The Briefing by Weintraub Tobin

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.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an author’s copyright lawsuit against Fox and the producers of ‘Empire,’ alleging one of the show’s characters was inspired by her biography. Watch this episode here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright infringement dispute between a sports psychologist and Miami Dolphins defensive back coach Gerald Alexander. Watch this episode here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss an intellectual property dispute between Netflix and two digital content creators who wrote a musical inspired by the hit Netflix series, Bridgerton. 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 a Trademark Infringement Lawsuit filed by the clothing brand RHODE NYC against Hailey Beiber’s new skincare line RHODE. Watch this episode, here.

In this episode of The Briefing by the IP Law Blog, Weintraub attorneys Scott Hervey and Josh Escovedo discuss the impact of Alexis Hunley, et al v. Instagram, LLC on copyright law, specifically on the Server Test. Considered one of the top copyright cases to watch, Hunley deals with the practice of “embedding” and its copyright implications. Watch the video of this episode here. Read Scott’s blog post about this case on The IP Law Blog.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark infringement dispute between the Seattle Space Needle and a local coffee shop over the cafe’s use of the Space needle’s image in its logo. Watch this episode on Weintraub’s YouTube channel, here.

In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a copyright dispute between Carroll Shelby Licensing and the widow of the late filmmaker H. B. Halicki regarding copyright protection granted to Eleanor, a car featured in the 1974 film “Gone in 60 Seconds.” Watch this episode on the Weintraub YouTube channel, here.