The Briefing by Weintraub Tobin

Donald Trump is facing another lawsuit from a musician who objects to the use of their music at campaign events and rallies. Scott Hervey and Jamie Lincenberg discuss this latest challenge on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Cases Discussed: Isaac Hayes Enters. v. Trump Show Notes: Scott: Donald Trump’s presidential campaign has faced a number of challenges from musical artists that object to the use of their music in connection with his political campaign. We’ve previously covered the copyright infringement case related to the Trump campaign’s use of Isaac Hayes’ song, ‘Hold on, I’m Coming.’ I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Jamie Lincenberg. We’re going to talk about the Court’s order in Eddie Grant’s lawsuit regarding the Trump campaign’s use of Electric Avenue on today’s episode of The Briefing. Jamie, welcome back to The Briefing. Jamie: Thanks for having me back, Scott. I’m excited to dive into this interesting case. Scott: It is interesting. Let’s start with the basics. Can you give us a quick overview of what this case is about? Jamie: Certainly, this case involves a copyright infringement claim by musician Eddie Grant against the former President, Donald Trump, and his campaign. The dispute centers around the use of Grant’s song, Electric Avenue. I think we all know that one in the campaign’s 55-second video posted on Trump’s Twitter account during the 2020 presidential election. The video contains an animation of a high-speed red train bearing the words Trump pence, Keep America Great, 2020, in stark contrast to a slow-moving hand car bearing the words Biden President, your hair smells terrific. The hand car is empowered by an animated likeness of President Biden. Scott: In August 2020, Grant’s lawyer sent the Trump campaign a cease and desist letter. Neither the video nor the tweet were removed. And on September 2020, Grant filed suit. The Trump campaign contended that the use of the song constituted fair use. Now, this recent ruling comes as a result of both parties filing motions for summary judgment. Jamie: There were two key issues here. First, whether the plaintiffs had a valid copyright registration for the sound recording of Electric Avenue. And second, whether the use of the song in the campaign video constituted fair use under copyright law. Scott: So the first issue was, there’s a real interesting one. That’s whether or not Eddie Grant had a valid copyright registration in the sound recording of Electric Avenue. So as you know, a plaintiff is not allowed or able to file a lawsuit for copyright infringement unless the allegedly infringed the work has been registered. Without a valid copyright registration, a plaintiff cannot bring a viable copyright infringement action. So the question was whether the registration of the album, Eddie Grant, The Greatest Hits in 2002, which included Electric Avenue amongst the other Eddie Grant hits, also affected registration of that specific sound recording for Electric Avenue. Jamie: That’s right. And the Court ruled in favor of the plaintiffs on this issue. It found that the registration of the compilation album, Eddie Grant, The Greatest Hits, in 2002, effectively registered the sound recording of Electric Avenue contained within it. The district Court noted that courts in the Second Circuit have held that the registration of a collective or a derivative work covers registration of the constituent parts if the registrant has copyright ownership of those constituent parts as well. Scott: Now, let’s talk about the fair use question, which seems to be the core of the case. So, the Court analyzed the four statutory factors of fair use: the purpose and character of the use, the nature of the copyright-decided work, the amount and substantiality of the portion used, and the effect on the potential market. Ultimately, the Court found that none of these factors favored the defendant. Jamie: Let’s talk about the first fair use factor, which asks us Whether the new work merely supersedes the objects of the original creation, supplanting the original, which would not support fair use, or does the use instead add something new with a further purpose or different character, thereby making that use justified because the copying is reasonably necessary in order to achieve this new purpose. A use that has a further purpose or different character is then said to be transformative. The Trump campaign argued that its use of the song was transformative. The Court was, however, not so receptive to this claim. Scott: No, that’s right. The Court was not receptive to that argument. The Court found that the video has a very low degree of transformativeness, at least as it relates to the song. The Court said that the video is best described as a wholesale copying of music to accompany a political campaign ad. The Court noted that the song plays for more than two-thirds of the animation and that the song itself plays no discernible role in communicating the video’s overarching political commentary. Jamie: In assessing the first fair use factor, the Court must also consider whether the allegedly infringing use is of a commercial nature. The question of whether the work is commercial is not whether the sole motive of the use is monetary gain but whether the user stands to profit from the exploitation of the copyrighted material without paying the customary for it. Scott: And in this case, the Court found that the Trump campaign benefited commercially from using Electric Avenue without paying a license fee. The Court noted that there is a well-established market for music licensing, and the Trump campaign sought to gain an advantage by using Grant’s very popular song without paying Grant the customary licensing fee. Jamie: That’s right. And the second factor favored the plaintiffs because Electric Avenue is a creative work. And looking at the third factor, that also went against the defendants because they used a substantial portion of the song. The fourth and final fair use The Court of Justice, the Court of Justice, asks whether if the challenged use becomes widespread, it will then adversely affect the potential market for the copyrighted work. Analysis of this factor requires the courts to balance the benefit the will derive if the use is permitted, and the personal gain that the copyright owner will receive if the use is denied. Scott: The Court found that this factor favored Eddie Grant because widespread, uncompensated use could harm the potential market for licensing the song, and there would not be any public benefit that is lost from not allowing the use of the song in the Trump campaign video since the campaign, at least the Court said the campaign could have used any song, created a new song, or used no song at all to convey the same political message in the video. Denying the Trump campaign’s fair use defense in this case, the Court said, will not chill legitimate public satire. Jamie: I think that the Court got it right here. Scott, what do you think are the broader implications, though, of this ruling for political campaigns and their use of music? Scott: I think this ruling sends a clear message that a political campaign’s use of a song or other content in a political ad or otherwise as part of political speech does not, without more, automatically transform that original work. At least the Court seemed to say that there needed to be more than just the use of a song as background for a political ad or a work of political satire. The Court seemed to say that in order for the used to be transformative, the work that was used, in this case, the song, needed to somehow help convey the political message or the political satire that was being conveyed by the video or ad itself. Jamie: Right. Yeah, I agree on that reading of what the Court decided here and an analysis of their opinion I also think it’s interesting we didn’t really get into it here in this discussion or what the Court discussed as far as following the different factors. But I think this becomes an issue also with artists then being specifically associated with a certain campaign. If they don’t have any rights of approval, that would come with licensing the song. If there was a licensing agreement, they could choose not to license their song to a specific campaign. I think that’s come up in the past, and it’s also an important piece that’s not really addressed here, but it’s the association of a piece of music with a political campaign, and I think that’s important as well. Scott: Yeah, that was an issue, actually. I was talking to Tara about the Isaac Hayes case, and we mentioned it at the top of the reading here. But that was an issue that was raised by the Court in granting the Isaac Hayes entity a temporary restraining order against the Trump campaign for the use of Hold on, I’m coming in connection with political events. Apparently, the Trump campaign was using Hold on, I’m coming in political campaign events. And BMI grants a blanket license for all of the songs within its library, but it’s allowed to pull a particular song if an artist or publisher objects. And Isaac Hayes had his the entity controlling his rights had objected and then filed suit because the Trump campaign continued to use the song. And in granting Isaac Hayes’ entity the temporary restraining order, or sorry, preliminary injunction, The Court noted that as potential harm, that the continued association with the campaign is a measure of potential harm. It’s definitely something that the courts do take into account. Well, thanks for joining me today, Jamie, as always. I appreciate having the opportunity to banter with you and talk about cases like this. Jamie: Thanks for having me, Scott. Always good to be here. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.   Grant v. Trump Isaac Hayes Enters. v. Trump Show Notes: Scott: Donald Trump’s presidential campaign has faced a number of challenges from musical artists that object to the use of their music in connection with his political campaign. We’ve previously covered the copyright infringement case related to the Trump campaign’s use of Isaac Hayes’ song, ‘Hold on, I’m Coming.’ I’m Scott Hervey from Weintraub Tobin, and I’m joined today by Jamie Lincenberg. We’re going to talk about the Court’s order in Eddie Grant’s lawsuit regarding the Trump campaign’s use of Electric Avenue on today’s episode of The Briefing. Jamie, welcome back to The Briefing. Jamie: Thanks for having me back, Scott. I’m excited to dive into this interesting case. Scott: It is interesting. Let’s start with the basics. Can you give us a quick overview of what this case is about? Jamie: Certainly, this case involves a copyright infringement claim by musician Eddie Grant against the former President, Donald Trump, and his campaign. The dispute centers around the use of Grant’s song, Electric Avenue. I think we all know that one in the campaign’s 55-second video posted on Trump’s Twitter account during the 2020 presidential election. The video contains an animation of a high-speed red train bearing the words Trump pence, Keep America Great, 2020, in stark contrast to a slow-moving hand car bearing the words Biden President, your hair smells terrific. The hand car is empowered by an animated likeness of President Biden. Scott: In August 2020, Grant’s lawyer sent the Trump campaign a cease and desist letter. Neither the video nor the tweet were removed. And on September 2020, Grant filed suit. The Trump campaign contended that the use of the song constituted fair use. Now, this recent ruling comes as a result of both parties filing motions for summary judgment. Jamie: There were two key issues here. First, whether the plaintiffs had a valid copyright registration for the sound recording of Electric Avenue. And second, whether the use of the song in the campaign video constituted fair use under copyright law. Scott: So the first issue was, there’s a real interesting one. That’s whether or not Eddie Grant had a valid copyright registration in the sound recording of Electric Avenue. So as you know, a plaintiff is not allowed or able to file a lawsuit for copyright infringement unless the allegedly infringed the work has been registered. Without a valid copyright registration, a plaintiff cannot bring a viable copyright infringement action. So the question was whether the registration of the album, Eddie Grant, The Greatest Hits in 2002, which included Electric Avenue amongst the other Eddie Grant hits, also affected registration of that specific sound recording for Electric Avenue. Jamie: That’s right. And the Court ruled in favor of the plaintiffs on this issue. It found that the registration of the compilation album, Eddie Grant, The Greatest Hits, in 2002, effectively registered the sound recording of Electric Avenue contained within it. The district Court noted that courts in the Second Circuit have held that the registration of a collective or a derivative work covers registration of the constituent parts if the registrant has copyright ownership of those constituent parts as well. Scott: Now, let’s talk about the fair use question, which seems to be the core of the case. So, the Court analyzed the four statutory factors of fair use: the purpose and character of the use, the nature of the copyright-decided work, the amount and substantiality of the portion used, and the effect on the potential market. Ultimately, the Court found that none of these factors favored the defendant. Jamie: Let’s talk about the first fair use factor, which asks us Whether the new work merely supersedes the objects of the original creation, supplanting the original, which would not support fair use, or does the use instead add something new with a further purpose or different character, thereby making that use justified because the copying is reasonably necessary in order to achieve this new purpose. A use that has a further purpose or different character is then said to be transformative. The Trump campaign argued that its use of the song was transformative. The Court was, however, not so receptive to this claim. Scott: No, that’s right. The Court was not receptive to that argument. The Court found that the video has a very low degree of transformativeness, at least as it relates to the song. The Court said that the video is best described as a wholesale copying of music to accompany a political campaign ad. The Court noted that the song plays for more than two-thirds of the animation and that the song itself plays no discernible role in communicating the video’s overarching political commentary. Jamie: In assessing the first fair use factor, the Court must also consider whether the allegedly infringing use is of a commercial nature. The question of whether the work is commercial is not whether the sole motive of the use is monetary gain but whether the user stands to profit from the exploitation of the copyrighted material without paying the customary for it. Scott: And in this case, the Court found that the Trump campaign benefited commercially from using Electric Avenue without paying a license fee. The Court noted that there is a well-established market for music licensing, and the Trump campaign sought to gain an advantage by using Grant’s very popular song without paying Grant the customary licensing fee. Jamie: That’s right. And the second factor favored the plaintiffs because Electric Avenue is a creative work. And looking at the third factor, that also went against the defendants because they used a substantial portion of the song. The fourth and final fair use The Court of Justice, the Court of Justice, asks whether if the challenged use becomes widespread, it will then adversely affect the potential market for the copyrighted work. Analysis of this factor requires the courts to balance the benefit the will derive if the use is permitted, and the personal gain that the copyright owner will receive if the use is denied. Scott: The Court found that this factor favored Eddie Grant because widespread, uncompensated use could harm the potential market for licensing the song, and there would not be any public benefit that is lost from not allowing the use of the song in the Trump campaign video since the campaign, at least the Court said the campaign could have used any song, created a new song, or used no song at all to convey the same political message in the video. Denying the Trump campaign’s fair use defense in this case, the Court said, will not chill legitimate public satire. Jamie: I think that the Court got it right here. Scott, what do you think are the broader implications, though, of this ruling for political campaigns and their use of music? Scott: I think this ruling sends a clear message that a political campaign’s use of a song or other content in a political ad or otherwise as part of political speech does not, without more, automatically transform that original work. At least the Court seemed to say that there needed to be more than just the use of a song as background for a political ad or a work of political satire. The Court seemed to say that in order for the used to be transformative, the work that was used, in this case, the song, needed to somehow help convey the political message or the political satire that was being conveyed by the video or ad itself. Jamie: Right. Yeah, I agree on that reading of what the Court decided here and an analysis of their opinion I also think it’s interesting we didn’t really get into it here in this discussion or what the Court discussed as far as following the different factors. But I think this becomes an issue also with artists then being specifically associated with a certain campaign. If they don’t have any rights of approval, that would come with licensing the song. If there was a licensing agreement, they could choose not to license their song to a specific campaign. I think that’s come up in the past, and it’s also an important piece that’s not really addressed here, but it’s the association of a piece of music with a political campaign, and I think that’s important as well. Scott: Yeah, that was an issue, actually. I was talking to Tara about the Isaac Hayes case, and we mentioned it at the top of the reading here. But that was an issue that was raised by the Court in granting the Isaac Hayes entity a temporary restraining order against the Trump campaign for the use of Hold on, I’m coming in connection with political events. Apparently, the Trump campaign was using Hold on, I’m coming in political campaign events. And BMI grants a blanket license for all of the songs within its library, but it’s allowed to pull a particular song if an artist or publisher objects. And Isaac Hayes had his the entity controlling his rights had objected and then filed suit because the Trump campaign continued to use the song. And in granting Isaac Hayes’ entity the temporary restraining order, or sorry, preliminary injunction, The Court noted that as potential harm, that the continued association with the campaign is a measure of potential harm. It’s definitely something that the courts do take into account. Well, thanks for joining me today, Jamie, as always. I appreciate having the opportunity to banter with you and talk about cases like this. Jamie: Thanks for having me, Scott. Always good to be here. Scott: Well, that’s all for today’s episode of The Briefing. Thanks to Jamie for joining me today. And thank you, the listener or the viewer, for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.  

