The Briefing by Weintraub Tobin

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 Jamie: Following that case, the T-TAB adjudicated a number of non-precedential cases in which the T-TAB found beer and wine related.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.

Weintraub attorneys Scott Hervey and Jessica Marlo explore the US Olympic Committee’s lawsuit against Prime Hydration, co-founded by Logan Paul, for using Olympic trademarks in their ad campaign with Kevin Durant. Discover the power of Olympic trademarks and their protection! Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott The United States Olympic and Paralympic Committee has filed a lawsuit in the United States District Court for Colorado against Prime Hydration, a sports drink company co-founded by social media influencer Logan Paul. The complaint alleges that Prime Hydration’s ad campaign featuring NBA star and Team USA member Kevin Durant infringes numerous Olympic trademarks. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and huge Olympic fan, Jessica Marlo. We are to talk about this case and the unique aspects of Olympic trademarks in this installment of “The Briefing.”   Jessica, welcome back to “The Briefing.”   Jessica Thank you for having me.   Scott Jessica, I know your absolute fascination with the Olympics runs deep, so I thought this would be a fantastic topic to discuss with you.   Jessica Absolutely. This is the perfect marriage of all of my favorite things. Having been a gymnast, going to the Olympic Gymnastics Trials every four years and working in the brand and licensing space, this is everything bundled into one. So I’m very excited to talk about this.   Scott The trifecta. The gold, the gold medal, as they say. We’re about halfway into the Paris Olympics, but this lawsuit was filed just before the Paris Olympics started. But let me give you a little background on the Olympic trademarks. Under the Ted Stevens Olympic Amateur Sports Act, Congress granted the USOPC, exclusive ownership of certain Olympic-related words and symbols, including the name United States Olympic Committee, the words Olympic, Olympian, going for the Gold, Team USA and the International Olympic Committee’s symbol of the five interlocking rings. The act also permits the USOPC to authorize its contributors suppliers to use these Olympic-related words and symbols, and it also allows the USOPC to initiate lawsuits to address unauthorized uses. The USOPC’s rights are strong, and they were acknowledged as such by the Supreme Court in San Francisco Arts and Athletics versus the United States Olympic Committee, which involved a suit to injoin San Francisco Arts and Athletics use of Gay Olympic Games.   The Court noted that the legislative history demonstrated that Congress intended to provide the USOPC with an absolute monopoly over the use of the word Olympic. It doesn’t matter whether any unauthorized use of the word tends to cause confusion or not. All uses by parties other than the USOPC and those they authorize are prohibited, absolutely prohibited. Third-party marks that contain the designated Olympic-related words or symbols or any combination thereof cannot be registered on either the principle or the supplemental register, and nor can that matter be disclaimed. Those marks must be refused registration by the US Patent and Trademark Office on the grounds that the mark is not in lawful use in commerce. The US Olympic Trademark rights, they’re stronger than normal trademark rights, as you can see.   Jessica Absolutely. The USOPC and its international counterpart, the IOC, are extremely diligent in protecting the Olympic marks, and this is all driven by revenue generated from sponsors. So Olympic sponsorships are the second biggest revenue source for the IOC right behind its broadcast rights. Sponsors pay hundreds of millions of dollars to be the exclusive sponsors of the Olympic Games, and Olympic organizers are required to make sure no one gets a free ride.   Scott That’s right. And with the 2024 Paris Olympic Games underway, it’s no surprise that the USOPC is stepping up its enforcement activity. Actually, they stepped it up prior to the Olympic Games. With regard to prime hydration, the product packaging for its Kevin Durant collaboration shows use of the USOPC mark, Olympic, Olympian, Team USA, and going for gold. Ad copy for the product refers to the product as the, “Kevin Durant Olympic Prime Drink”. Let’s have our producer put up the drink can graphic on the screen here. You can see quite a number of references to Olympic trademarks and trademarks that are protected and owned exclusively by the USOPC. The USOPC claims that prime hydration failed to cease use of these Olympic marks after the USOPC sent Prime a cease and assist letter.   Jessica Wow. Well, Coca-Cola has a license deal with the USOPC that gives it the exclusive use of Olympic trademarks, including Olympic and Team USA, for its beverages in the United States. The USOPC says that the license fee Coca-Cola pays for this right is significant. Understandably so. Clearly, a significant component of value is exclusivity. In its complaint against Prime Hydration, the USOPC argues that the revenue from being able to grant exclusivity, this revenue which is vital to the funding and the training and entering of US teams for the Olympic, Paralympic, Youth Olympic, Pan-American, and Parapan-American Games, is threatened when individuals and organizations use the USOPC trademarks without authorization.   