clear that the permission Trump granted to Woodard, the basis of an implied license, extended to the audiobook.  And while its entirely clear to me that Trump can’t sue Woodward for copyright infringement, a claim for breach of contract may lie. However, I think it’s questionable whether Trump has any copyright interest in the audio tapes. However, if his is a claim for accounting will also lie.

A Florida bankruptcy court has terminated FTX’s naming rights agreement for an NBA arena. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel, here.