The Briefing by Weintraub Tobin

Vogue Magazine is suing 21 Savage and Drake after they created mock Vogue Magazines to market their new album. Scott Hervey and Josh Escovedo discuss the dispute on this episode of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Josh: Conde Nast, the publisher of Vogue magazine, filed a Complaint against Drake and 21 Savage in the United States District Court for the Southern District of New York, alleging claims under the Lanham Act concerning Drake and 21 Savage’s promotion of their recent collaboration album Her Loss, which was released on November 4. In the Complaint, Conde Nast alleges that Drake and 21 Savage ran a deceptive campaign and utilized Vogue’s reputation by creating fake Vogue magazine covers to promote the album. According to the Complaint, they even thank editor-in-chief Anna Wintour for her support. Scott: The complaint also includes allegations that Drake and 21 Savage misled the public into thinking the fictitious Vogue covers were from a real issue that would have been released on October 31. Conde Nast has been clear that none of this promotion was authorized by the company, especially not the alleged distribution of copies throughout North America, or the placement of so-called counterfeit covers along streets and buildings in various cities. The Complaint also takes issues with the fact that Drake and 21 Savage have posted similar content to more than 135 million social media followers. Josh: One of Drake’s posts featuring the faux Vogue ad included a caption that states, “Me and my brother on newsstands tomorrow!! Thanks, @voguemagazine and Anna Wintour for the love and support on this historic moment. ‘Her Loss’ Nov. 4th.” Conde Nast was obviously displeased since it has been using the mark in commerce since at least 1892, and in connection with digital advertising since 1998. It is, without question, one of the most well-known fashion publications in the world. Surely it is that reputation that led to Drake and 21 Savage using this idea for promotion. Scott: According to Conde Nast, the campaign has created significant confusion among the public, as well as the media, with several media companies actually believing that the cover feature was real. As a result, they even ran stories about the artists landing the cover of Vogue for the album. Josh: Making matters even more significant, Drake and 21 Savage’s public relations team sent emails announcing that copies of the putative Vogue magazine would be handed out in specific countries, and then, according to the Complaint, they proceeded to distribute a near-exact reproduction of the October Vogue magazine, including Vogue’s copyrighted content, with a Drake and 21 Savage cover in those areas. There were, of course, some pages that had been changed to include superimposed promotions for Her Loss on the pages or to include photos of Drake. Scott: According to Conde Nast, its attorneys reached out to the Defendants and sent cease-and-desist demands prior to filing suit, but its warnings were not heeded. The Complaint includes claims for trademark infringement, counterfeiting, false designation of origin, unfair competition, trademark dilution, false advertisement, and other violations of NY law. Josh: Most recently, Conde Nast moved for and obtained a temporary restraining order precluding Drake and 21 Savage from using fake Vogue maagzines and covers or using the likeness of its editor-in-chief to promote Her Loss, with the Court expressly finding Conde Nast has a likelihood of success on the merits of its claims. The order stated that the rappers are “Confusing consumers about the origin, sponsorship, and approval of the bogus Vogue cover.” The Court also directed Drake and 21 Savage to appear before the Court on November 22, 2022 to show cause as to why the restraining order should not convert to a preliminary injunction for the duration of the case. That will be Drake and 21 Savage’s opportunity to respond to Conde Nast’s contention. We will certainly want to keep an eye on that, but before we wrap up, do you think the Court is headed the right direction with this Scott?