Scott That’s right. The complaint that was filed against Prime Hydration alleges a violation of the Ted Stevens Olympic and Amateur Sports Act, various violations of the Lanham Act, and a violation of the Colorado consumer protection laws and unfair competition laws. The complaint seeks damages, and it includes a claim for trouble damages and punitive damages and an injunction. But interestingly, I did not see on a docket, it might have been that I missed it, but I did not see on a docket a motion for a TRO, a temporary restraining order, which is odd given that these types of infringements, especially when time is of the essence, they’re usually partnered with a TRO.   Jessica That’s interesting. What we’ve learned, if nothing else, is that you don’t touch the Olympic trademarks. The USOPC and its international counterpart, the IOC, will come after you swiftly and aggressively. It’s understandable when we’re talking about the money that’s coming from the licensing of these marks and how it really helps fund the training of these athletes and entering into the games. I mean, that’s something that really needs to be protected for the success of the country as it relates to its participation in any of the various Olympic, Paralympic, Youth, Olympic, Pan-American and Pan-American Games.   Scott Absolutely. What I’m surprised over or with is that nobody flagged these issues to Prime Hydration. No one on Kevin Durant’s team, which I assume had approval over the product and ad copy. Nobody within Prime Hydration, none of its distributors. It just seems odd that everybody was asleep at the wheel here. But nonetheless, I think my expectation is that this will settle. I don’t think that we’re going to see any further action in the case itself. But if we do, we’ll be certain to- We’ll be back. Give you an update for sure. Jessica, thanks. Thanks for joining us. Is there anything that you want to say before we wrap this up?   Jessica Go Team USA!   Scott That’s what I thought. Thanks again for joining us.   Jessica Thank you.   Scott Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. 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.

Tracy Anderson, the mastermind behind the Tracy Anderson Method, sued ex-trainer Megan Roup for allegedly stealing her routines and licensing them to Equinox. The US District Court just ruled against Anderson’s copyright claim. Join Scott Hervey and Jamie Lincenbergfrom Weintraub Tobin on “The Briefing” as they discuss the case’s impact on fitness entrepreneurs. Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.   Show Notes: Scott Exercise is a multi-million-dollar business, and nobody knows that better than Tracy Anderson, celebrity fitness trainer and creator of the Tracy Anderson Method. The Tracy Anderson Method is a fitness routine that combines choreography, fitness, and cardiovascular movement, and it served as the foundation for multiple exercise studios and 19 home videos. Anderson sued one of her former trainers, Megan Roup, for ripping off her routines to create her own choreography-based dance cardio workout, which Roup later licensed to rival gym chain Equinox Holdings. The US District Court for the Central District of California recently ruled on Rupp’s motion for summary judgment, denying Anderson’s relief on her copyright claim. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Jamie Lincenberg. We’re going to talk about exercise routines and copyright and what this case means for celebrity trainers and fitness entrepreneurs in this next installment of “The Briefing.” Jamie, welcome back to “The Briefing.”   Jamie Thanks, Scott. It’s Good to be here and to get into this case. I’ve actually done the Tracy Anderson method and Megan Roup’s classes.   Scott That’s great. That’s great. You speak from first-hand experience, so this is great. Exactly. All right, so let’s talk about the cases. The facts are fairly straightforward. Anderson is a fitness trainer who developed the Tracy Anderson method. She has studios in LA, New York, Madrid, London, and she’s got merch, lots and lots of merch. She has truly built a fitness empire. Roup was a trainer in a Tracy Anderson gym from about 2011 to 2017. And Roup signed a trainer agreement upon her employment, which contained a mostly standard confidential information provision, which identified workouts, movements, exercise, routines, exercise formulas, nutrition advice, content, sequences, dances, muscular structure, work, and equipment as being, “confidential information”. After Roup left Anderson’s employment, she founded TSS, another choreography-based dance cardio workout.   Jamie Two weeks after terminating her employment with Tracy Anderson in February 2017, Roup sent emails to potential clients, including clients of Anderson’s, announcing her development of TSS, her choreography-based dance cardio workout. In March 2017, Roup announced on social media her launch of TSS, equals Equinox licensed TSS from Roup, and while working with Equinox, Roup prepared an instructor training manual for TSS, which Anderson alleges included much of the same information contained in Anderson’s confidential training materials.   