The Briefing by Weintraub Tobin

By Weintraub Tobin

In The Briefing by Weintraub Tobin, intellectual property attorney Scott Hervey and his guests discuss current IP issues related to trademark, copyright, and entertainment, as well as IP litigation an... more

4.6

1010 ratings

Download on the App Store

Download on the App Store

Get it on Google Play

FAQs about The Briefing by Weintraub Tobin:

How many episodes does The Briefing by Weintraub Tobin have?

The podcast currently has 247 episodes available.

The Briefing by Weintraub Tobin episodes:

October 31, 2024 The Dark Side of Halloween – Unlicensed Costumes and the Legal Haunt
Halloween is here, but beware! That killer costume might come with a lawsuit instead of candy. Scott Hervey and Tara Sattler discuss the legal threats associated with unlicensed costumes on this spooky episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.

Show Notes:
Scott: With Halloween just around the corner, we’re diving into a Spooktacular topic. This is the dark side of Halloween, the side where you get a lawsuit instead of a Kit Kat bar. I’m Scott Hervey from the Entertainment and Media Group at the Law Firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. Today, we’re talking about how the unlicensed use of famous movie characters for Halloween costumes could lead to a copyright and trademark lawsuit. On this installment, the spooky installment of The Briefing.
Tara, thank you for joining me today. Oh, look, look, both of us have our Halloween-themed background here. How cute.
Tara: Thanks for having me, Scott, and for sharing the background. This is definitely a timely topic. It’s not It’s not all bobbing for apples when it comes to infringement claims.\
Scott: No, it certainly is not bobbing for apples when it comes to infringement claims. Every Halloween, people dress up as characters from their favorite movies or their TV shows, whether it’s superheroes, villains, cartoon characters, you name it. Let’s talk about how costumes, as these characters, could potentially be problematic.
Tara: Sure. The issue centers around intellectual property rights, both copyright and trademark. Movie studios and companies often hold copyrights over the characters and their distinctive designs, and they use trademarks to protect the names and logos associated with those characters. If you’re producing or selling costumes based on these characters without permission, you’re infringing on those rights.
Scott: Yeah, that’s right. The way a court will determine whether a character from an artistic work, like a movie or a television show or a comic book or a book is deserving of its own copyright protection. This is protection separate and apart from the artistic work in which that character is brought to life is by applying the character delineation test. This test is a legal standard that’s used to determine whether a fictional character is sufficiently developed and distinctive enough to qualify for copyright protection. Over the years, courts have applied this test in a variety of cases involving iconic characters. This includes Godzilla, the Batmobile, James Bond, and Rocky Balboa. This means that if you take elements from these kinds of iconic characters, whether it’s their physical look, a vehicle, or even their specific costume, and start selling them as part of a Halloween costume set without a license, you could be infringing both copyright and trademark rights.
Tara: Let’s talk about how this could apply to, let’s say, someone selling a Joker costume without DC comics permission.
Scott: Sure. Yeah, absolutely. I mean, the Joker is a heavily protected character under both copyright and trademark law. Anyone selling costumes based on the Joker’s likeness without a proper license would face a copyright infringement lawsuit because that costume would be considered a derivative work derived from the Joker character. The court would apply the character delineation test, and they would certainly find that the Joker character is sufficiently developed and distinctive enough to qualify for its own copyright protection. So aside from the copyright issue, there’s also the trademark issue, and the same goes for the use of the trademarks like the Batman logo or the name Joker. The unlicensed use of these elements could also cause consumer confusion. People might think that the costumes are officially sanctioned by DC comics when they’re not.
Tara: So if you’re selling or even just marketing Halloween costumes with logos or designs that are close If it comes enough to the original, a company could claim that you’re infringing their trademark and you might be on the hook for damages.
Scott: That’s definitely something for people to think about before grabbing their favorite superhero costume. But time for a reality check. People who just want to dress up as their favorite characters for fun are really not going to be facing a lawsuit.