A law firm has filed a trademark infringement lawsuit against its namesake. Scott Hervey and Josh Escovedo discuss this case in this installment of The Briefing by the IP Law Blog. Watch this episode here.   Show Notes:  Scott: Lewis Brisbois Bisgaard & Smith, LLP is suing Lewis Brisbois Bisgaard & Smith, LLP in a Texas federal court for trademark infringement. No, this is not law firm schizophrenia. But it is a weird case that may exemplify the strength of common law trademark rights. Scott: Lewis Brisbois Bisgaard & Smith is a well-regarded national law firm with 1,600 lawyers across many states, including Texas. Since 2002 Lewis Brisbois has operated under the business name Lewis Brisbois Bisgaard & Smith, and since 2009 the law firm has operated an office in Texas. The firm also owned a registered trademark for Lewis Brisbois Bisgaard & Smith, but apparently, that trademark registration went abandoned in 2020. This fact is a plot point later on in our story. Josh: So who is this other Lewis Brisbois Bisgaard & Smith. Scott: Yes, it’s time for this weird twist.  Michael Bitgood and Richard JonesMay 26, 2022, Bitgood filed a registration for a domestic limited liability partnership, “Lewis Brisbois Bisgaard & Smith, LLP” in the Office of the Secretary of State of Texas. Bitgood listed the services as mediation and related services. They then filed an assumed name certificate in the Office of the Secretary of State identifying the Bitgood Entity’s assumed name as “Lewis Brisbois Bisgaard & Smith.”  I am sure you are asking why would Bigtood and Jones do this. Well, it seems that the law firm represented some third parties to defend an unrelated case where the plaintiffs were Bitgood and Jones. After Bitgood and Jones formed their entity, they amended the complaint and added their new entity, Lewis Brisbois Bisgaard & Smith, as a plaintiff and then added the law firm and the law firm’s lawyer handling this other case as defendants.  Against the law firm and its lawyer, Bitgood, Jones and the Bitgood entity…the other Lewis Brisbois Bisgaard & Smith…allege that they are using the Bitgood Entities name in an illegal and unauthorized manner reasonably calculated to create mass confusion and damage. Josh: I think my head is about to explode. Let me see if I get this right.  Bitgood and Jones sued some third parties. Lewis Brisbois Bisgaard & Smith represent these third parties in the lawsuit.  Bitgood and Jones, then…I assume thinking it provides them with some type of strategic leverage in their underlying lawsuit, form an entity in Texas, Lewis Brisbois Bisgaard & Smith, LLP, they then add that entity as a plaintiff in their first lawsuit and add the law firm and lawyer as defendants claiming, essentially, trademark infringement.   Scott: You have it correct. I am sure you are asking yourself, why would they do that?  Well, there was a clue to that in Bitgood and Jones’ amended complaint. They claimed that the law firm failed to renew their filing with the Texas Secretary of State, which is why they were able to file their incorporation. This seems to be part of some plan to cause the law firm to be unable to represent the defendants in the underlying lawsuit. Josh: So going back to your lead-in for this story, I assume the law firm filed a trademark infringement lawsuit. Scott: That’s right, they did.  And Bitgood and Jones filed a motion to dismiss. Apparently Bitgood and Jones thought they hit the pot of gold at the end of the rainbow when they discovered that the law firm’s federal trademark registration went abandoned on July 10, 2020.  But, as you know, Josh, that’s not the end of the story. Josh: No, it isn’t. Bitgood and Jones failed to consider the common law trademark rights the law firm has in its name. Scott: Trademark rights stem not from the registration of a mark but from actual use in commerce. While some civil law nations follow the “first to file” rule, which grants senior rights to the first party to win the race to the trademark office, the United States follows the rule that ownership and priority go to the party who was first to use. Common law rights are defined by the scope of actual use and the geographical territory in which the mark was used. While a merchant may acquire common law trademark rights in the name of a brick-and-mortar business, that interest is limited to the geographic area in which the merchant actually does business.  As such, another merchant in another town can use the exact same name for a similar business and not infringe the common law rights of the first merchant if the first merchant does not advertise or do business in that town. Josh: This case raises two great takeaways as I see it.  The first is that the Lewis Brisbois federal trademark – which is a composite mark- probably should not have gone abandoned without a substitute application… preferably a plain word mark. Being filed prior. The composite mark went abandoned July 10, 2020 and the law firm did not file any new trademarks until September 29, 2022. Now maybe they had a reason for the lapse; it does seem like they have new branding on their website, so maybe this is all a case of unfortunate timing.   These are not inexperienced lawyers.   However, a good rule of thumb for all trademark owners is to make sure that all trademark renewal dates are well calendared and responded to time as there is no grace period for failing to file a renewal on time. Scott: The second lesson is one that Bitgood and Jones will soon learn.  Don’t forget about common law trademark rights.  Sometimes clients fail to appreciate the business using a brand in one or two states that hasn’t filed a federal trademark application.  Those mark owners can still sue for trademark infringement and still prevent you from adopting a confusingly similar mark, as I am sure Bitgood and Jones will come to appreciate.