Scott So after some initial law in motion, Anderson’s remaining claims were whittled down to copyright infringement and breach of contract. Roup then moved for summary judgment on both of those remaining claims. So as to the copyright claim, Anderson asserted that Roup infringed on the copyrights Anderson has in her home videos since the videos copy the choreography, movements, sequences, and the routines from the videos. Anderson is in arguing that Roup copied the home videos themselves, but that she copied the underlying routines that are captured on the footage. Anderson believes that the copyrights in the home videos extend to the routines that are captured in the home videos.   Jamie So, Roup didn’t dispute the similarity between hers and Anderson’s exercise dance routine. However, she does argue that Anderson can’t prove its copyright claim because Anderson’s underlying exercises in the videos are non-copyrightable under the Ninth Circuit case of Bikram’s Yoga College of India versus Evaluation Yoga.   Scott In Bikram, Bikram Choudhury developed and popularized The Sequence, which is a series of 26 yoga poses and two breathing exercises. He published a book that included descriptions, photographs, and drawings of the sequence. After, the two defendants participated in his yoga teacher training courses, and then they started a competing company that used the sequences in their yoga classes. Choudhury sued for copyright infringement. The Ninth Circuit held that the sequence was a system designed to yield physical benefits and a sense of well-being and a healing methodology which is not eligible for protection by copyright. As a result, the copyright protected only the expression of this idea, meaning the words in the pictures used to describe the sequence in his book, and not the idea of the sequence itself. In other words, Choudhury’s copyright in his book did not extend to protect the sequence itself, meaning the 26 yoga poses and two breathing exercises.   Jamie Anderson tried to argue that the routines are protectable choreography under the Ninth Circuit’s holding in Hanagami verse Epic Games. Hanagami involved a claim by a YouTube dancer based on the video game creator’s use of Shortbit from one of Hanagami’s dances in the video game Fortnite. In Hanagami, the Ninth Circuit adopted the US Copyright Office’s definition of choreography, which isn’t really a bright-line definition. According to the US Copyright Office, a choreographic work contains one or more of the following elements. Rhythmic movements of one or more dancer’s bodies in a defined sequence and a defined spatial environment, such as a stage, a series of dance movements or patterns organized into an integrated, coherent, and expressive compositional whole, a story, theme, or abstract composition conveyed through movement, a presentation before an audience, a performance by skilled individuals, or musical or textual accompaniment.   Scott Wow, Jamie, you weren’t kidding when you said that the Copyright Office office’s definition of choreography isn’t really a bright-line definition. The Copyright Office, while they gave us this generalized idea of what is choreography, they did give us some bright-line guidance here that was applicable to Anderson’s case. They did say that general exercise routines and athletic activities are not protectable choreography. I think the Anderson court could have stopped there. However, the court decided to create a new two-step analysis to navigate between Bikram and Haganami. So in determining whether Anderson’s routines are copyrightable or not, or whether anybody’s routines are copyrightable or not, at least in the central district and probably under the Ninth Circuit, plaintiff must first establish that the work is a copyrightable expression as opposed to unprotectible ideas, processes, or systems. And then, if the work is copyrightable, show that the dance rises to the level of protectable choreography under the Copyright Act. Now, with regard to Anderson’s routines, the Court found them to be an unprotectible process, system, and/or methodology. And although Anderson’s process was original and the result of substantial investment of time, the Court decided it could not be protected as copyright.   Jamie Right. So although the Court dismissed Anderson’s copyright claim, it did not, however, dismiss Anderson’s claim that Roup was in breach.   Scott Yeah, that’s right. The court found evidence that Roup sent out emails announcing her competing fitness program, The clients of Anderson’s, making use of Anderson’s client list and client information, and that this created a disputed issue of fact as to whether the client information constitutes confidential information and whether Roup used it, thereby breaching her employment agreement.   Jamie So, Scott, what can we learn from this? What’s the takeaway? Was there any chance that Anderson’s routines could have been characterized as protectable choreography?   