The Briefing by Weintraub Tobin

Legal experts Scott Hervey and Jamie Lincenberg discuss Kim Kardashian's lawsuit over knockoff furniture, highlighting the importance of due diligence in endorsements. The case involves allegations of trademark infringement, false endorsement, and consumer deception. The legal battle between Kardashian, the Judd Foundation, and Clemens Design underscores the complexities of protecting intellectual property rights in the furniture industry. The foundation's insistence on authenticity and the potential repercussions for endorsing counterfeit products are also explored.

Legal experts Scott Hervey and James Kachmar discuss the recent district court ruling on OpenAI's copyright infringement allegations. They explore vicarious infringement, DMCA violations, and the complexities of AI training. Authors like Sarah Silverman are embroiled in the lawsuit against OpenAI for using their works to train language models.

Legal experts Scott Hervey and James Kachmar discuss Tennessee's ELVIS Act which protects musicians from AI clones. The bill safeguards a musician's voice by amending right of publicity statutes. They explore the implications on AI audio technology, civil liability, and copyright laws.

Legal experts Scott Hervey and Jessica Marlow discuss the risks brands face in social media marketing, from FTC compliance to intellectual property violations. Topics include ad spend projections, FTC requirements for brands, and legal risks in influencer promotions. They also cover copyright infringement, trademark issues, and the importance of securing rights for online content like memes and photos.

Legal experts Scott Hervey and Jessica Marlow discuss the risks in influencer marketing deals, emphasizing the importance of understanding legal regulations. They cover topics like IP infringement, music copyright concerns, and promoter liability lawsuits. The podcast sheds light on the civil and SEC liabilities for undisclosed promotions, including celebrity involvement in cryptocurrencies.

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

Discover how truth became the ultimate defense in the legal battle between Cynthia Love and Kanye West. Unpack the court's ruling on displaying historical footage as defamation. Hear Scott and Eric discuss the case and ruling on 'The Briefing'.