Cardi B was cleared of liability in an action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. Scott Hervey and Josh Escovedo discuss this in this installment of The Briefing by the IP Law Blog. Watch this episode here. Show Notes: Josh: Rap star Cardi B has been cleared of liability by a California jury in the Central District in the action alleging that she misappropriated a man’s likeness by using his unique back tattoo on the cover of her 2016 mixtape. That’s what we’ll be discussing on this installment of The Briefing by the IP Law Blog. Josh: On October 21, 2022, a federal court jury found Cardi B was not liable for misappropriation of a man’s likeness by using his back tattoo on the cover of her 2016 Gangsta Bitch Music Vol. 1 mixtape to make it look as if he were performing a sex act on Cardi. This all began in 2017, when Kevin Michael Brophy, a tattoo model and marketing manager for surf and skate company RVCA, filed suit against Cardi over the aforementioned mixtape cover after sending a cease-and-desist letter that went unanswered. According to Brophy, the tiger and serpent tattoo on the model on the cover resembles his own and constitutes a misappropriation of his likeness under Civil Code section 3344 and false light invasion of privacy. Brophy claims that he was angry because “It looks like I’m giving oral sex to somebody that’s not my wife, or somebody that’s not my partner, and an image that I never signed off on, ever. Being a father of two and a devoted husband and a man of faith as well, this goes against everything that I stand ford, and I would never ever sign off on something like this.” Scott: Brophy claims that he suffered shame, embarrassment, and humiliation after learning that portions of his tiger back tattoo had been overlaid onto the back of the black model featured on the cover of Cardi’s 2016 mixtape. For those reasons, he sought compensatory, punitive, and disgorgement of profits from the mixtape. Josh: But irrespective of the claimed damages, the jury ultimately concluded that Cardi B was not liable to Brophy. This came after hearing testimony from Brophy and his wife and his alleged humiliation and concerns, as well as testimony from Cardi and her former manager who stated that the model on the mixtape cover was not Brophy and that the image had been substantially altered, giving rise to First Amendment protection under the transformative use doctrine. The jury also hear from the graphic designer who edited the image. He said that he found the back tattoo somewhere on the internet after searching for a backpiece tattoo.” He also claimed that he made several changes to it, removing certain pieces, color correcting, and rearranging other parts of the tattoo before overlaying the image onto the model’s back. Scott: During closing argument, Plaintiff’s counsel argued that the defense was continuously trying to explain how the tattoo was transformed, yet they denied using Brophy’s likeness. According to Plaintiff’ counsel, if they weren’t using Brophy’s likeness, then they wouldn’t have had to argue about how they had changed it. Plaintiff’s counsel argued that Brophy’s likeness was material to the vision for the mixtape and that Brophy’s back tattoo is what makes Cardi look strong and in control. Of course, the jury obviously rejected these arguments, ultimately finding in favor of Cardi. Josh: That’s right. But here’s a question for you Scott, even though this is taking place in the Ninth Circuit, if the law from the recent Illinois District Court case involving Randy Orton applied, would the tattoo artist have a claim against Cardi for copyright infringement? I know we would have to evaluate the merits of Cardi’s fair-use defense in greater detail, but let’s assume for the sake of the discussion that it were not fair use. Would Brophy’s tattoo artist have a claim even though it seems Brophy himself would not? Josh: I don’t think the Court’s decision in the Orton matter was correct, and I think it will be reversed and remanded by the Seventh Circuit, but IF it applied, I think Brophy’s tattoo artist would have potentially had a claim against Cardi. Luckily for Cardi, it was Brophy bringing the claim.

Hermès is suing an artist for trademark infringement over his series of digital artworks called MetaBirkins. Scott Hervey and Josh Escovedo discuss the case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss developments in the trademark dispute between NBA star Luka Doncic and his mother. Watch this episode here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark dispute between NBA Star Luka Doncic and his mother. Watch this episode here.