The estate of the late singer and songwriter Isaac Hayes sued former President Donald Trump for using one of his songs at campaign events and rallies. Scott Hervey and Tara Sattler discuss this case in this installment of The Briefing. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: In August of this year, the estate of legendary singer and songwriter Isaac Hayes sued former President and current presidential candidate Donald Trump and his campaign for using the song ‘Hold On, I’m Coming’ at political events and rallies. In mid-September, the US District Court for the Northern District of Georgia partially granted Hayes’ estate’s motion for a preliminary injunction. This case raises some interesting issues about the public performance of music, how it’s licensed, and the controls musicians have over its use. I’m Scott Hervey from Weintraub Tobin, and we’re joined today by Tara Sattler as we talk about the recent ruling in Isaac Hayes enterprises versus Donald Trump enterprise on today’s episode of The Briefing. Tara, it’s good to have you back. Tara: Thanks for having me. I’m Glad to be back. Scott: Let’s jump into the case. I must say, combining politics and copyright law might be the only way to make C-Span seem more exciting in comparison. Can you give me a brief breakdown of the facts. Tara: Sure. This case goes back to Trump’s use of the song, Hold on, I’m Coming, since 2020. Apparently, he played the song at political rallies and events more than a hundred times since then. Hayes Enterprises, which owns all of Isaac Hayes’ publishing and music rights, sent the Trump campaign a letter back in 2020, demanding that it stop using the song. Apparently, that never happened. The Trump campaign continued to use the song as part of the campaign, and Hayes Enterprises eventually filed suit in August of 2024 and moved for a preliminary injunction. Scott: So one interesting twist in the case is that the Trump campaign did initially have permission to use the song. The campaign had a public performance license through BMI, which generally allows for the use of a wide range of music in the public performance of that music. Now, that brings up an important point about music licensing in public performance. Public performance rights are a crucial aspect of music copyright. When a song is played in public, such as in a restaurant or a bar, and in this case at a political rally, that use requires a license. Those licenses are obtained in the US from performance rights organizations or PROs, and those are organizations like BMI, ASCAP, and CSAC, and they manage those rights, the performance rights for songwriters and for publishers. Pros offer blanket license that cover a large catalog of songs. Now, blanket license allows the licensee to use any song in the PROs catalog. However, specific songs can be excluded even after the license has been granted. Tara: Right. Paragraph 2A of the BMI Music License for Political Entities states that one or more works or catalogs of works by one or more BMI songwriters may be excluded from this license if notice is received by BMI that such BMI songwriters object to the use of their copyrighted works for the intended uses by the licensee. Scott: On June 6, 2024, Hayes Enterprise exercised this right and excluded the song from the license that was granted by BMI to the Trump campaign. However, the campaign continued to use the song after that date, which the court viewed as likely copyright infringement. The court granted a partial preliminary injunction barring the Trump campaign from using that song at further events without a valid license. Tara: In granting the injunction, the court looked at the following factors: likelihood of success on the merits of the copyright claim, irreparable harm to the copyright owners, balance of hardships between the parties, and also public interest. Interestingly, the court rejected the idea that irreparable harm is automatically presumed in copyright cases. The court cited the 2006 Supreme Court case of eBay Inc. Versus Merck Exchange LLC for the principle that irreparable harm is not to be presumed once a plaintiff establishes a prima facia case of copyright infringement. A plaintiff must prove that the suffered injury will be irreparable without an injunction. An injury is irreparable only if it cannot be undone through monetary remedies, is how the court phrased it. Scott: Yeah, and here the court found that continued use of the song could cause irreparable harm due to the unwanted association with the campaign. Tara: Correct. Scott: Now, the court found that stopping future uses of the song wouldn’t significantly impact the campaign’s political speech rights. It noted that upholding copyright protections serve the public interest while also acknowledging the importance of political expression. The court found no evidence to suggest that the inability to play the song in the future would inhibit the Trump campaign’s political speech, especially considering that the defendants, the Trump campaign, submitted a declaration stating that they do not intend to use the song at future public events while the litigation is pending. Tara: But here’s an interesting plot twist. As part of the motion, Hayes enterprises asked the court to take down any videos that were posted without a license that that contained the song. The Trump campaign argued that the use of the song was fair use. While not ruling on the fair use defense, the court denied the request to take down the videos of past events that used the song. The court found that for now, the risk of harm from the videos of past events remaining online does not pose the same imminent risk as future uses of the song in future campaign events. While plaintiffs showed irreparable harm for the future use of the song, they did not make this showing for the videos of past uses. Scott: Now, this case highlights several interesting legal points. The first is a reminder that political campaigns need to be careful about music licensing, even if they have a blanket license. Tara: We didn’t discuss that portion of the order that addressed Hayes ownership of the song. The Trump organization claimed that Hayes didn’t own right rights in the song and therefore had no right to object to its use. However, the court found that Hayes enterprises had terminated Universal Music Publishing and Warner Chapel’s ownership of the song back in 2022 and regained an ownership interest in the song. The complex ownership history of this song showcases the importance of termination rights in copyright law, which allow creators or their heirs to reclaim rights after a certain period of Had Hayes enterprises not recaptured ownership of a portion of the song, it may not have had the ability to object to the use by the Trump campaign. Scott: Let me add on to that, Tara. So way back when, when I used to be a music lawyer, and we were negotiating either record label deals or publishing deals because the rights that would be obtained by either the record label or the publisher were really broad and allowed for the exploitation of either the sound recording or the publishing rights very, very broadly. There was a limited ability to negotiate for the right to exclude certain uses, certain uses in political campaigns or the use in personal hygiene commercials, et cetera. In the entertainment industry, we’re used to that standard list of terrible excluded uses that you normally see. But that’s an important point that I want to talk about here, at least note, is that remembering to negotiate for that right, because if Hayes hadn’t recaptured his publishing rights, the only thing they would have to rely on is that carve out, that right to exclude that type of use in their publishing deal. And then if they had that, they would then enforce that right with the publisher who then would enforce the opt out right with BMI. Lastly, this case is a good reminder that in copyright cases, plaintiffs need to prove irreparable harm for a preliminary injunction. Scott: This case is far from over. There still remains an open issue about the past use of the song in the videos and whether that use constitutes fair use. There was a very recent ruling against the Donald Trump campaign for a similar use of music in Trump campaign assets where the court did not find fair use, and we’re going to cover that in another episode. But I think what happened in that case, you’re probably going to see that happen here. But we’re going to track this case, and we’re going to report back when there’s a further event by the court. Tara, thanks for joining me today. I appreciate having you on as always. Tara: Absolutely. This is an interesting topic to talk about with you. Thanks, Scott. Scott: Well, that’s all for today’s episode of The Briefing. I’d like to thank Tara Sattler for joining us today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we’ve covered today, please leave us a comment.