Tara: I think you’re right. In all likelihood, probably not. For personal use, like wearing a costume to a Halloween party or around your neighborhood, you’re generally not not going to get sued. The issue really arises when someone starts selling or mass-producing unlicensed costumes. Personal use falls more within the realm of fair use, where there’s no commercial gain involved. But once he enters the picture, that’s when legal troubles can begin.
Scott: No, that’s right, Tara. I agree with you 100%. So thanks for joining me today on this spooktacular episode of The Briefing, Tara. Happy Halloween.
Tara: It was my pleasure. Thanks, Scott. Happy Halloween to you and everyone else.
Scott: Well, that’s all for this spooky edition of The Briefing. Thanks to Tara Sattler for joining me today. And thank you, 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. If you have any questions about the topics we covered today, please leave us a comment.
...more
7min
October 25, 2024 The Fall of SUPER HERO: When Trademarks Become Generic
For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic. Scott Hervey and James Kachmar discuss this case and how marks become generic on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:
Scott:
Since as early as 1967, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero’, covering a variety of goods, including comic books, action figures, and T-shirts. Most people, myself included, didn’t know that Marvel and DC owned this trademark, and their reaction to this tends to be the same. How could Marvel and DC own a trademark for Superhero? Well, that reaction is essentially the reason why the Trademark Trial and Appeal Board granted a petition to cancel that trademark because that mark became generic.
I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor James Kachmar. We’re going to talk about this case, what are generic trademarks, and what happens when a trademark becomes generic on today’s installment of The Briefing? James, welcome back to the briefing. It’s good to have you back to talk about generic trademarks.
James:
Thanks for having me, Scott. I think this is going to be a really interesting discussion, especially since it’s involving heroes.
Scott:
No, I agree. Let’s get some background on this super dispute. There are a few interesting factual tidbits that I haven’t seen out there in this widely reported case. The case is Super Babies limited versus Marvel Characters, Inc. Super Babies Limited is a comic book publisher, and they petitioned the Trademark Trial and Appeal Board to cancel the trademark superhero. But this isn’t the first time that Super Babies and Marvel or DC have squared off. It seems that since 2021, DC comics had filed numerous petitions with the Trademark Trial and Appeal Board to oppose the registration of the Trademark Super Babies on the grounds that the mark conflicted with with various other DC trademarks, including Superboy, Superman, Supergirl, Super Friends, but interestingly, not superhero. It appears that Super Babies found some kryptonite and decided to go after the SuperHero and Superheroes trademark registrations. In all seriousness, Super Babies legitimately argued that it’s next to impossible to publish comic books about heroes without Baby being able to refer to as Superheros.
James:
Right, Scott. The key argument in the Super babies petition was that the superhero marks have become generic. The petition alleges that superhero is a generic term used in connection with stories about heroes, their characters and products, and that the term refers to a stock character archetype, Superheros, in a genre of stories that features the archetype and its associated tropes, i. E. The Superheros genre. Super Babies argues that consumers do not associate Superheros with any single brand, company, or character. Instead, consumers understand that the term superheroes refers to a broad category of stories and characters tied together by common themes and conventions, as well as to products that relate to or feature superhero stories or characters. Super Babies introduced evidence showing that superhero, as understood by consumers, refers to a general category of stories and characters rather than a particular or specific source of goods.
Scott:
Yeah, it was a very well-drafted and interesting petition to read. As a matter of fact, creative, I would say, too, because it included excerpts to certain DC comic issues that that help them make their point. But let’s take a step back and let’s talk about what a generic trademark is. In US trademark law, a generic mark refers to a term that the public primarily understands as the common name for a product or service rather than a name that identifies its source. For example, if I call my brand Apple and I sell apples, well, that’s a generic use. The term is already widely associated with a specific type of product, in that case, the fruit apple. I can’t claim exclusive rights to the trademark apple for apples as a trademark. The USP EBTL will refuse to register a generic trademark on both the principle and the supplemental register.