Can AI inventions be patented? Scott Hervey and Eric Caligiuri explore recent USPTO guidance on patenting AI-assisted inventions in this installment of “The Briefing” by Weintraub Tobin.   Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Can AI inventions be patented? Can inventors use AI assistance in the creation of an invention, and can that invention be patented? On February 12, 2024, the United States Patent and Trademark Office issued guidance on the patentability of inventions developed with the assistance of artificial intelligence. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Weintraub lawyer and frequent guest to the briefing, Eric Caligiuri, to discuss this new development in patent prosecution on this episode of “The Briefing.” Eric, welcome back to “The Briefing.” Eric: Good to be here, Scott. Scott: So, Eric, the USPTO recently issued a guidance statement that addressed the listing of non-humans on patent applications. Now, this seems to stem from the various patent applications filed by Stefan Thaler or Thaler, which lists his AI tool device for the autonomous bootstrapping of unified sciences, or DABUS, as the inventor. The USPTO denied these applications, and this denial was upheld by the Federal Circuit. Eric: Right, Scott, in the guidance, the USPTO explained that AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents. The USPTO reasoned that the US Supreme Court has indicated that the meaning of invention in the patent act refers to the inventor’s conception. Similarly, the Federal Circuit has made clear that conception is the touchstone of inventorship. Conception is often referred to as a mental act or the mental part of the invention. Specifically, it is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice. Because conception is an act performed in the mind, it has to date been understood as only performed by natural persons. Scott: Eric, there has been some question about the patentability of inventions created using AI tools. The USPTO issued guidance on this issue as well. Eric: That’s right. The USPTO explained that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity. Thus, patent protection may be sought for inventions created through the use of AI tools under specific circumstances. Scott: So the USPTO made it clear that inventions created through the use of AI tools are not per se unpatentable. Eric: That’s correct. The USPTO said that there are no specific sections of the patent act that support a position that inventions that are created by natural persons using specific tools, including AI systems, result in improper inventorship or otherwise unpatentable. The statutes only require the naming of natural persons who invented or discovered the claimed invention. Irrespective of the contributions provided by an AI system or other advanced technology system. Scott: So, Eric, what are the circumstances under which a creator or inventor using an AI tool can claim ownership of the invention? Eric: In the context of AI-assisted inventions, natural persons who create an invention using an AI system or any other advanced system must still contribute significantly to the invention. There is no requirement for a named inventor to contribute to every claim in an application or patent. A contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent or patent application. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application. Inventorship is improper if any patent or patent application that includes a claim in which at least one natural person did not significantly contribute to the claimed invention, even if the application or patent includes other claims invented by at least one natural person. Scott: In determining whether a person significantly contributes to an invention created using AI tools, the USPTO will look to the same test it uses to determine inventorship in claimed joint inventions, right? Eric: Correct. The USPTO looks at the Pannu factors. Each inventor must contribute in some significant manner to the conception or reduction to practice of the invention, make a contribution to the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention, and do more than merely explain in the real inventor’s well-known concepts and or the current state of the art. Scott: So, Eric, what can applicants expect when filing an application for an invention created using AI tools? Eric: When applying the Pannu factors to determine whether natural persons significantly contributed to an AI-assisted invention? This determination is made on a claim by claim or a case by case basis, and each instance turns on its own facts. While the USPTO generally presumes those inventors named on the application data sheet are the actual inventor or joint inventors of the application, patent examiners will carefully evaluate the facts from the file record or other extrinsic evidence when making determinations on inventorship. When the facts or evidence indicates that the named inventor or joint inventors did not contribute significantly to the claimed invention, the civic claim and possibly the entire application may be rejected. Scott: No inventor wants to go through the time and expense of filing a patent application only to have it rejected. We know that an inventor must significantly contribute to the creation of the invention, and such contribution must meet the Pannu factors. What else can the inventor consider? Eric: Agreed. The USPT of them provided the following non-exhaustive list of principles that can help determine whether an AI assisted invention is patentable. First, merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system. However, a significant contribution can be shown by the way the person constructs the prompt and view of a specific problem to elicit a particular solution from the AI system. Scott: Now, reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Eric: That’s right. A natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill in the art, is not necessarily an inventor. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system’s output could demonstrate that the person provided significant contribution to the invention, even if that person is unable to establish conception until the invention has been reduced to practice. Scott: A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention, even though the person was not present for or a participant in each activity that led to the conception of the claimed invention. Eric: Correct. In some situations, the natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created by the AI system. Scott: Maintaining intellectual domination over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system. Right? Eric: Exactly! A person simply owning or overseeing an AI system that is used in the creation of an invention without providing a significant contribution to the conception of the invention does not make that person an inventor. The USPTO reminded applicants that they still have a duty to disclose, and in applications for AI-assisted inventions, this information could include evidence that demonstrates a named inventor did not significantly contribute to the invention because the person’s reported contribution was made by the AI system. Scott: Thanks, Eric, that was quite fascinating. Actually, I’m quite fascinated by the USPTO; having said that, a significant contribution could be shown by the way a person constructs the prompts in view of a specific problem to elicit a particular solution from the AI system. I think that’s, that’s pretty groundbreaking, right? I mean, that’s basically saying that an inventor could be considered to have significantly contributed to an invention that is created due to the output of a generative AI system based solely on the structure and construction of the prompts that they feed into the system. I think that’s pretty groundbreaking. Would you agree? Eric: No, I totally agree with that. I mean, essentially, what you’re saying is, based solely on the inputs into the AI system, they could potentially be considered an inventor, assuming that those inputs significantly contributed, I guess, to the output, which would be the conception of the invention. Scott: Yeah, I guess it has to do with the, it seemed from at least that statement that it seemed to be the work that goes into structuring the input, creating and structuring the input. Fascinating. I think we’ll definitely have to keep our eye on future patent applications that are filed based on the use of AI tools and see how this all shakes out. Thanks again, Eric, for bringing this to our attention. Eric: 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, and if you have any questions about the topics we covered today, please leave a comment.

Discover the Supreme Court case on copyright damages recovery time frame. Learn about the circuit split, the Nealy vs. Warner Chappell Music lawsuit, and the impact on high-profile cases like Flo Rida's song. Dive into the legal dispute over discovery rules and speculate on the Supreme Court ruling. Explore the need for intervention in copyright dispute resolution for fair legal processes.

Dive into the new WGA and SAG contract provisions relating to AI with Scott Hervey and Jamie Lincenberg. They explore the definition of generative artificial intelligence (GAI) and its impact on writer credit and compensation. The podcast also discusses the challenges of protecting literary material created by GAI and the evolving rights of performers in digital replicas under the 2023 agreements.