Scott Hervey, an FTC regulations expert, joins Jessica Marlow, a pro in influencer marketing, to discuss the FTC's new rule against fake consumer reviews. They explore the ramifications for businesses incentivizing reviews and stress the need for transparency. The conversation highlights ethical considerations in marketing practices and the looming consequences for violating the new regulations. Tune in to learn how these changes will reshape the influencer marketing landscape and promote genuine consumer engagement.

Punchbowl News won the trademark infringement lawsuit filed by greeting card and event planning company, Punch Bowl Inc., despite a previous setback at the Ninth Circuit. Scott Hervey and Jamie Lincenberg discuss this recent development in this installment of The Briefing.     Cases Discussed: Rogers V. Grimaldi Jack Daniels Properties Inc. Versus VIP products Punchbowl, Inc. V. Aj Press, Llc Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Despite a 2022 setback at the Ninth Circuit, Punch Bowl News ultimately came out a winner in a trademark infringement lawsuit bought by a greeting card and event planning company, Punch Bowl Inc. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. We are going to talk about this case again and the future of trademark infringement cases in light of the recent changes to the applicability of the Rogers Test on this next installment of The Briefing. Jamie, welcome back to The Briefing. Jamie: Thank you, Scott. It’s nice to join you here again. Scott: Do you remember talking about this case in 2022 when we covered the appeal to the Ninth Circuit? Jamie: I sure do. Yeah. Scott: I think it’s good to give some closure to this case since we already covered it. Why don’t Let me start with the case? Punchbowl Inc. Is an online technology company whose product is online invitations and online greeting cards. It has been using the mark Punchbowl since 2006, and it has a federal trademark registration covering the mark. AJ Press was founded by two journalists who used to write for Politico. AJ Press operates Punch Bull News, a subscription-based online news publication that covers in American government and politics. Given the publication’s focus on federal politics, AJ Press chose Punch Bowl because that’s the nickname the Secret Service uses to refer to the US Capitol. It makes sense if you think about the capital turned upside down. It looks like a Punch Bowl. The title Punch Bowl News was selected to elicit the theme and geographic location of the publication. Punch Bowl, the technology company, sued for trademark infringement, and the district court granted AJ Press’s motion to dismiss on the grounds that their use of punch bowl did not give rise to liability under the Rogers test because it constituted protected expression, and it was not expressly misleading as to its source. Jamie: So, I think we should revisit the Rogers test. Scott: Yeah, let’s do that. Jamie: The Rogers test comes from the 1989 Second Circuit case of Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. In that case, the district Court and the Second Circuit on Appeal both said, the use of a third-party mark in an expressive work does not violate the Lanham Act if the title has artistic relevance to the underlying work, and if it has some artistic relevance, that it’s not explicitly misleading as to the source of the content of the work. This then became known as the Rogers Test. Scott: Applying the Rogers Test, the lower court and the Punch Bowl case dismissed trademark claims, and the Ninth Circuit upheld the lower court’s dismissal. However, in the weeks following the Ninth Circuit’s opinion, the Supreme Court granted cert for Jack Daniels Properties Inc. Versus VIP products, otherwise known as the Squeaky Dog Toy case. The Ninth Circuit stayed its original decision in the Punch Bowl case to wait the Supreme Court’s decision. Now, the Jack Daniels Properties versus VIP Products dispute involved the claim by Jack Daniels that this dog toy, Bad Spaniels, infringed a number of Jack Daniels trademarks. At the district Court and on appeal at the Ninth Circuit, the issue in the Jack Daniels case was framed as to whether the dog toy was an expressive work since trademark claims involving expressive work are analyzed under the Rogers test. On appeal, however, the Supreme Court said that the issue really was not whether the dog toy is an expressive work or not an expressive work, but rather the nature of the use of the Jack Daniels marks. The Supreme Court found that VIP’s use of the marks, while humorous, were for the purpose of serving as a source identifier, so trademark use. The Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it is also used to perform some expressive function. Jamie: Subsequent to the Supreme Court’s holding in Jack Daniels, the Ninth Circuit then vacated its original ruling in the Punch Bowl case and then held that the Rogers test doesn’t apply to this case because AJ Press uses Punch Bowl to identify its news product. The Ninth Circuit said, to the extent that any previous cases held that Rogers applies when an expressive mark is used as a mark and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to an expressive work, that those cases are incorrect and are no longer good law. Scott: So, under Jack Daniels because A. J. Press used Punch Bowl as a trademark, regardless of the fact that there is an expressive purpose for the use of Punch Bowl and that its use is not expressly misleading, the Rogers test is not going to be applied here. The Court sent the case back to the district Court, the Ninth Circuit sent the case back to the District Court with instructions to analyze the case under the Ninth Circuit’s Sleekcraft Test. That’s the test that’s used in the Ninth Circuit for determining trademark infringement. The court was going to examine punch bowls, or AJ Press’s use of punch bowl under the Sleekcraft factors, which are the strength of the mark, the proximity or relatedness of the goods, the similarity of the marks, evidence of factual confusion, the marketing channels used by the parties, the degree of consumer care in selecting the products, and the defendant’s intent, and any likelihood of expansion by the plaintiff into the space operated in by the defendant. Those are the tests for determining likelihood of confusion. They’re used in the Ninth Circuit, and similar versions of the Sleekcraft test are used in other districts throughout the United States. Jamie: The District Court, in finding no likelihood of confusion, seem to focus on the second and fifth factors that you just mentioned. Scott: Right, I agree. So, with regard to the second factor, the court found that the goods sold by the parties are not approximate, they’re not related, they’re not complementary, and they don’t function similarly. A platform offering tools for online party planning is not at all related to a news publication that focuses on politics. Also relevant to this point was the court’s finding that the products are not sold to the same class of purchasers. Jamie: The fifth factor is naturally related to the second factor. The more the products are related the more likely they are to have overlapping marketing channels. Now, interestingly, the court rejected the fact that both companies do use the internet as a marketing channel as evidence of overlapping marketing channels. The Court noted that almost all commercial retailers use the internet, and the shared use of a ubiquitous marketing channel is not evidence of the similarity contemplated by Slate Craft. In today’s world, the shared use of online marketing is not enough to constitute overlapping marketing channels, and a more specific level of overlap is going to be required. Scott: The dissimilarity in the goods and the lack of proximity between the goods, along with a failure to point out an overlapping discrete marketing channel, really carried the day. Now, the court called this result an obvious It stated that no reasonable consumer would purchase a subscription to a party planning software platform when they really intended to subscribe to a political news website. Do you agree with that? I agree with that. Jamie: I think that I would agree. I would agree with the court and say that this is an obvious decision. But Scott, what do you think the real takeaway is here? Scott: Yeah. I mean, a couple of takeaways. One is that even though Rogers was not applicable here, just like it’s not applicable in the squeaky dog toy case, the Jack Daniels case versus VIP products case, that’s not the end of the inquiry. We still need to go through the analysis of the sleep craft factors and really determine whether or not there is a likelihood of confusion. So, the fact now that Rogers might not be available to certain defendants really isn’t the end of the inquiry. Also, plaintiffs who know that the Rogers test is not available to a defendant, that’s not a victory either. It’s an interesting case. I’m glad we saw the result of this case, even though there was a loss of the Ninth Circuit. I think the result was one that we all thought should happen. Jamie: Yeah, I’m glad we were able to circle back and close the loop. Get some closure for the audience. Scott: Yeah. Well, thanks for joining me, Jamie. Jamie: Thanks, Scott. Scott: Thank you for joining us for today’s episode of The Briefing. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