James:
Right, Scott. A mark can’t be protected under trademark law if it’s considered generic because generic terms can’t function as trademarks because they don’t distinguish the products or services of one company from another. They simply describe the product itself. On the other hand, if you were to, instead of selling Apple, sold computers or phones and called them Apple, that could be subject to trademark protection because the term is no longer generic. It doesn’t necessarily describe the product you’re selling.
Scott:
Right. Agreed. That mark would be probably considered a distinctive mark and highly protectable. So let’s talk about what happens if a trademark becomes generic over time because a trademark can start off strong. You and I were talking before we started taping about this superhero’s trademark. And way back in 1967, it probably wasn’t widely used. And at that point in time, maybe it was distinctive of the DC comic books and the products and services that they filed the trademarks for. A trademark that was once strong can lose its protection. This is called genericide. James, you wrote an article about this back in 2017 when you reported on Google successfully fending off a genericide attack against its trademark, Google.
James:
That’s right. Genericide is one of the biggest risks for a well-known brand. When the public starts using a trademark as the generic name for a product category or service, the brand risks losing its trademark protection. Classic examples of this include the words like aspirin, escalator, or thermos. These started out as trademarks but became generic over time because the public used them to describe the entire category of products rather than a specific company’s product. Could you imagine if Google loses its trademark rights as to its mark Google due to the prolific use of googling as a verb to describe the act of searching the internet?
Scott:
Yeah, that would be horrific for Google. I guess we can add now superhero to the list of Mark that have become generic over time. Given that the risk of having a trademark become generic is the loss of its trademark rights, the loss of the exclusive right to use the mark in connection with goods or services, and the ability for competitors to use that mark in connection with their goods as describing the function of their goods, it’s a big deal. Once a trademark is deemed generic, it’s no longer enforceable. As I said, competitors can start using that same term to describe their products, and that can dilute a brand’s identity and value. It can be incredibly damaging, especially for companies that have invested millions of dollars in building their brand.
James:
Yes. Imagine spending years and millions of dollars building brand recognition, only to lose it because your trademark has become so ubiquitous that it becomes generic. Let’s talk about steps that companies can take to prevent this from happening, Scott.
Scott:
Sure. That’s a good idea. There’s a few key strategies companies can implement to prevent genericide. First, they need to consistently remind the public that their trademark is a brand name and not a product category or a verb. This can be done through proper use in marketing and advertising. For example, you’ll often hear companies say things like, Use Kleenex brand tissues instead of just Kleenex.
James:
Right. Second, companies should actively monitor how their trademark is being used by consumers, the media, and even competitors. If they notice misuse of their trademarks, like people using the brand name generically, they need to take some type of action, sometimes even just issuing a public correction.
Scott:
Another important tactic is using trademarks with a generic descriptor. Instead of saying, as I said, use Kleenex alone, you would say, Use Kleenex Tissues. This helps separate the brand name from the product category.
James:
Right. Companies can also educate consumers through marketing campaigns, in some cases, seeking court orders to enforce the proper use of their trademarks. In extreme cases, some companies even engage in litigation to prevent competitors from using their brand name in a generic sense. It takes a lot of effort to safeguard a trademark, but the downside of losing trademark rights would seem to justify that effort in most cases, especially the amount of money and time companies spend in building their brands.
Scott:
Yeah, I agree with you on that, James. One last point, in addition to educating the general public, it’s also important to educate your internal team, your marketing department, your customer service reps, and even the legal team. They need to be vigilant about proper trademark usage.
James:
Totally agree, Scott.
Scott:
James, thanks for joining me to talk about this super important trademark case and shedding light on the risks of generoside and how to prevent it. I’m sure our listeners will appreciate these insights.
James:
Thanks for having me, Scott.