Scott Well, the court does point out that Anderson refers to her routine as a method in many places. The court cites too many references by Anderson to the Tracy Anderson Method and to it being a fitness methodology. But even if there hadn’t been so many references to the routines as a method. As I think, as I mentioned above, the US Copyright Office said that exercises are excluded from being copyrightable. So I don’t think that Anderson could have prevailed on her copyright claim. However, Anderson’s breach of contract claim does seem strong. And that seems to be one lesson here: the value of a very strong confidentiality agreement.   Jamie Thanks, Scott. That’s really interesting. And I’m glad you brought this case to our attention.   Scott Yeah, we’ll keep track as this goes through the court if there’s any further movement on her breach contract claim. But I’m assuming the parties are probably going to settle, so we’ll see.   Jamie Thanks for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. 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 that we covered today, please make sure to leave us a comment.

Weintraub attorneys Scott Hervey and Jamie Lincenberg discuss the US radio royalty loophole where non-songwriter performers and labels receive no royalties. They explore the push for the American Music Fairness Act to change this, highlighting disparities in royalty payments and proposed legislation.

Renowned singer and actress Cher recently won a lawsuit over music royalties from her divorce from Sonny Bono, discussing copyright termination and implications for copyright law. Attorneys Scott Hervey and Jamie Lincenberg break down the case on 'The Briefing' podcast, exploring legal disputes and interpretations of music royalties in marital settlement agreements.

Trademarks perform a number of important functions. Scott Hervey discusses the spectrum of trademark strength in this archive episode of “The Briefing” Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.   Show Notes: Scott: Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog Scott: Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001. Josh: In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share. Scott: Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse. Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo.  A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell.  As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark. Scott: And while it’s true that a trademark can be anything, not everything can and should be a trademark. Josh: That’s right Scott.  There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable. Scott: Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individuals consent  Also, marks which consist or comprise of a portrait of a deceased president of the United States are not registrable during the life of the president’s widow except by written consent of the widow  In addition, certain organizations, by acts of Congress, have been granted exclusive rights to use certain marks.  For example, the United States Olympic Committee has been granted exclusive right to use a number of “Olympic” symbols, marks and terms Josh: Marks which describe the intended purpose, function or use of the goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are really not the best choice for a trademark. This type of mark is considered merely descriptive and is not registerable on the principal register absent establishing secondary meaning. Scott: Its iron Josh how often companies gravitate toward a descriptive mark.   The penchant for a descriptive mark was explained to me by a client – they work because the consumer knows exactly what they are getting.  That’s useful in the short term but does nothing for brand building. Josh: Here is a few examples of descriptive marks – NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks.  The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive. Scott: The major reasons for not protecting marks that are merely descriptive is to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use language which naturally describes the goods or services, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own product Josh: Marks that are merely self-laudatory and descriptive of the alleged merit of a product are regarded as being descriptive. Laudation does not per se prevent a slogan or mark from being registerable. Like other descriptive marks, a mark that is self-laudatory may be registerable upon establishing secondary meaning.  However, courts have refused registration even on the Supplemental Register of marks that are so highly laudatory and descriptive of the alleged product that they are incapable of functioning as a trademark Scott: One step up from descriptive marks, but miles away as far as protectability goes, are suggestive marks.  Suggestive marks are registerable on the Principal Register without proof of secondary meaning.  Suggestive marks are those which, while not really descriptive of the product’s qualities, nevertheless, suggest some benefit or property of the product.  An example involves ROACH MOTEL® for insect traps, in which this mark was enforced against an infringer using “Roach Inn.”  