Scott Hervey, a legal expert on copyright issues, and Tara Sattler, a seasoned legal professional, dive into the implications of the court ruling in Hayden v. 2K Games, Inc. They analyze how this decision might signal the end of tattoo copyright cases, particularly how implied licenses come into play for public figures like LeBron James. The conversation covers the complexities of copyright in media and the need for clear consent regarding tattoo use, shedding light on the evolving legal landscape surrounding artistic rights in gaming and entertainment.

A New York Judge dismissed former Rep. George Santos’ lawsuit against Jimmy Kimmel Live over the late-night host’s use of personalized Cameo videos in one of his segments. Scott Hervey and Tara Sattler discuss this decision on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: I can see the situation unfolding in the writer’s room for Jimmy Kimmel Live. How can they show that former US Representative George Santos would say just about anything for money and have that be extremely funny? The resulting prank video skit got a bunch of laughs and a copyright lawsuit. However, a recent decision by the US District Court for the Southern District of New York ended Santos’ lawsuit. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague Tara Sattler, to discuss this case and its implications on the television and media industry on today’s installment of the briefing. Tara, welcome back. It’s great to have you. Tara: Thanks, Scott. I’m glad to be here. Scott: Tara, by chance, have you seen these George Santos cameo videos? Tara: I have, and they really are quite hilarious. Scott: Yeah, they are. I could see why the writers for Jimmy Kimmel Live pitch this. But why don’t you give our listeners a quick summary of the facts? Tara: Certainly, this case stems from George Santos creating personalized videos on the Cameo platform after he was expelled from Congress. Jimmy Kimmel and his show created fake cameo accounts and requested 14 absurd videos from Santos, which they received and then aired on Jimmy Kimmel Live as part of a segment called Will Santos Say It? As part of the segment, Kimmel made jokes about Santos, including about his federal wire fraud case to which Santos pled guilty. Now, the Cameo terms of service say that the talent, who in this case would be Santos, owns the copyright in the video. Cameo offers two types of to the user who requests the video. However, both licenses specifically exclude television exploitation. Scott: Right. If you’re Santos, you’re thinking, I own the copyright, and the license granted to the account owner specifically excludes television. So, of course, Santos, Seuss, Kimmel, ABC, and Disney for copyright infringement and a couple of related claims. Disney and the rest of the defendants moved to dismiss, arguing that their use of the videos constituted fair use. The court granted the defendant’s motion to dismiss. The key issue was whether Kimmel’s use of the videos qualified as fair use under copyright law. Now, as we know, Tara, because you and I have done a lot of podcasts on the Andy Warhol Foundation Supreme Court case, this case is post-Warhol, which essentially tightened up fair use, where the focus is on the purpose of the use and whether purpose justifies the copying. Tara: True. We recall that the Supreme Court in Warhol specifically called out criticism as a purpose that justifies copying. Scott: That’s exactly what the defendant said and what the court relied on in finding fair use. The court said that Kimmel’s use was clearly for the purpose of criticism and commentary on a newsworthy public figure. The court emphasized that Kimmel was using the videos to criticize Santos’s willingness to say absurd things for money shortly after being expelled from Congress for, albeit fraudulent activity. The court saw this as political commentary that did supersede the original purpose of the videos. Tara: There was some interesting discussion about the fake accounts that late-night showwriters used to solicit these videos. The court acknowledged that Kimmel’s conduct may have been deceptive, but that doesn’t matter for fair use purposes. Sources. They cited Warhol for the fact that fair use is an objective inquiry into how the work is used, not the subjective intent or good faith of the user. So, while Kimmel’s methods may have been questionable, that didn’t negate the transformative nature of how the videos were ultimately used on his show. Scott: Now, as for the other fair use factors, the court found the second factor, the nature of the copyrighted work, that weighed slightly against fair use as the videos had some creative elements. However, the court said that this factor rarely plays a significant role. A bit more interesting is the court’s treatment of the third factor, the amount and substantiality of the work used. Despite the fact that Kimmel used the full video, the court found this factor was neutral. The court said that using the full video was reasonable given the transformative purpose. Tara: That is really interesting. Generally, where the full work is used, that actually tends to weigh against the third fair use factor. Scott: Right, that’s true. We’ve seen that before. But here the court said, the use of the videos to criticize and comment on a public figure would have been undermined by showing less than the entirety of the videos because the audience would not know whether Santos had indeed said everything in the request. So I can certainly see this portion of the opinion being cited in future fair use arguments. Tara: I think you’re right, Scott. For the fourth factor, effect on the market, Santos had a unique claim. He claimed that the defendant’s use devalued the market for cameo videos, including Santos’s, by undermining the integrity of the cameo platform. Scott: That’s right. He did say that, but the court didn’t buy it. The court found no evidence of harm to the market for Santos’s videos beyond the critical use at issue. The court also emphasized the public benefit of allowing criticism and commentary. In reviewing all the factors, the court found fair use was so clearly established that they could dismiss the copyright claim at this very early stage. Tara: There are a few key takeaways from this case. First is that post-war hall, criticism and commentary remain a good way for establishing a successful fair use argument. If the defendant can show that the use has critical bearing on the original work, the use will likely be found to be transformative. Scott: The second is Santos’s status as a public figure and how that tied into the deceptive methods Kimmel used to obtain the videos. The opinion seems to imply that using deceptive methods to obtain content from public figures for commentary purposes may be viewed more favorably than similar tactics used on private individuals. Tara: I definitely think that the broader context of political commentary and public benefit played a big role in the court’s findings. This is something to consider. Defendants may have a stronger fair use argument when their content contributes to important public discussions. Scott: That’s true. Very true. Tara, thanks for joining us today. Tara: Thanks, Scott, for inviting me to join you today. And that’s all for today’s episode of The Briefing. Thank you also to the listener or viewer for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topic we covered today, please leave us a comment.