As Scott Hervey previously wrote on the IP Law Blog, a tattoo artist won a copyright lawsuit against a video game publisher for showcasing an athlete with their tattoo design in a game. Scott and Josh Escovedo discuss the case on this episode of The Briefing. Watch this episode here. Read Scott’s article here. Show Notes: Scott:  A jury in the district court for the southern district of Illinois in the case of Alexander v. Take-Two Interactive Software found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take Two Interactive infringed the tattoo artist’s copyright in the tattoos. I think the trial court, and the court of appeals that rejected Take Two’s defenses- defenses that won the day in the US District Court for the Southern District of NY in Solid Oak Sketches v 2k Games-got it all wrong and this decision could have wide-ranging implications.  We are going to talk about this on the next installment of the briefing by the IP law blog. Scott: So here is the history of this case. Tattoo artist Catherine Alexander sued Take-Two and 2K Games in the U.S. District Court for the Southern District of Illinois for depicting World Wrestling Entertainment wrestler Randy Orton in the video game WWE 2K. On a motion for summary judgment, Take 2 made the same arguments that garnered it a win previously Solid Oak Sketches v 2k Games – (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of WWE 2K Josh: Alexander testified in 2009, Alexander contacted WWE’s legal department to negotiate about a possible faux sleeve product depicting her tattoo works. A WWE representative laughed at her and stated she had no grounds and that they could do what they wanted with Orton’s images because he was their wrestler. WWE then offered Alexander $450 for extensive rights to use and produce the tattoo designs on WWE products. Alexander declined the offer and advised WWE that she did not grant it any permission to copy, duplicate, or otherwise reproduce any of her designs. Defendants have released and promoted wrestling video games titled “WWE 2K16”, “WWE 2K17”, and “WWE 2K18” which feature Ortons Scott:  In the Solid Oaks case, as to the implied license defense, the court found that the NBA players featured in the video game had implied licenses to use the tattoos as elements of their likenesses and the video game publisher’s right to use the tattoos in depicting the players derives from these implied licenses.  A crucial element of the court’s finding – the tattoo artist knew their subject was likely to appear “in public, on television, in commercials, or in other forms of media.  Alexander testified that she has never given permission to any of her clients to use copies of her tattoo works in videogames and argued that the WWE and Take 2 are conflating Orton’s rights to his own likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as in video games Josh: In the ruling on the motion for summary judgment, the Alexander court found that it wasn’t’ clear whether Alexander or Orton actually every discussed whether and to what extent Orton had permission to copy and distribute the tattoos, and whether any implied license would include sublicensing rights, and denied summary judgment on this affirmative defense. Scott: The court also found that the use was not fair use. The key to a finding of fair use is whether the new use is transformative.  Does 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; it asks, in other words, whether and to what extent the new work is “transformative.” Take Two argued that its use of the copyrighted tattoos was “transformative; that Alexander inked the tattoos at Orton’s request to reflect his personal expression, whereas Defendants depicted the tattoos in WWE 2K to depict Orton realistically. The court found a factual dispute in this case as to Defendants’ purpose in using the tattoo works. Alexander contends she created the tattoos to display them on Orton’s body and that Defendants used the tattoos for the same purpose; to display them on Orton’s body in the videogames. The court bought this. Josh: So after the court’s ruling on the motions for summary judgment, the matter proceeded to trial.  Apparently, shortly before trial the court held that the de minimis use defense was not applicable.  Then, it appears that the court refused to allow the jury to hear instructions on the implied license affirmative defense, even though neither party objected to the jury getting this instruction.  Similarly, the court refused to allow the jury to hear instructions on the affirmative defense of waiver. Scott: However, the jury did get instructions on fair use, very bare bones instructions which is less than helpful for a case like this.  However, fair use Fair use is a mixed question of law and fact, and the jury is only supposed to resolve disputed factual issues underlying the defense which, according to the court’s ruling on the motion for summary judgment, was the defendant’s purpose for using the tattoos.  