The Briefing by Weintraub Tobin

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.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Paramount’s motion to dismiss a copyright infringement lawsuit relating to ‘Top Gun: Maverick.’ Watch this episode here. Show Notes: Scott: Paramount came into the Top Gun Maverick copyright lawsuit guns hot by filing a motion to dismiss claiming that the sequel to the 1986 motion picture, Top Gun, does not infringe the copyright in Ehud Yonay’s magazine article.  We are going to talk about this… Scott: In May 1983, California magazine published the article Top Guns, by EHUD YONAY.   This article was an inside look at the real  Navy Fighter Weapons School Top Gun based out of Miramar California.  The article begins with a vivid description of  two Top Gun F14 Tomcat avaitors, Yogi and Possum, on a hop,  simulated dog fight training, against Top Gun instructors then continues with a deep dive into what makes Yogi and Possum (and other fighter pilots) tick, a  look at the Top Gun training regimen, life on base and the history of Top Gun.  When the article was published, it was optioned and in the credits for Top Gun Yonay is credited on the original movie as a writer of the magazine article Josh: On January 23, 2018, the Yonays properly availed themselves of their right to recover the copyright to the Story under the sent Paramount a statutory notice of termination under Copyright Act, and then filed it with the Copyright Office.As we have discussed previously on this program, Section 203 of the Copyright Act permits authors (or, if the authors are not alive, their surviving spouses, children or grandchildren, or executors, administrators, personal representatives or trustees) to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978 when certain conditions have been met. Upon the effective date of termination, all rights in the work that were covered by the terminated grant revert to the author, however any derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.  The Yonays sued Paramount for copyright infringement claiming that the Top Gun Maverick infringes the Yonay’s right in the original article. Scott: When we previously reported on the complaint, we stated our belief that is case is going to be about whether Maverick is actually a derivative of the article, and, more interestingly, would Maverick even infringe the article given that the article is not a work of fiction but rather a factual work.  It seems that Paramount agrees. Josh: In its motion to dismiss Paramount correctly argues that in order to state a claim for infringement a plaintiff must show substantial similarity between the works’ protected elements.  Determining whether works are substantially similar involves a two-part analysis consisting of the ‘extrinsic test’ and the ‘intrinsic test.’” The extrinsic test “assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression, whereas the intrinsic test “examines an ordinary person’s subjective impressions.  Although a plaintiff must prove both to establish substantial similarity,a finding of substantial similarity under the extrinsic component is a necessary prerequisite to considering the intrinsic component, which is expressly reserved for the jury.  As such, on a motion to dismiss, the court will only consider the extrinsic test and the extrinsic test can  end a plaintiff’s infringement case  only when the similarities between the  works are either wholly due to unprotected elements, or where the amount of similar protected expression is de minimis as a matter of law. Scott: Paramount argues that in applying the extrinsic test and by filtering out the elements that are not protected under copyright law – that is facts, ideas, scenes a faire (which are situations and incidents that flow necessarily or naturally from a basic plot premise) and stock elements – the two works are not substantially similar.   In its motion to dismiss Paramount argues that all elements that are alleged to be similar – the history and operations of the “Top Gun” academy; that the pilots pull off risky aerial maneuvers, that manner of combat training and the tactical discussions the pilots have; descriptions and depictions of fighter jets, including their exorbitant cost; pilots doing push-up exercises; pilots’ use of “call signs” as nicknames and depictions of camaraderie amongst pilots, including bar excursions and games —are reported in the Article as factual. Josh: Paramount also argues that the fact that both works are primarily based at the Naval Air Station Miramar also known as Fightertown USA can’t be considered by the court in determining whether the works are substantially similar because Miramar is or was the location of the real Top Gun training academy and Miramar base is actually referred to as Fightertown USA.  All facts that copyright does not protect.  Paramount also argues that any similarities between the characteristics of the real life pilots and the fictional characters in Maverick must be ignored. Scott: Right.  In its motion to dismiss Paramount relies on Corbello v. Valli, the Jersey Boys case, for the proposition that a character based on a historical figure is not protected for copyright purposes.  As you may recall Josh, we recently discussed this issue – claims of infringement based on the  similarities of characters in works when we discussed Fox’s win in the 6th Circuit based on claims that the Taraji P Henson character in Empire, Cookie Lion, infringed the copyright in Sophia Eggleston’s biography, The Hidden Hand.  In coming to the conclusion that the historical recitation of individual factual character traits and personal history are unprotectable facts, the 6th cir cited to both Corbello and Vallejo v. Narcos Prods. LLC. Josh: There was no way that Paramount was going to bug out of this dogfight. Scott: I agree with you Josh.  Its going to be interesting to see how the Plaintiff’s respond to  Paramount’s motion to dismiss.  Its almost certain that nothing in Paramount’s motion would be a surprise to them and you can bet that they had their objection to Paramount’s motion outlined when they drafted the complaint.    