Scott:
That’s all for today’s episode of The Briefing. Thanks to James Kachmar for joining me today. And thank you, 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 the episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
...more
11min
October 18, 2024 New California Laws for Digital Replicas Both Live and Dead
California recently passed two new AI laws that aim to protect individuals from the unauthorized creation of digital replicas. Scott Hervey and James Kachmar discuss these laws and their implications for the media industry on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott:
Within the last few weeks, California’s governor, Gavin Newsom, signed into law two new AI bills that are intended to impact the media business. Both of these bills were championed by SAG-AFTRA and were touted as giving individuals more agency over the use of their voice and likeness. Do these bills really deliver on their promise, or are they duplicative? Or might they just create a bunch of confusion with other existing or pending bills?
I’m Scott Hervey from Weintraub Tobin, and today I’m joined by James Kachmar. We’ll be discussing A/B 1836 and S/B 2602 on today’s episode of The Briefing. James, thanks for joining me today. You and I have had a number of these similar conversations. You and I talked about the Elvis Bill, and we talked about the No Fakes Act, and now we’re talking about California’s movement in this space. It’s good to have you here to unpack this with me.
James:
Thanks for having me, Scott.
I think as all our as you, of course, know this is an incredibly relevant topic with the explosion of AI and deep fake technology that we’re seeing out there. I think we’re going to be excited to unpack this new legislation.
Scott:
Yeah, I agree with you. Let’s start with ABA 1836. So this bill amends Section 3344.1 of the Civil Code. And all of us lawyers that work in the media business are very much aware of 3344, which is basically California’s right of publicity statute, and 3344.1, which was the Fred Astaire Act, governs the protection of the rights of publicity for deceased celebrities and personalities against their unauthorized commercial exploitation. So A. B. 1836 is essentially about updating the law to account for the rise of digital technology and its impact on the likeness rights of deceased celebrities. So people who’ve passed away, but whose name, voice, image, and/or likeness still holds commercial value. So think of famous actors, musicians, or public figures. This amendment directly addressed the growing use of digital replicas, where advanced technologies used to replicate a deceased person’s voice or likeness in media like films or advertisement or even new music.
James:
That’s right, Scott. Section 3344.1 already provided protection for the use of a deceased celebrity’s name, voice, and likeness in connection with products, merchandise, or goods, or for the purposes of advertising or selling or soliciting purchases of products, merchandise, goods, and services. Ab 1836 goes a step further, especially in light of the recent AI technology. Let’s talk more about digital replicas. This seems to be the heart of the amendment, and it’s something that could really impact the entertainment industry.
Scott:
Yeah, I agree. The act defines a digital replica as a computer-generated, highly realistic electronic representation definition that is readily identifiable as the voice or visual likeness of an individual that is embodied in a sound recording image, audiovisual work, or transmission in which the actual individual either did not actually perform or appeared appear or the actual individual did perform or appear, but the fundamental character of the performance or appearance has been materially altered. This definition is not really that much different than what we’ve seen in the no fakes act. A digital replica does not include, however, the electronic reproduction use of a sample of sound recording or audiovisual work into another. So remixing, mastering or digital remastering of a sound recording or audiovisual work that’s authorized by the copyright holder.
James:
Right. And the bill now provides that any person who produces, distributes, or makes available the digital replica of a a deceased personality’s voice or likeness in an expressive audiovisual work or sound recording without prior consent is going to be liable to the injured party in an amount equal to the greater of $10,000 or the actual damages suffered by a person controlling the rights to the deceased personality’s likeness.
Scott:
Yeah. I want to point out something that you mentioned because this is where this bill deviates from what existed in 3344.1, which really focused on advertisements and the sale of products and services. This also governs the use of deceased personalities, voice and likeness, in an expressive audiovisual work. So not necessarily an advertisement for a product or service or in connection with the sale of a product or service. There are some exceptions to this. For instance, if the use of the digital replica in an expressive work is for news, use, or is for public affairs or is for sports broadcast or parody, the consent is not required. We saw that in the No Fakes Act as well. Similarly, if the digital replica is used in a documentary or for colony purposes, and it’s clear that the deceased personality did not actually participate. That use is typically allowed without consent.