After that, it was for the court to determine the ultimate applicability of fair use. So it seems that the trial court didn’t get instructions on the affirmative defenses it should have decided and essentially decided both the factual and legal issues applicable to the fair use affirmative defense, Josh: This certainly sounds like grounds for appeal and I am sure that Take 2 will, however we have to deal with the aftermath of this decision. Counsel for Alexander is quoted as saying that Alexander’s win at the trial court could “open the floodgates of litigation) and I think I agree with him. Scott: I do too Josh. I think that every tattoo artist who inked an actor, musician or sports figure will be looking for some depiction of the tattoo in medias as a hook for a potential lawsuit unless the artist had enough foresight to get a signed release.  But even crazier is the practical effect of this ruling. Essentially, once someone gets a tattoo, that person loses the full control over that body part. Now the tattoo artist has, essentially, a blocking right on the depiction of that body art. If a celebrity has an arm tattoo and that celebrity has to be shirtless in a movie, unless the producers covered the tattoo up with makeup- which they very well may need to do after this ruling, the producer would need to get a release from tattoo artist.  And what if the tattoo artist didn’t want to grant a release and for some reason the producer couldn’t cover the tattoo up, that could mean that the actor may lose the job. Sounds a bit extreme, but this is a logical extension from the decision. Josh: And what if that arm tattoo is fully visible in the celebrity’s social media pictures. Technically that would be an infringing public display of the work, I understand the fundamentals of a paparazzi suing a celebrity when that celebrity post a picture taken by the paparazzi without the permission, but I have a very hard time with a tattoo artist suing a celebrity when the celebrity takes a selfie that captures the tattoo on the celebrities arm. Scott: Agreed. This decision means that persons who have tattoos no longer have complete control and autonomy over their persona.  Because a person’s outward appearance is part of that person’s right of publicity, how is not reasonably understood that, when a person gets a tattoo that tattoo becomes inexorably merged with the person’s likeness and that any rights a person has in exploiting their likeness would extend to the tattoo. It’s almost impossible to fathom otherwise. Josh: So what’s your recommendation to your studio and production company clients. Scott: If an actor’s tattoo is going to be seen on camera, make the actor get a release…one that we prepare…from the tattoo artist.  Sometimes this could be impossible, in which case production may need to consider covering up the tattoo with makeup or clothing. Josh: And how do you deal with content that’s already done and out in the marketplace? Scott: Be the first to file a declaratory relief action in the southern district of New York.    

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a recent episode of Marvel’s “She-Hulk: Attorney at Law” and the accuracy of a trademark infringement case featured on the show. Watch this video here.   Show Notes: Josh: The last few weeks, every Thursday night in my household, we sit down to watch the latest episode of She-Hulk on Disney+. Full disclosure, we consume every bit of content that the Marvel cinematic universe puts out. I have been waiting a few months for the release of She-Hulk though, since the main character Jennifer Walters is an attorney and a graduate of UCLA School of Law, not unlike myself. But what I didn’t expect was for the content of a particular episode to become my choice of topic for this program. A few weeks ago, at the end of that week’s episode of She-Hulk, Jennifer Walters was served with a complaint by a process server at her home, and when she removed the pleading from its folder, Walters learns that she had been sued by an influencer from an earlier episode for trademark infringement. As you can imagine, at that point, I could not wait for the next episode of the show. Scott: Although we are obviously big fans of intellectual property, it isn’t often that a trademark dispute is at the center of a movie or television shows or plot. This instance in particular was unique because it constituted the focal point of the entire episode and walked the viewers through an abridged version of the process. Josh: The next episode picked up exactly where the prior episode had left off, with Walters being in possession of the recently served complaint. She went to her full-service law firm and retained an attorney who specialized in trademark litigation. At first, I was  little put off by a comment made by another one of the characters about how Walters should have already registered She-Hulk as a trademark because she should know that whoever files first gets the mark. Many of you probably already know why this irked me But if you don’t, it is because the United States is not a first to file country. Some countries are, but the United States focuses on first use, not first to file. Scott: These are the kind of things that would only bother an intellectual property aficionado. That said, it isn’t uncommon for television shows or movies to take certain liberties with things in the interest of creating a more interesting final product. Josh: That’s true, and while something like that wouldn’t necessarily bother me in most instances, when it’s something that you specialize in, I feel like it is a little harder to accept. That’s probably how many medical professionals feel when they watch shows like Grey’s Anatomy I’m sure. Anyway, my disappointment