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo provide an update on the IP dispute between the heirs of Evel Knievel and Disney, over claims of similarities between the late daredevil and the “Toy Story 4” character Duke Caboom. Watch this episode here. Show Notes: Josh The Ninth Circuit refused to revive a lawsuit filed by Evel Knievel’s son alleging that Disney infringed his company’s intellectual property and publicity rights associated with Evel Knievel by creating the Canadian stuntman character Duke Caboom in Toy Story 4. That’s what we’ll discussing on this installment of the briefing by the IP law blog. Josh In October 2021, Evel Knievel’s son, through his company K and K Promotions, Inc., filed suit against Disney claiming that Disney’s creation of the Toy Story 4 character Duke Caboom, a Canadian motorcycle stuntman, infringed the company’s IP and publicity rights related to Evel Knievel. The District Court dismissed the matter in response to a motion to dismiss, finding that the challenged product is an expressive work under Rogers v. Grimaldi, and that Duke Caboom clearly has artistic relevance and was not explicitly misleading. Scott But Knievel’s son was obviously displeased with this ruling, and so he appealed to the Ninth Circuit, hoping the appellate court would revive his case. Much to his chagrin, he learned that he does not have a friend in the Ninth Circuit. Josh I think that’s fair statement, Scott. The Ninth Circuit essentially echoed the District Court and found that the Rogers test applied to the case, that Caboom did have artistic relevance, and that K&K did not alleged sufficient facts to show that the character was explicitly misleading as to its source. The Ninth Circuit stated that the “explicitly misleading” test imposes a “high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” In evaluating whether the use of a mark is explicitly misleading, we consider “(1) the degree to which the junior user uses the mark in the same way as the senior user and (2) the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself.” The Ninth Circuit found that neither consideration was met in this instance. Scott For starters, the Ninth Circuit found that, unlike Evel Knievel, Duke Caboom is a fictional character in an animated film about toys that come to life. The Ninth Circuit also found that Disney added significant expressive content to the mark to make it different from Evel Knievel. Josh Right, for example, Disney created a character with a different name, appearance, and backstory than Evel Knievel. Disney never suggested that Evel Knievel was involved in Toy Story 4, and Evel Knievel was never even mentioned in the film. For these reasons, the Court found the dismissal under Rogers was appropriate. Scott The Court also addressed the district court’s dismissal of the right of publicity claim under the transformative use defense. The Ninth Circuit found that K&K did not challenge the applicability of the defense to such a claim under Nevada law. To determine if a use is transformative, courts consider various factors that balance the defendant’s First Amendment rights with the Plaintiff’s claimed right of publicity. Josh The Ninth Circuit found those factors favored Disney. The Ninth Circuit stated that: The Duke Caboom action figure is “more than a mere likeness or literal depiction” of Evel Knievel. Id. at 1275 (quotations omitted). Even if the character may be generically reminiscent of Knievel to some extent, the district court properly concluded that it is “not a literal depiction,” and instead shares general features basic to stuntmen. Moreover, the economic value of the toy action figure does not derive from Evel Knievel’s persona. Id. at 1274. Instead, it reflects the success of Disney’s Toy Story franchise and its popularity among children. Accordingly, the Ninth Circuit affirmed the dismissal of the right of publicity claim as well. Scott I guess we can mark another one in the win column for Disney. Thanks for sharing.      