The Court explained, We do not find the mark ROACH MOTEL® to be a merely descriptive mark.  While roaches may live in some motels against the will of the owners, motels are surely not built for roaches to live in.  Hence, the mark is fanciful on conception. Indeed, its very incongruity is what catches one’s attention  Josh: The determination of whether a mark is merely descriptive and therefore not registerable absent evidence of secondary meaning or merely suggestive has always been a challenging task.  The Trademark Trial and Appeal Board (the quasi-judicial body responsible for adjudicating issues which arise concerning the registration of a trademark ) has opined that there is “a thin line of demarcation involved in making a determination as to whether a term or slogan is suggestive or merely descriptive and, apropos, thereto, when a term stops suggesting and begins to describe the goods in connection with which it is used, it is, at times, a difficult question to resolve.” Scott: The Board suggested that in determining whether a mark has crossed the threshold from suggestiveness to descriptiveness, the following factors should be analyzed:  (1) is the mark used in a trademark sense and not in a descriptive manner to describe the goods; (2) is the mark an expression that would be or is commonly used to describe the goods; (3) does the mark possess some degree of ingenuity in its phraseology; (4) does the mark say something at least a little different from what might be expected from a product, or say expected things in an unexpected way; and (5) does the mark possess more than a single meaning, namely, a double-entendre, which imparts to it a degree of ingenuity and successfully masks or somewhat obscures the intended commercial message Josh: The strongest marks are those which are coined words, having no intrinsic meaning or arbitrary words which, although they might exist as words in the English language, have no conceivable rational connection to the product, e.g. KODAK® (coined) for film and CAMEL® (arbitrary) for cigarettes.  Because such coined or arbitrary marks are inherently distinctive, no proof of secondary meaning is necessary before a court will protect the trademark rights of the senior user of such marks.    

Weintraub attorneys Scott Hervey and Jamie Lincenberg unpack the Supreme Court’s follow-up decision on damages in Neely v. Warner Chapel Music. Explore how this ruling could reshape future infringement cases.   Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.   Show Notes: Scott: In a previous episode of “The Briefing,” we pondered just how far back a plaintiff in a copyright infringement case can go in recovering damages when we discussed the case of Warner Chapel Music versus Neely. Well, the Supreme Court answered that question on May 9th, 2024. The answer is as far back as they’re able. I’m Scott Hervey of Weintraub Tobin, and I’m joined today by my colleague and frequent briefing guest, Jamie Lincenberg. We will be talking about the Neely case and how the Supreme Court’s answer to what was a contested question in copyright law might impact future infringement cases on today’s episode of “The Briefing.”   Jamie, welcome back, and thank you for joining us today.   Jamie Thanks, Scott. I’m happy to be here.   Scott Jamie, can you give us some background on this case?   Jamie Of course. In the case of Neely versus Warner Chapel Music, which began in 2018, music producer Sherman Neely filed a lawsuit against Warner Chapel Music and Artist Publishing Group. It was a run-of-the-mill copyright infringement case in which Neely claimed that Flo Rida’s 2008 song, “In the Air,” featured an unlicensed sample of a 1984 track that Neely owned.   Scott And this case became not so run-of-the-mill when Neely’s lawsuit headed to the Supreme Court to answer the then unresolved question of whether damages in a copyright case are limited to just the last three years before the case was filed, or can damages go way back beyond the three years? The reason why this case was right for Supreme Court review was due to a circuit split on the issue.   Jamie Right. The Second Circuit, the jurisdiction covering Neely’s case, applied a three-year damages cap that Justice Ruth Bader-Ginsberg explained in the Supreme Court’s past holding in Petrella versus MGM, as a successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be had for infringement in earlier years, and profits made in those years remain the defendants to keep. The Second Circuit applied the three-year limitation on damages, even in where a plaintiff alleges that his discovery of the infringement was only recently discovered. Despite the Supreme Court’s apparent endorsement of the three-year limitation on damages rule, the Ninth Circuit and the 11th Circuit later broke rank and held that if a plaintiff can prove they only recently discovered the fact that their copyright was infringed, not only can they bring a copyright lawsuit outside of the three-year limitation period, but the plaintiff can also see seek damages going back all the way to the very first infringement.   