didn’t last long, because Walters subsequently filed a counter claim against Titania, the influencer who appropriated her name, seeking to enjoin her from utilizing She-Hulk in commerce, because Walters used the mark first. On that basis, Walters moved for summary judgment, which was heard the next day, which is at least 365 times faster than any motion for summary judgment I’ve ever filed or opposed. Scott: Although the show reflects an unrealistically streamlined legal process, it did manage to stay reasonably true to the requirements of such a dispute. Specifically, the remainder of the episode focused on Walters proving that she was the first to adopt and use the She-Hulk Mark. Josh: But it did once again stray from true trademark law in that Walters utilized her online dating profile, where she adopted the She-Hulk persona after failing to get any dates as Jennifer Walters, as evidence of her use of the SheHulk mark prior to Titania’s filing of a trademark application. Of course, such use would not suffice in a real trademark proceeding since such use does not constitute use in commerce, unless her dating profile somehow served as marketing collateral for her superhero services, but I do not think that was the case. Frankly, this part made the dispute feel more like a right of publicity case than a trademark case, which is fine, but let’s call it what it is. Scott: I mean, you can’t really expect the most accurate portrayal of a trademark infringement dispute in an MCU legal-comedy on Disney+, can you? Josh: No, I suppose that’s true. I should just be happy that Marvel and Disney chose to combine a few of my favorite things in one piece of content, and honestly, I am. I enjoyed the episode for what it was, but for purposes of the Briefing, I thought it was interesting to contrast trademark law as presented in She-Hulk to trademark law as it exists in the United States. Scott: It definitely made for an interesting episode. Thanks for sharing.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a defamation dispute between Rachel Williams – a victim of con artist Anna Sorokin – and Netflix, over her portrayal in the docudrama “Inventing Anna.” Watch this episode here. Show Notes: Scott: Netflix finds itself mired in yet another defamation and false light lawsuit, this one brought on by its portrayal of Rachel Williams, the Vanity Fair photo editor who’s friendship with Anna Delvey –  who passed herself off as German heiress Anna Sorokin.  Williams’ complaint raises some interesting questions about the portrayal of Williams in the program.  We are going to discuss this lawsuit on the next installment of the Briefing by the IP Law Blog Scott: Rachel Williiams does not come across well in the Netlix program, Inventing Anna.  Rather, she comes across as a privileged, freeloader, who sponges off of Sorokin and then abandones Sorkin when Sorkin’s real situation comes to life. So, let’s talk about what Williams will have to establish in order to move her claim forward. Josh:  Williams. brings claims for   defamation and false light.  For her defamation claim Williams will have to establish: that the statements were defamatory; that the statements were published to third parties; that the statements were false; and that it was reasonably understood by the third parties that the statements were of and about herf.  Since Williams is a public figure – she published a story in Vanity Fair and a book about her experiences with Sorkin – she must also prove by “clear and convincing evidence” the statement was made with “actual malice” meaning that the defendant knew the statement was false, or had serious doubts about the truth of the statement. In most states, libel is defined similarly. Scott: A false light claim is a type of invasion of privacy, based on publicity that places a person in the public eye in a false light that would be highly offensive to a reasonable person, and where the defendant knew or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the aggrieved person would be placed.  A false light claim is equivalent to a libel claim, and its requirements are the same as a libel claim, including proof of malice. So, in order for Williams to prevail on both her false light and defamation claims, she would have to demonstrate that her portrayal in Inventing Anna was (1) assertions of fact, (2) actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice. Josh:  Actual malice would be established by showing that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact. Scott: So, let’s take a look at the various portrays of Williams she claims to be actionable.  Williams notes a scene in episode 2 where Sorokin’s friend Neff Davis states or implies that Williams used to be Sorokin’s best friend, but Williams dropped her as a friend because she was jailed and could not pay for Williams’ social life and clothes.  Williams claims that these scenes are false.   Williams was friends with Sorokin because she liked her, not because Sorokin would pick up the tab, and she did not drop Sorokin as a friend because Sorokin was no longer able to pay for her social life and clothes, but rather because she discovered that Sorokin had made the fraudulent statements and promises which induced her to incur significant liabilities, and that Sorkn was a liar and a con artist.  