James:
Right. And the restriction on the uses of a digital replica a deceased celebrity is broader than the general prohibitions on the uses of a deceased celebrity’s actual voice or recording. We will call that the analog likeness. Prior to this bill, the prohibition only covered uses in connection with the sales or advertising of the sell of goods and services. There was a specific carve-out for the use of a deceased celebrity’s analog likeness in creative works, including reading audiovisual works. Why is it that what’s permissible with a lookalike or soundalike is not permissible with a digital replica? Either way, the estate of the celebrity isn’t compensated. And how is this prohibition on the use of a digital replica not an imposition on First Amendment creative speech rights?
Scott:
Those are all really good points. And we talked about that in detail when we talked about the Tennessee’s Elvis Act, because that prohibited the use of a digital audio replica, but it also had an impact on soundalikes. And for a long time, there’s been a business of celebrity impersonators, soundalikes, lookalikes, and that generally has been allowed. I don’t know how they balance this, James. And I don’t know why what’s allowable with an analog likeness is is not allowable if you morph that analog likeness into a digital replica. I can understand how this addresses a concern of the use of the likeness of a deceased celebrity in a new television program. But there’s nothing that prohibits another actor who may look like that deceased celebrity or who is made up to look like that deceased celebrity to appear in that work. Just think about the Crown. It had an actress portraying Princess Diana. Princess Diana’s estate did not get compensated for that program. Why is it allowable to have an actor portray Princess Diana in the last season of The Crown? But it wouldn’t be allowable for the producers to use a digital replica of Princess Diana.
James:
I mean, I know it’s a bad example because this is a California statute, and it only impacts California residents. But nonetheless, I think we could go with my hypothetical and see where maybe it doesn’t make a whole lot of sense unless there’s something I might be missing. What do you think?
Scott:
Well, Scott, I think those are all valid points. But given California and Hollywood being the center of the entertainment industry, I could see a lot of out-of-state personalities coming in to take advantage of this act for those media that are being produced or created here in California. I think the issues you’ve identified are where courts are going to struggle with as we start to see cases filed after this law goes into effect. I think they’re going to have to take it on a case-by-case basis, and I think they’re going to struggle with a lot of the very issues you’ve identified. Why is it It’s limited in one instance, but not the other?
James:
Yeah. Just another, 3344, it only applies to celebrities that were domiciled in California at the time of their death. Marilyn Monroe, for example, who was domiciled in New York at the time of her death, 3344.1 does not apply to her, and it didn’t apply to her. And so the amendment to 3344.1 wouldn’t apply to her either. So there could be a digital replica, unless New York imposes a similar statute. There could be a digital replica of Marilyn Monroe used in a new television series, and it most likely would not violate this provision, assuming that the producers were not located in California either, domiciled in California. So you’re right. I think we’re going to see a lot of courts struggling with how to apply this. Who is bound by it? Would distributors who have a business in California or who provide the content to California residents, must they adhere to this statute as Well, I guess we’ll see. We’ll see. What happens if a No Fakes Act passes, which is federal legislation, which somewhat addresses this point? Are we going to have two countervailing statutes that are different in certain ways. Let’s move on to AB 2602.
Scott:
So this bill introduces due protections for individuals in California by regulating the use of digital replicas of a person’s voice or likeness in personal or professional services contracts. So think actor contracts that are not SAG after actors. So this bill adds Section 927 to the labor code, and it’s effective January 1, 2025. The bill is not going to be applicable retroactively.
James:
That’s right, Scott. And the bill governs provisions and contracts related to the use of digital replicas that we’ve been discussing of an individual’s voice or likeness in personal or professional services agreements, specifically for situations where a digital replica is used in place of the individual’s actual presence or performance.
Scott:
The statute says that a contract provision allowing the use of a digital replica in place of the actual individual would be unenforceable. Unenforceable as being against public policy unless the following conditions are met. One, the provision allowing for that use must allow the creation and use of the digital replica to replace work the individual would otherwise perform in person. The provision must include a reasonably specific description of the intended use of the digital replica. However, the failure to provide this description does not make the provision in the contract unenforceable if the use aligns with the fundamental terms of the original contract. Three, the individual must be represented by either a lawyer who negotiated on their behalf and clearly outlined the commercial terms in writing or a labor union that expressly addresses the use of digital replicas in their collective bargaining agreement. Think SAG, the most recent SAG contracts.