Scott That’s right. So, the question on which the Supreme Court granted certiorari in Neely was whether under the discovery, a cruel rule applied by the circuit courts, a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. And the Court, the Supreme Court, ended up answering that question in the affirmative.   Jamie Right. The Court points out that if any time limit on damages exists, it must come from the acts remedial sections, but these sections do not apply a time limit on monetary recovery. The Court points out that these sections just state without any qualification that an infringer is liable either for statutory damages or for the owner’s actual damages and the infringer’s profits. So, a copyright owner possessing a timely claim for infringement is entitled to damages no matter when the infringement occurred. The Court also took a shot at the Second Circuit’s logic for applying the three-year damages cap. The Court pointed out that the Second Circuit recognizes the discovery rule and allows a plaintiff to bring a lawsuit for acts of infringement that occurred more than three years earlier, but does not allow the plaintiff to recover damages for the infringement that is the very basis of the lawsuit.   Scott That’s right, but the still unanswered question from this case is the validity of the discovery rule itself. In the majority opinion, the Supreme Court acknowledges that it has never decided whether a copyright claim accrues when a plaintiff discovers or should have discovered an infringement rather than when the infringement happened. In a dissenting opinion, Justice Gorsuch said that the discovery rule has no role in copyright infringement cases, option of finding a fraud or concealment by the defendant. Justice Gorsuch acknowledged that this court, deciding the Neely case, was not under any independent obligation to take up the question of the validity of the discovery rule since that was not the issue before the court. However, rather than spending time on the Neely case, Gorsuch said he would have dismissed it as improvidently granted and waited another case squarely presenting the question whether the Copyright Act authorizes the discovery rule since, in his words, it is better to answer a question that does matter than one that almost certainly does not.   Jamie So, Scott, based on this opinion, how do you think that this is going to impact the filing of infringement cases moving forward?   Scott I mean, think about it. There is a damage cap under the accrual where you know that infringement occurred and you’re aware of the infringement at the time that the infringement occurs. And it’s not an instance where you only recently discover an infringement that has been occurring for longer than the three-year statutory period. In those cases, you’re naturally limited to three years of damages because most likely you’re aware of the act of infringement when it happened. But taking into account the discovery rule where an act of infringement has been happening for a very long time, as was the case in the Neely case, where he was not aware of Flo Rida’s song. We previously talked about how anybody could not be aware of that particular song. But nonetheless, I think it’s going to I think it’s going to encourage more of these types of cases. I think it’s going to encourage more cases where it’s alleged that the plaintiff only recently discovered the act of infringement, and then it will be the burden of the defendant to disprove that, to prove that the plaintiff was actually aware or any reasonable person under similar circumstances would have been aware of the act of infringement, and then try to end the case based on late filing of the complaint and a running of the statutory period. But I definitely think this will encourage more people to bring these types of cases because the pot of gold is so much bigger.   Jamie Right. Yeah, that’s what I was going to say.   Scott But I also think with more of these cases brought, I mean, justice such as dissenting opinion just teed it up for a potential defendant who is going to attack the discovery rule. I mean, that would be if I was defending a defendant who was the recipient of a copyright infringement claim, and the claim was based on the discovery rule, essentially, I would attack the validity of the discovery rule and appeal that all the way up because it seems if Justice Gorsuch, and the majority as well, they were basically welcoming an opportunity to rule on the validity of the discovery rule.   Jamie Right. I feel like right now, the discovery rule, based on this opinion, is maybe in a little bit of a gray area. Do we follow it? Do we not? So, yeah, this leads us to maybe be a case that’s going to examine this discovery rule, maybe all the way up to the Supreme Court?   Scott Yeah. Well, we’ll definitely keep an eye on that and basically see if the discovery rule falls out of favor in certain circuits. It’s based on this opinion because it somewhat puts its validity into question. Or definitely, like you said, puts it in a gray area for sure. We’ll have to track some of these cases and we’ll report back for sure.   Jamie Thank you for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share the episode with your friends and colleagues. If you have any questions about the topics we covered, please leave us a comment.