That Sorokin never bought clothes, shoes, earrings, or a bag as gifts for Williams, who never wore Sorokin’s clothing or accessories and never told Neff that Sorokin had bought her clothes.  Williams claims that the statements are defamatory because Williams is falsely portrayed as a disloyal and opportunistic friend, a sponger, and a freeloader. Josh: There are other scenes referenced by Williams which portray Williams as a freeloader or a false friend.  For example, a scene in episode 5 where Williams is portrayed in attempting to convince Sorkin to pay for an expensive hairstyle for Williams and a scene in episode 6 where Williams is portrayed trying to get Sorkin to pay for a more expensive hotel room in Moracco.  Williams claims. Williams claims that this scene is false and never happened.  Williams never tried to get Sorokin to pay for an expensive hair stylist for her, and Sorokin never paid for her hair.  Also, Sorokin made the arrangements with the Hotel herself, and Williams did not make any suggestions to her about the accommodation there.  Williams also takes offense to her being portrayed in the program as not paying for any dinner, drinks or spa outings with Sorkin.  Williams claims that this wrongfully portrays her as a freeloader.  IN the complaint Williams claims that she regularly paid her way. Scott:  In the complaint Williams also takes issue with a scene in episode 6where Williams is portrayed as abandoning Sorkin in Morocco.  After the scenes depicting the problems with the credit cards at the Hotel and the private museum tour, Williams tells Anna who is alone in her room, drinking heavily and depressed, that she is leaving.  Sorokin begs her not to leave her, but Williams leaves anyway.  According to the complaint, Williams had a pre-existing business meeting in France and Williams had told Sorkin prior to the pair leaving for Morocco, that she (Williams) would be leaving on a certain date and that Williams left Morocco Sorkin was not sad or depressed.  Williams alleges that The statements in these scenes are defamatory because Williams is falsely portrayed as a fair weather friend who abandoned Sorokin when she was alone, depressed and in trouble in Morocco, and needed help and support. These are negative personal traits or attitudes that Williams does not hold. Josh: Another set of interesting allegations has to do the programs treatment of the charges from Williams and Sorokin’s Morocco trip on Williams’ company credit card.  The program portrays Williams as not being entirely upfront with her employer, Vanity Fair, about the charges.  In fact in the program there is an exchange between Williams and one of her supervisors where Williams is portrayed feigning knowledge of the outstanding charges; essentially Williams is portrayed as lying to her employer.  Williams states that this is a false statement and/or attribution in that she never lied to her employer about this charge, but rather, she voluntarily told her employer that a large personal charge had been placed on her Business Amex and that she accepted responsibility for it. Scott:  Before the court even gets to the question of whether Williams’ portrayal is defamatory, the court would first have to determine whether her portrayal was substantially true. If the court determines that a statement is substantially true, that’s the end of the defamation and false light claim.  Its only after the court determines that the statement or portrayal is not substantially true that the court will consider whether the statements or portrayals are statements of fact or the dramatized opinion of the producer. Josh: In deciding whether a statement is substantially true, courts typically compare the language or portrayal with the actual truth to determine whether the truth would have a different effect on the mind of the average reader/ viewer.  Taking the allegations in the complaint as true – that Williams did not say or act in the way she is portrayed in the series, I think the court would not find the various complained of portrayals as being substantially true, Scott: I agree Josh.  Williams’ portrayal in the series was was commented on by a few media outlets.  In an article entitled “Inventing Anna has a brutal vendetta against Rachel Williams – is Netflix bitter she sold her story to HBO?”, the Independent wrote, “Inventing Anna really, really wants us to hate Rachel Williams… Williams features as a character in Inventing Anna, a show which seems hellbent on making her out to be the worst person in the world…The New York Post wrote “Shonda’s most insane move, however, is treating poor Vanity Fair photo editor Rachel Williams like she’s the Wicked Witch of the West. The complaint also alleges that, as a result of Netflix’s portrayal, Williams was subjected to substantial online abuse, negative in-person interactions and negative characterizations in podcasts.  The complaint includes a representative sample but notes that Williams has received thousands of similar abusive messages.  The allegation is that if Williams was not falsely portrayed in this manner, she would not have been subject to this negative treatment by the public. Josh: If a statement/portrayal is not truthful, then the next question would be whether an average, reasonable viewer, watching the scenes in their original context, would conclude that they are statements of fact and not the dramatized opinion of the producer.  