James:
Right. And the bill also clarifies that it does not affect the other provisions of a contract, such as exclusivity rights. These are still going to be enforceable even if the digital replica provisions are not enforceable.
Scott:
So this bill seems to codify certain provisions SAG obtained in its negotiations with the studios last year. Since the SAG Agreement terms are only applied to SAG actors, this bill would apply to everybody else. Now, this bill seems to reflect the growing concern in the entertainment and the technology industries about the use of AI-generated content and its impact on jobs. However, this bill only covers California, and it does nothing to prohibit similar business practices outside the state. Also, this bill only addresses the use of a digital replica, but it does not address the use of that individual’s like the creation of an entirely new digital avatar, which was addressed in the SAID contract negotiations. So I don’t know, I guess we’ll see, we’ll really see the impact of this bill, maybe with non-union jobs that are shot in California, where California actors are hired. I don’t know. I see this as being maybe covering a pretty small footprint. What about you, James?
James:
Right. I agree, Scott. I mean, it may not have a lot of applicability out there, and it’s going to be interesting to see, really, does it provide any coverage that isn’t already provided under the SAG contract? So once again, we’ll just have to wait and see how it’s enforced.
Scott:
That’s all for today’s episode of The Briefing. Thanks to James Kachmar for joining me today. And thank you, 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 the episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.
...more
16min
October 11, 2024Trump Train Derailed In “Electric Avenue” Copyright Lawsuit
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.
...more
13min
October 04, 2024 “Hold On” You Can’t Use That Music in Your Presidential Campaign
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.
...more
11min
September 27, 2024 Fake Reviews, Real Consequences: Consumer Review Dos and Don’ts
The FTC recently announced a new rule to combat fake consumer reviews and testimonials. Scott Hervey and Jessica Marlow explain how this decision will impact businesses and the influencer marketing industry in this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel.
Show Notes:
Scott:
On August 14th, 2024, the Federal Trade Commission announced a final rule that will combat fake reviews and testimonials. All parties involved in influence or marketing or companies that have significant e-commerce businesses need to know about these rules, what they prohibit, and the consequences for violating them. Joining me to break down these new rules is fellow Weintraub partner Jessica Marlow on today’s installment of The Briefing.
Jessica, welcome back to The Briefing. It’s been a while.
Jessica:
It has. Thank you for having me.
Scott:
Good to have you back. We’re talking about one of your favorite topics, influencer marketing.
Jessica:
Absolutely. FTC, they’re coming up with new rules all the time, so I’m excited to dig in.
Scott:
Yeah. Well, so let’s start out with a rule that I think a number of online brands, companies that have significant online businesses, will find maybe problematic. So the FTC says that it’s an unfair or deceptive act or practice and a violation for a business to provide compensation or other incentives in exchange for the writing or creation of consumer reviews expressing a particular sentiment, whether negative or positive, regarding a product, service, or business that is the subject of the review. In other words, no pay-to-play for consumer reviews. Now, according to the FTC notes, this section doesn’t address testimonials such as a blogger or an influencer paid review. This section only applies to consumer reviews. Also, the FTC pointed out that this section doesn’t prohibit paid or incentivized consumer reviews, only those where the compensation is provided in exchange for expressing a specific sentiment.
Jessica:
What about a campaign where a brand solicits positive feedback on a product in exchange for a discount on a future purchase? Something like, Tell us how much you loved our product, and we’ll give you 10% off your next purchase.
Scott:
The FTC that just because a business expects a review to be positive doesn’t mean that there is an express or an implied requirement that the review needs to be positive to obtain an incentive. The condition that the review needs to be of a particular sentiment in exchange for the incentive, it needs to be expressed or implied by the circumstances. However, let’s be clear that review gating, where a business only asks for positive reviews for customers while filtering out negative views, is itself illegal.