The FTC just issued a final rule banning post-employment non-compete clauses, and it’s shaking things up, especially in the non-scripted TV world. How will this impact talent deals? Join Weintraub attorneys Scott Hervey and Shauna Correia as they discuss what this means for networks and on-air talent on the latest installment of “The Briefing.”   Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott The FTC recently issued a final rule banning post-employment non-compete clauses in agreements between employers and their workers. While this is causing consternation with the standard corporate GC set, in-house counsel of television networks that are heavy into non-scripted television are quietly expressing concern. Why? Well, post-term exclusivity provisions are huge in the non-scripted television industry, and they’re used to prevent non-scripted talent from jumping ship. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by my partner, Shauna Correia. We’re going to talk about this FTC ban and how it will impact non-scripted talent deals on today’s installment of “The Briefing” by Weintraub Tobin.   Shauna, welcome to “The Briefing.”   Shauna Thanks for having me, Scott.   Scott Okay, so Shauna, why don’t you tell us what this ruling actually says?   Shauna This 540-page rule that the FTC came up with prohibits an employer from entering into or attempting to enter into any post-employment non-competent clause with a worker in the United States. The definition of worker is very broad. It applies to all-natural persons, so that’s direct and indirect relationships with employees and independent contractors. There are a couple of important but narrow exceptions. First, it does not apply to senior executives, which is defined as individuals making over $151,164 in annual compensation and are in a policy-making position for the company like a CEO or president, and the non-compete agreement was in place before the rule took effect. Second, it doesn’t apply in connection with a legitimate sale of a business. Third, it doesn’t apply to a small number of industries, which include nonprofits or specific industries like air carriers or ground transportation or banks that are not governed by the FTC but are regulated by some other governmental agency. But the vast majority of industries are covered by this.   Scott What about existing non-competes?   Shauna It’s important to note that this rule will not take effect for 120 days from today, May 7th. We have until September 4th before it becomes law. But assuming the rule takes effect, unless this worker is a senior executive, the rule as written will apply to retroactively ban enforcement of existing non-competes. Also, to note, if a cause of action for a breach of a valid non-compete has accrued prior to the effective date of the rule, that can still be enforced.   Scott Companies that have non-competed agreements in place, they’re also required to send out a notice of non-enforcement, correct?   Shauna Right. Employers are going to be required to send out a clear and conspicuous notice to all workers that have a non-competent provision in their contract, and the notice will have to tell the workers that the non-compete provisions will not and cannot be legally enforced.   Scott A company can’t satisfy this by, say, putting a notice on its website, can’t it?   Shauna No. The rule will require individualized communication, but it’s pretty open. It can be by email, mail, or even text message. I think the key is that you want to have proof that the notice went out. The FTC rule does provide model language that can be used.   Scott Okay. Well, now let’s talk about how this rule defines a non-competent clause and how that could impact what we normally see in participant agreements in non-scripted television.   Shauna Sure. The rule defines a non-competent clause as a term or condition of employment that prohibits a worker from, penalizes a worker for, or functions to prevent a worker from seeking or accepting work in the United States with a different person, where such work would begin after the conclusion of the employment, or two operating a business in the United States after the conclusion of the employment that includes this non-competent term or condition.   Scott The rule makes it clear that it would ban the enforceability of other contract clauses that have the same effect as a non-competent clause. The FTC provided an illustration, an NDA between an employer and a worker, written so broadly that it effectively precludes the worker from working in the same field after the conclusion of the worker’s employment with that employer.   Shauna Correct. Unlike under California state law, it doesn’t specifically ban non-solicitation provisions, but a super broad NDA like the example you gave, or for example, a non-solicitation clause, could be invalidated because the rule bars any provision or policy that functions to prevent someone from competing once their job for the company is done.   Scott Okay, so let’s see how this could impact participant deals in non-scripted television. So generally, in contracts with principal talent or participants in a non-scripted program, there is an exclusivity clause that generally requires the talent to be exclusive to the producer or the network. When these provisions are challenged in negotiation, networks like to argue that on-air talent becomes well known because of the network’s investment and reputation and that the network must be able to use this exclusivity provision to protect this investment. The scope of exclusivity can be very broad. For example, as an on-camera performer in all media, that’s a scope of the exclusivity. Or it could be narrower as an on-camera performer in unscripted television. Depending on the leverage the talent has, the talent could negotiate some carve-out, such as allowing the talent to participate in other types of non-scripted television, such as competition shows or something that is different than the format of the program that they’re being hired, or they can negotiate to allow for internet programming, such as a YouTube series. Now, to get this would require some leverage, and that’s not something that most participants that aren’t already celebrities have. Most of the average participants in non-scriptive television would start out with a very broad exclusivity provision.   