The 9th Cir believes that viewers of this type of programming know that they are “more fiction than fact.” however New York does not go this far.  In Fairstein v. Netflix, the United States District Court for the Southern District of New York declined to conclude that viewers of When They See Us would assume the program is “more fiction than fact” but rather that the dialogue in the dramatization “is not a verbatim recounting of the real-life participants and is intended to capture the essence of their words and deeds.” Scott:  According to the Fairstein court, the key to determining the difference between non-actionable statements of opinion and actionable statements of facts (or an opinion that implies that it is based upon facts which justify the opinion) is the implication that the statement is based on undisclosed facts known to the defendants.  So, is. Williams’ portrayal the unactionable, dramatized opinion of the producers, or is her portrayal based on, or does it appear to the average, reasonable viewer to be based on undisclosed facts known to the producers? Josh: The producers include a very conspicuous disclaimer at the beginning of every episode.  The disclaimer generally states “This story is completely true, except for all the parts that are total bullshit or totally made up.” Usually disclaimers give the producer some room to claim that a work or parts of a work are dramatied opinions.  However, as the United States District Court for the Central District of California pointed out in Gaprindashvili (Ga prin dash vill) v. Netflix (the Queens Gambit defamation suit), the presence of a disclaimer is a “factor in the analysis, albeit not a dispositive one.” Scott: That’s right Josh, in that case the court found that Gaprindashvili ((Ga prin dash vill) had plead sufficient facts to support her defamation claim and the court reminded Netflix that works of fiction are not immune from defamation suits if they disparage real people. Josh: The distinction between fact and opinion is an issue of law for the courts, and the determination will be based on the court’s assessment of how the statement would be understood by the average person exposed to the statement in its full context.  I  think it’s possible that the court will find that as to some of the depictions, especially the scenes in which Williams is portrayed as a less than truthful and forthcoming employee of Vanity Faire, the average viewer would not have a reason to conclude that such actions reflect a dramatized opinion of the filmmakers and such viewer could fairly conclude that the depiction was based on undisclosed facts known to the defendants. Scott: Let’s look at the remaining elements as I think they somewhat run together – actually false or create a false impression about her, (3) are highly offensive to a reasonable person or defamatory, and (4) made with actual malice.  I think the media stories on the negative depiction of Williams and the evidence of the hatred being aimed at her online establish that a false impression was made and that this false impression was highly offensive to a reasonable person.  As for actual malice, Williams would have to show that Netflix deliberately portrayed Williams in the hope of insinuating a defamatory import to the viewer, or that Williams knew or acted in reckless disregard as to whether her portrayal would be interpreted by the average viewer as a defamatory statement of fact. Josh: The Complaint has a separate section devoted entirely to establishing actual malice.  According to the complaint, the production had hired a researcher whos job it was to investigate the Sorokin story and provide the research to the writers.  . Shonda Rhimes, the executive producer and creator of the Series, explained in an interview, “We were telling a story that was based on fact, so needed a document to build an extensive timeline of events, to dig into little things that we weren’t even sure were going to matter. For this particular show, having someone who has read every transcript of the trial, who was paying close attention to every detail in Anna’s life, was really, really important, because we wanted to know what we were thinking. We wanted to know what we were making up; we didn’t want to be making things up just for the sake of it.” She added, “we wanted to intentionally be fictionalizing moments versus just accidentally be fictionalizing them.” Scott: The complaint also points to the fact that the New York post article upon which the series is based does not contain any negative portrayal of Williams.  Also, the fat that Williams had published the Vanity Fair article and book, My Friend Anna.  Also, it appears that Williams’ attorney sent Netflix two letters during the shows production expressing concern that Williams would be portrayed falsely- Based on the complaint it seems that Netflix was likely on notice. Netflix doesn’t shy away from a lawsuit and if what they have done in previous indicators I expect Netflix will hit back hard, arguing that the portrayals are substantially true…to the extent they are not the producer’s dramatized opinion.  We will have to see where this case goes  

In this archive episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo explain the importance of short-form copyright assignment agreements. Read more about this topic here.