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a Trademark dispute between toy maker Mattel and Rap Snacks after the snack company launched ‘Barbie-Que Chips’ in collaboration with rapper Nicki Minaj. Watch this episode here. Show Notes: Josh: The toy maker Mattel has filed an action against Rap Snacks in the United States District Court for the Central District of California for trademark infringement. Specifically, Mattel claims that Rap Snacks’ potato chip collaboration with rapper Nicki Minaj infringed its BARBIE trademark. A couple months ago, Rap Snacks announced that it would collaborate with Minaj on a new chip flavor known as “Barbie-Que Honey Truffle Potato Chips,” a play on Minaj’s Barbie nickname. Mattel was not amused. In fact, the Complaint states that “Not only does the name of Rap Snacks’ product packaging wholly incorporate Mattel’s Barbie trademark, but the logo is confusingly similar to the current Barbie logo.” Scott: And Mattel’s frustration with the situation was surely inflamed by Rap Snacks’ extensive marketing campaign, which included NYC billboards, giveaways at music festivals, an article in People magazine, and social media posts on FB, IG, and TikTok. Josh: Mattel is likely bothered because of its efforts to expand its franchise beyond toys. For example, Mattel has created Barbie-branded snack food items, including pasta, candy, cookies, drinks, and other snacks. According to Mattel, this makes Rap Snacks’ alleged infringing use of BARBIE even more confusing. Scott: According to Mattel, its Barbie brand has been one of the world’s most well-known and recognizable brands for decades. For that reason, Mattel claims that Rap Snacks has improperly benefitted from the goodwill associated with its BARBIE brand. Justice Sotomayor has previously stated that “by any measure — the world-known Barbie is a ‘famous’ trademark.” End quote. Josh: and Justice Sotomayor’s conclusion assuming that it holds up, which I think it would, is significant because that then creates the possibility of a trademark dilution claim. Scott, do you want to tell our listeners why or how that is distinct from a trademark infringement claim? Scott: In a Trademark infringement case, you are really looking at the goods and services that are being used by the mark holder. The analysis is the similarity of the mark relatedness of the goods and services. That’s a trademark infringement claim. Here you got toys from Mattel. Here, you got toys and food, and those categories of goods are not really related, so how else would Mattel protect its brand? The only way to protect it is through a dilution claim, where the claim is that the use of your brand by a third party either dilutes or tarnishes the goodwill associated with your brand. One of the elements to establish a dilution claim is your brand has to be famous. Josh: Thanks, Scott. That’s actually really helpful. So, Mattel claims to have made reasonable efforts to resolve the dispute with Rap Snacks. According to the Complaint, Mattel contacted Rap Snacks and asked it to stop using the BARBIE mark in connection with its chips, but Rap Snacks refused. But that isn’t a surprise since Rap Snacks has filed an intent-to-use application for BARBIE-QUE in connection with food products, including chips. To me, this seems to indicate that Rap Snacks believes it has a right to use with mark. What do you think Scott? Do you think Rap Snacks use is legal? Scott: I’m going to have to say i don’t know enough to make that call right now. Look, I do think its interesting that they’re using the exact same spelling. I don’t have a problem with them using ‘Barbie’ for Barbie-Que, but I think they could have changed the spelling.They’re entitled to refer to them as Barbeque chips, but I really don’t think they can call it ‘Barbie’. I don’t think it matters that Nicki Minaj is referred to as Barbie, and I don’t know who calls her Barbie, but I don’t know that it matters and I don’t know that they can do this. Josh: Well, I think there’s an argument that the First Amendment could permit Rap Snacks’ use under the VIP Products authority in the Ninth Circuit, which applied the Rogers v. Grimaldi precedent from the 2nd Circuit. Under that line of cases, if the use has artistic relevance and does not mislead consumers as to the source or the content of the work, then the use is permissible. So Rap Snacks would need to prove two things: (1) that its use has artistic relevance, and (2) that its use was not misleading as to source. Scott: I don’t think that would hold much water. I don’t think the potato chip bag is an expressive work, and that’s what Rodgers applies to. You can make that argument, but I don’t think you can carry the day on it. Thanks, Josh for bringing this story to our attention. Josh: Yes, of course. Thanks, Scott.