Shauna The language in the exclusivity provision ends up essentially prohibiting this type of competition post-term.   Scott That’s right. The term of the exclusivity generally spans the period of time the producer has options on the talent services. So, generally, a talent agreement gives the producer the option to hire the talent back for subsequent seasons. Usually, it’s for five, six, or seven seasons. The option period language you usually see is something like 12 months from the initial airing of the previous season of the program.   Shauna So effectively, how long could that be?   Scott So, let’s look at the time period after the camera stops rolling. From the end of principal photography until the time that the show actually airs, could be as long as 6 to 12 months. Then you have the run of that particular season, so that could be an additional 6 to 12 weeks, depending upon the number of episodes ordered to production. Then you have the option window, the 12-month span from the first airing of the last episode of that season. So effectively, that period could be as long as 20 months to two years plus. The commission specifically declined to provide an exclusion to the rule for on-air talent. So, it’s clear that the commission intended this rule to be applicable to persons who participate in programming on air. Do you believe such an exclusivity provision, the type that we just talked about, would be interpreted as a non-competent clause?   Shauna Yeah, I think so because, as you described it, it would be seen as prohibiting that on-air talent from effectively doing any other work during this time, which could be, like you said, 20 months to 2 years.   Scott Well, let’s get it clear: prohibit them from doing any other work as an on-camera talent. Most of the time, these participants do something else. They have some other job or skill or expertise that may have something to do with being on camera.   Shauna Yeah, I think, as written, this would be seen as prohibiting on-air talent from effectively doing other work for another employer during this time, at least as on-air talent.   Scott Currently, there are some legal challenges to the rule. Let’s focus largely on the lack of statutory authority of the FTC to enact this type of rule. However, if the rule is upheld, I can see networks, maybe in an attempt to get around this prohibition, revising how on-camera talent is paid. Instead of paying the talent over the course of production, which is how they’re normally paid, I can see a network stretching the payment all the way out to the very last date when the vast majority of the talent’s work is performed and making the last payment due on the date that the producer’s option would have to be exercised. I could see networks arguing that this is an intern prohibition and not a post-term and thus it doesn’t fall under the FTC’s rule or isn’t prohibited by the FTC rule.   Shauna Yeah. As you mentioned, there are these legal challenges right now. The US Chamber of Commerce and two private entities have already filed suit to enjoin this law from being enforced, both on grounds that it’s retroactive, arbitrary, exceeds the bounds of the FTC’s authority delegated from Congress, constitutional grounds, you name it. We’ll have to see what happens there. But to your point, I agree with you, networks are going to get creative to achieve their goals, and there’s room for that. In fact, the FTC itself seems to suggest that what is traditionally known in the old labor as garden leave could work here, which would mean, though, talent being paid the same pay and benefits to stay on the payroll for the whole exclusivity period while really not doing any work. As you say, that may just end up meaning the network stretching the same dollars of pay over longer period of time. Or there’s other options, maybe really beefing up the nondisclosure provisions and things like that to prevent leaks of information about the show before it’s air and things like that.   Scott I think the network’s focus really is going to be locking in the talent to that particular network and not allowing them to do another show for another network. I can see a network stretching out the pay because they’re paid by the episode. They’re not paid by the week or by the month. Stretching out that pay and making the last payment due on the date that the producer’s option to pick up their services for next season would otherwise expire.   Shauna Yeah, and to be clear, nothing about the rule prohibits exclusivity provisions during employment. So, I would think that that would be viable.   Scott Yeah, interesting, interesting. Okay, well, let’s keep track of this and see what happens. And if we start seeing networks revising the way in which non-scripted talent are paid, if this rule, in fact, comes into effect as law, then we’ll have another subject to talk about. But thanks for joining us today, Shauna.   Shauna All right. Thanks a lot.   Scott Thanks for listening to this episode of The Briefing. We hope you enjoyed the episode. 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.