Jessica:
The rule also says that companies are prohibited from creating, writing, or selling fake reviews or testimonials. This would prohibit reviews attributed to a person that doesn’t exist. This would include AI-generated fake reviews, but not necessarily AI-generated summaries of actual reviews or reviews by real people who do not have actual experience with the business, its products, or its services, or that maybe misrepresent their experience of the person giving it. The rule also prohibits businesses from buying fake reviews or testimonials or disseminating such reviews or testimonials when the business knew or should have known that the reviews or testimonials were fake or false. Something to think about for brands or agencies that contract directly with influencers. Make sure that your agreement requires actual use of the reviewed product and that the review reflects the reviewer’s actual experience.
Scott:
Yeah, I agree with that. I think having that rep and warranty in an agreement is a way that a business can say, Well, there’s no way that I should have known that these testimonials given by this person are fake. They had no personal knowledge of the product or these reviews or testimonials did not actually reflect their own personal experience because the contract had these reps and warranties that said that the person giving the testimonial had to use it and that they could only give their personal experience as a testimonial. That’s a really good point. The prohibition on fake reviews also extends the company insiders or their relatives. The rule prohibits procuring or disseminating a review from a company insider or their relative when that review is about the business or one of its products or services, when the business knew or should have known that the reviewer, either materially misrepresented, either expressly or by implication, that the viewer exists. So one, it’s a review by a fake person, or two, that the reviewer did not have actual experience with the business or its product or service, or that the review misrepresents that reviewer’s actual experience.
Jessica:
The prohibition does not apply to reviews or testimonials that resulted from a business making generalized solicitations to purchasers to pose reviews or testimonials about their experience with the product or service or the business, or that appear on a website or platform as a result of the business merely engaging in consumer review hosting.
Scott:
We mentioned above that businesses can’t create or sell fake testimonials. But the flip side of that coin is that The rule also says that businesses cannot buy consumer reviews or disseminate reviews or testimonials that are fake, either that they’re from a fake reviewer or that they materially misrepresent the reviewer’s experience with a the product or the service. They also can’t provide compensation or incentives for reviews expressing a particular sentiment.
Jessica:
The rule also addresses insider reviews. The rule prohibits an officer or a manager of a business from writing or creating a consumer review or consumer testimonial about the business or one of its products or services unless there is a clear and conspicuous disclosure of the officer’s or manager’s material relationship to the business. If the relationship is otherwise clear to the audience, then in the case of consumer testimonials, this disclosure isn’t necessary. Officers, managers, employees, or the relatives must disclose their relationship to the company when writing reviews, and companies must ensure that such disclosures are made when they know about these relationships as well.
Scott:
It’s quite frequent to see insiders provide some type of product review on TikTok or Instagram. Sometimes, there’s a disclosure about their relationship with the company and their employment status with the company. Other times there isn’t. But companies take note, if your head of social media marketing is also a generator of your TikTok or Instagram content, you need to make sure that you disclose the fact that this person is a company insider. There are some review websites that misrepresent their relationship to a business being reviewed. These rules prohibit a business from materially misrepresenting, either expressly or by implication, that a website, organization, or entity that it controls, owns, or operates provides independent reviews or opinions, other than consumer reviews, about a category of business products or services, including the businesses or one or more of the products or services that it sells.
Jessica:
The role also prohibits review suppression. So, companies can’t use unfounded legal threats, intimidation, or false accusations to prevent or remove reviews. And they also can’t misrepresent the displayed reviews represent most or all of the submitted reviews if negative reviews are being suppressed.
Scott:
The rule also includes a prohibition against the use of fake social media influence indicators. Businesses are prohibited from selling, distributing, purchasing, or using fake indicators of social media influence, like number of followers, number of subscribers, likes, etc, for commercial purposes.
Jessica:
Let’s talk about the impact of this rule on companies and brands that have some online focus.
Scott:
Sure. The first is review management. Companies need to be extremely cautious about how they manage their online reviews. They can’t artificially inflate positive reviews or suppress the negative ones.