A group of senators introduced an update to the ‘No Fakes Act,’ which protects the voice and visual likeness of individuals from unauthorized AI-generated recreations. Scott Hervey and James Kachmar discuss the changes to this act on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Senators Chris Coons, Marsha Blackburn, Amy Klobuchar, and Thom Tillis introduced an update to the ‘Nurture Originals Foster Art and Keep Entertainment Safe Act’ or the ‘No Fakes Act,’ which the four senators previously released last October. I’m Scott Hervey, and I’m joined today by James Kachmar, and we’re going to talk about the ‘No Fakes Act’ or the update to the ‘No Fakes Act’ on this installment of The Briefing. James, welcome back to The Briefing. It’s been a while. James: Good to see you, Scott. Thanks for having me. Scott: We have a fun one today, the ‘No Fakes Act.’ The purpose and intent of the ‘No Fakes Act’ is to prevent the creation and use of a digital replica of an individual without that person’s consent. Let’s dive into how this proposed act accomplishes this and what the liabilities are for violations of the act. First and foremost, the act creates a new federal property right to authorize the use of a person’s voice or visual likeness in what’s called a digital replica. Now, a digital replica is defined in the act as a newly created, computer-generated highly realistic electronic representation that is readily identifiable as the voice or visual likeness of an individual. Now, this right, the right to control a digital replica or grant rights in a the original replica, survives postmortem and is transferable, licensable, and exclusive to the individual, the executors, the heirs or licensees or devices of that individual for an initial ten years, renewable for a rolling five-year period with a cap of 70 years. That’s postmortem. As I said, this right is licensable. Interestingly, the act says that a license can only have a term of ten years. James: Okay, Scott, why don’t we look at what the essence of the act is? It basically creates liability for one, the production of digital replica without consent of the applicable right holder, and two, publishing, reproducing, displaying, distributing, or transmitting, or otherwise making available to the public a digital replica without the consent of the applicable right holder, where such acts affect interstate commerce. It is not a defense to liability if the defendant displayed or publicly communicated a disclaimer stating that the digital was unauthorized or generated through artificial intelligence. Liability requires actual knowledge through either the receipt of notice from the right holder or a person authorized to act on behalf of the right holder or an eligible plaintiff, or from the willful avoidance of actual knowledge that the material is an unauthorized digital replica. Scott: Now, the act allows for a private right of action by the rights holder, and it also allows for a private right of action by any other person that controls, including through a license, the right to exercise or the right to use the rights holder’s voice or likeness. The act is not clear whether this license needs to be exclusive in order to sue for a violation of the act, like under copyright or if it can be non-exclusive and still have the right to sue. James: The act also allows for a private right of action for record labels. In the case of digital replica involving either a sound recording artist who has entered into a contract for their exclusive sound recording artist services, or any artist who has entered into an exclusive license to distribute or transmit one or more of their album or works that capture their performance. This is similar to what you and I had talked about some time ago about Tennessee’s Elvis Act. Scott: Right, it is. James: There’s also a three-year statute of limitations period for bringing lawsuits for violations of the act. The act provides for monetary relief injunctive relief, punitive damages for a willful violation, as well as attorney’s fees. Scott: The act also establishes separate liability for online service providers that participate in the making of a digital replica, so take no generative AI service providers, or make a digital replica available on an online service unless the online service has taken reasonable steps to remove or disable access to the unauthorized digital replica as soon as it is technically and practically feasible for the online service actor acquiring actual knowledge that the material is an unauthorized digital replica. So similar to the DMCA, the Digital Millennium Copyright Act, the No Fakes Act establishes a notice and takedown process. Also similar to the DMCA, liability for false takedown notices under the No Fakes Act. James: That’s right, Scott. And there are some exclusions that are built into the act, which are based on recognized First Amendment protections. For instance, it’s not a violation of the act when a digital replica is used in a bonafide news, public affairs, or sports broadcast or account, if the digital replica is the subject of or materially relevant to the subject of the broadcast or account. Scott: And similarly, it will not be a violation of the act where a digital replica is of an individual that is portrayed in a documentary or in a historical or biographical manner. Now, this can include some degree of fictionalization unless the production or use is intended to and does, in fact, create the false impression that the work is an authentic work and that the person portrayed by the digital replica actually participated in the work. Whether on camera or through a sound recording. James: Right. Similar to what we see in the copyright field, it is also not a violation of the act where the digital replica is used consistent with the public interest, either in bona fide commentary, criticism, scholarship, or satire and parody, or if it is used in a fleeting or negligible manner. Lastly, it will not be a violation of the act if the digital replica is used in an advertisement or commercial announcement for any of the above examples. Scott: That’s interesting, right? That’s a mix of write-up publicity statutes and copyright. The bill also includes a safe harbor from liability for AI technology companies that create a technology product that creates digital replicas unless such product is, one, primarily designed to produce one or more unauthorized digital replicas, and two, has only limited commercially sufficient purposes for use other than to produce an unauthorized digital replica, or three, is marketed, advertised, or otherwise promoted by that person or another acting in concert with that person, with that person’s knowledge for use in producing an unauthorized digital replica. It’s going to be interesting to see if the Senate will pass this bill, given where we are now in the election cycle. Now, the Copyright Office has recently issued a report basically cautioning that there is an urgent need for new federal legislation to address the proliferation of deepfakes created through the use of artificial intelligence. The report, it’s a great report, and anybody who’s interested in the subject should read it. The report analyzed the existing legal framework through which digital replicas can be addressed and pointed out their shortcomings. Perhaps the Senate will take this bill under consideration sooner rather than later. James: Right, Scott. We’ll just have to wait and see what the Senate does with the No Fakes Act update, and maybe you and I can get back together for another podcast here soon on this topic. Scott: That’s all for today’s episode of The Briefing. Thank you, James, for joining us. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.  

The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie Lincenberg discuss the TTAB’s long-standing opinion on this episode of The Briefing. Read Scott’s article on the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In October 2014, I wrote an article for our law firm’s blog, remember those? That discussed the Trademark Trial and Appeal Board’s tendency to find wine, beer, and non-alcoholic beverages related for the purpose of determining likelihood of confusion. Now, the T-TAB has repeatedly said that there is no per se rule that all beverages are related for Section 2D refusal purposes. But really? Now, most consumers see wine, beer, and non-alcoholic beverages as unrelated products and would not believe, even if they shared a similar trademark element, like a similar word or design, that they’re related or that they emanate from the same source. However, the Trademark Trial and Appeal Board seems to always find otherwise. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and frequent Briefing contributor, Jamie Lincenberg. I thought it would be interesting to revisit this topic ten years later. So today, we’re going to take an updated look at beer, wine, water, and likelihood of confusion on today’s episode of The Briefing. So, Jamie, welcome back. Jamie: Thank you, Scott. I’m happy to be here and to revisit this topic with you. Scott: Great. So, like all, one of the things I think the best place to start is at the beginning, and that’s with the 1992 decision in In re Saler Brew, Fron Salier. That case seems to be the first time that the Trademark Trial and Appeal Board showed that it was receptive to the argument that wine and beer are related for 2D likelihood of confusion purposes. In that case, the Trademark Trial and Appeal Board found that the marks Christopher Columbus for beer, confusingly similar to the mark Cristobal Cologne and Design for Sweet Wine. The T-TAB found persuasive third-party registrations introduced by the Trademark Examiner, showing that a number of companies have registered their marks for both beer and wine. Jamie: Following that case, the T-TAB adjudicated a number of non-precedential cases in which the T-TAB found beer and wine related. For example, in In Re Stone Street, LLC, the T-TAB found the mark Buckeye for wine, confusingly similar to the Mark Buckeye sparkling dry for beer. Similar to In Re Saylor Brow, the T-TAB found persuasive third-party registrations covering both beer and wine. The applicant in Stone Street argued that another federal circuit case regarding the Mumm champagne brand required a finding that beer and wine are not related. However, the T-TAB was not persuaded. The record in Mumm demonstrated the Mumm brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers. The record in Stone Street lacks any such distinction. Scott: Then, in 2011, the T-TAB issued a presidential opinion on the continuing conflict of beer and wine. Now, that case involved a refusal to register the Mark HP for wine based on the likelihood of confusion with the Mark HP and design for beer. The T-TAB found persuasive third-party registration submitted by the trademark examiner that covered both beer and wine, as well as third-party web pages for companies that make and sell both beer and wine. The T-TAB stated as follows: the third-party registration evidence and the website evidence together amply demonstrate the relatedness of beer and wine and show that consumers if they encounter both goods sold under confusingly similar marks, are likely to believe that they emanate from the same source. Jamie: Then 2013 was when the T-TAB began expanding the scope of goods related to wine and also likely beer to include water. In the case of Joel Gottwines versus Von Gott, the T-TAB addressed Gottwines’ opposition to Von Gott’s application for got light, for flat and carbonated drinking water, coconut water, and flavored mineral water, on the grounds that the applicant’s mark was confusingly similar to Joel Gott’s mark, Gott, G-O-T-T, for wine. Scott: Addressing whether there is a likelihood of confusion between Van Gott’s Mark and Joel Gott’s Mark, having found the marks similar, obviously, the court then focused on the relatedness of the goods, the trade channels, and the class of purchasers. First, the court noted that the goods need only be sufficiently related such that consumers would likely assume upon encountering the goods under similar marks that they originate from or are sponsored or authorized by or are otherwise connected to this same source. Now, the court found compelling the use of third-party registrations covering both water and wine that was submitted by Joel Gott. The court noted that the use-based third-party registrations have probative value in that they suggest that the goods listed therein are of a kind that may emanate from a single source. Joel Gott also introduced marketplace evidence demonstrating that wine and water are related goods. Joel Gott introduced testimony from a witness who purchased several different brands of water from different winery tasting rooms, each bearing the name of the winery at which the wines and water were being sold. The court found this evidence strongly favors a finding of likelihood of confusion with respect to the DuPont factors regarding the relatedness of the goods. Jamie: As to the channels of trade, Van Gaat contended that although both wine and water are sold in supermarkets, they’re sold in different sections of the store. Van Gaat argued that because goods both be sold in a large store such as a supermarket, would not alone be sufficient to show that consumers would be likely to encounter both in one shopping trip, or to assume a common source, merely because both types of goods can be found in such a store. However, the court found compelling evidence submitted by Joel Gott, which showed that wine and water are often sold in the same area of a store, as well as copies of online beverage menus from restaurant websites, showing that restaurants offer both water and wine for sale in that same menu section. Based on the evidence submitted by Joel Gott, the court found that wine and water are sold through the same trade channels, the same classes of customers. Scott: Now, here we are in 2022. Well, I guess here we are a couple of years ago in 2022, the case of In re Rockaway drinks. Even though it’s a non-precedential case, it seems to firmly establish that beer, wine, non-alcoholic beverages, including sparkling waters of any kind, are related for likelihood of confusion purposes. In that case, both marks included the term Rockaway, although the cited mark was Rockaway Brewing Company with Brewing Company disclaimed. The T-TAB said that because both marks begin with the identical term Rockaway, it is agreed that the marks are similar in sound, appearance, connotation, and commercial impression. Jamie: Now, turning to the relatedness of the good. The T-TAB evaluated whether non-alcoholic water-based beverages and beer are similar enough to cause confusion among consumers. The board referenced the DuPont factors, specifically the second and third factors, which deal with the similarity of the goods and the channels through which they’re sold. Scott: Whether the goods are related for likelihood of confusion purposes hinges on whether consumers could be led to believe that the products come from the same source, even if they are not identical or are not directly competitive. The T-TAB examined evidence of breweries that sell both beer and non-alcoholic beverages like soda and sparkling water under the same brand names. For example, brands like Appalachian Brewing Company and Saint Arnold not only offer craft beers but also root beers and sodas. That showed that the market often blurs the lines between alcoholic and non-alcoholic beverage offerings. Jamie: The board also considered third-party registrations, where trademarks were registered for both beer and various non-alcoholic beverages. This supported the idea that these products might be perceived as related by the public, increasing that likelihood of confusion. Ultimately, the T-TAB’s decision emphasizes that it’s not just the nature of the goods, but also how they’re marketed and perceived by consumers that can create a likelihood of confusion. Even distinct products like beer and sparkling water might be seen as related when they’re sold under similar branding in the same venues. Scott: Ten years later, it seems that the relatedness creep within the beverage category continues. I think it’s fair to say that all types of beverages, whether they be non-alcoholic sparkling water, energy drinks, canned soft drinks, beer or wine, would probably be considered related, at least by the Trademark Trial and Appeal Board when it comes to refusing registration for likelihood of confusion. Also, it’s a reminder that when it comes to trademark law, it’s not just about what you’re selling, but about how your goods are positioned in the marketplace. The boundaries between product categories are often more fluid than they appear, and this can have real implications for trademark disputes and your trademark registration application. Jamie: All beverages are certainly not related in my mind, but for trademark purposes, I do think that these positions make sense. Scott: Yeah, it’s an important thing to remember that sometimes, the way consumers see the relatedness of products is not necessarily the way the Trademark Trial and Appeal Board sees the relatedness of those same products. Jamie: Right. Thanks, Scott. Scott: That’s all for today’s episode of The Briefing. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.  

Scott Hervey, a trademark attorney, and Jamie Lincenberg, an expert in trademark law, discuss a pivotal ruling by the US Trademark Trial and Appeal Board regarding the trademark 'Gabby's Table.' They explore how this decision affects affiliate marketing, stressing the importance of submitting the right specimens to validate trademark use. The conversation highlights the distinctions between affiliate marketing and direct retail services, emphasizing the need for clear evidence in trademark applications to avoid rejections. Tune in for vital insights on navigating the trademark landscape!

In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this featured episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: The trademark dispute in Blue Mountain Holdings versus Blitz Nutraceuticals ended with the 11th Circuit upholding the finding by the US. District Court for the Northern District of Georgia that Lighthouse Enterprises had issued a naked license to Blue Mountain, which covered the trademark that was the basis for the dispute. We’re going to talk all about the naked license on this installment of The Briefing by Weintraub Tobin. Thanks for joining us today. My name is Scott Hervey. I’m joined by my colleague, Eric Caligari. Eric, thanks for joining us today. Eric: Thanks for having me, Scott. Scott: Eric, can you give us some background on the case of Blue Mountain Holdings versus Bliss Nutraceuticals? Eric: Yes, of course. Lighthouse Enterprises and Blue Mountain Holdings initially sued Bliss in April of 2020 for federal trademark infringement, federal cybersquatting, and federal trademark dilution, along with some other claims. The lawsuit was based on their ownership of the trademark, Vivazen Botanicals claimed that had been selling Vivazen products since 2012 and registered the name as a trademark with the United States Patent and Trademark Office in 2017. Blue Mountain claimed that it acquired the Vivazen trademark and a 2019 purchase agreement with Lighthouse. Bliss claimed that this purchase agreement was really a license. The district court agreed with Bliss and found that the purchase agreement was really a license and that this license became a naked license when Lighthouse failed to police Blue Mountain’s use of the trademark. This resulted in the abandonment of Lighthouse’s rights in the trademark, and the 11th Circuit upheld the district court’s findings. Scott: While this case itself is very interesting, and it’s probably far from being over, what I want to focus on today is the ramifications of the court’s finding that the transaction between Lighthouse and Blue Mountain was a naked license. A naked license refers to a situation where a trademark owner grants permission to another party to use a trademark, and that trademark owner does not maintain proper control over the quality and nature of the goods or services associated with that trademark. In other words, it’s a license that lacks the necessary safeguards to ensure that the trademark’s reputation and distinctiveness are maintained. The nakedness of a license isn’t judged by whether the licensor allows product quality to suffer. It’s whether the license or is keeping an eye on product quality, and whether, in other words, it has abandoned quality control or not. If it has, the license is naked and the trademark is abandoned. Eric: Yeah, and if a trademark is abandoned, whatever rights the mark owner may have had in the mark are also abandoned. It’s quite a serious situation and result to avoid. Scott: I agree. And given this, let’s talk about how to avoid the granting of a naked license. Eric: Yeah, sure. Well, first of all, when entering into a license agreement, that agreement should be in writing, and the right agreement should fully outline the terms and conditions that the licensee must adhere to. These terms should include provisions such as quality control and the consequences of failing to meet those quality control standards. Scott: And it’s not enough that the agreement includes proper quality control language; but it’s imperative that the trademark owner actually exercise proper control over the products or services that are associated with the trademark. This can include setting quality standards, providing guidelines, and periodically inspecting the products or services to ensure that they meet those standards. This was emphasized by the 11th Circuit’s ruling, in which it noted that the record in the case showed that Lighthouse engaged in no meaningful supervision or inspection of the products bearing the Vivazen mark. Eric: And in exercising its quality control rights. It’s also important that there be consequences if the mark owner abjures any deviations from the agreed-upon quality standards and tries to enforce those consequences to make sure that they’re being adhered to. Scott: Agreed. The licensing agreement should include a clause that allows the license or to terminate the license if the licensee fails to meet the agreed-upon quality standards or breaches other terms of the agreement. Eric: Agreed. And thanks for bringing this case to our attention for highlighting the pitfalls of the naked license and ways to try to avoid that outcome. Scott: Absolutely, Eric. Eric: Well, that about wraps it up here. Thanks for joining us on the briefing. By Weintraub Tobin. Hope you enjoyed today’s episode. Please remember to subscribe to our podcast and to our YouTube channel.