Jessica:
And how about transparency? There’s an increased need for transparency, especially when employees or affiliates are the ones leaving those reviews.
Scott:
Right. And that ties into marketing practices. Social media marketing strategies need to be authentic, avoiding the use of fake followers, fake likes, or fake engagement metrics.
Jessica:
Let’s focus for a second on customer feedback. Companies should really focus on genuine customer feedback rather than incentivized or manipulated reviews.
Scott:
Then let’s not forget the lawyers. Legal compliance Compliance. Online businesses need to establish clear policies and training to ensure compliance with these rules across all digital platforms. Might I suggest maybe an audit of these practices every year or so because as we know, the FTC is always either changing rules or adopting existing rules to fit current times.
Jessica:
Absolutely. I think that plays into platform responsibility. If a company hosts reviews on its platform, it needs to ensure representation of all reviews.
Scott:
Influencer partnerships. When working with influencers or celebrities, companies must ensure proper disclosure of relationships and the authenticity of the testimonials given by those influencers or celebrities. Agreed. Now, these regulations aim to create a more honest and transparent online marketplace. At least that’s the goal of the FTC. This could potentially level the playing field for businesses, but it requires more diligence to in managing a business’s online presence and managing both negative and positive customer feedback.
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.
...more
11min
September 20, 2024Punchbowl News’ Trademark Win Despite Rogers Setback
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.
...more
11min
September 13, 2024 Does This Court’s Ruling Put an End to Tattoo Copyright Cases?
The US District Court for the Northern District of Ohio issued an opinion in Hayden V. 2K Games, Inc. that could potentially put an end to tattoo copyright cases. Scott Hervey and Tara Sattler discuss the court’s opinion on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.

Show Notes:
Scott:
Earlier this year, we discussed a jury ruling in Hayden versus 2K Games, Inc, where a jury in the US District Court for the Northern District of Ohio found video game publisher Take-Two Interactive not liable for copyright infringement for a video game that incorporated a depiction of certain tattoos on LeBron James in the game NBA 2K. After the jury verdict, the plaintiff moved the court for a judgment as a matter of law. The court denied the motion and issued an opinion that may potentially put an end to these types of tattoo copyright cases. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor Tara Sattler. We’re going to talk about the court’s opinion in Hayden versus 2K Games next on The Briefing. Tara, welcome back. It’s been a while.
Tara:
Thanks, Scott. Glad to be back.
Scott:
So, Tara, can you give us a rundown of the facts in this case?
Tara:
Yes, absolutely. So Solid Oak, a licensing firm that represents the go-to tattoo artist for NBA players, sued Take-Two Interactive software, the game publisher behind the popular NBA 2K basketball video game, alleging that the game maker’s depiction of LeBron and his tattoos infringes the tattoo artist copyrights in six tattoos. In ruling on the video game publisher’s motion for summary judgment, the court found that the publisher had an implied license to depict the tattoos in the video game. An implied license exists where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it. The court in this case that the players had implied licenses to use the tattoos as elements of their likenesses and the defendant’s right to use the tattoos in depicting the players derives from these implied licenses. A crucial element of the court’s finding the tattoo artist knew their subject was likely to appear in public, on television, in commercials, or in other forms of media. After the jury verdict, the plaintiff then filed post-trial motions asking the judge to overturn the jury verdict or grant a new trial, which the judge denied.
Scott:
Before we go on, let’s have a quick review of what an implied license is. An implied license is basically permission to use a copyrighted work that’s inferred from circumstances and conduct rather than explicitly granting it in writing. In this case, the question was whether Hayden’s actions in tattooing LeBron James implied that he, Hayden, was giving permission for the tattoos to be depicted as part of LeBron’s likeness in various media, including video games.
Tara:
Let’s focus on the evidence the court looked to in upholding the jury’s finding of an implied license. We will talk about how this analysis will impact future similar cases and also provide some guidance to creators who may feature a person’s likeness, either actually or in some type of digital replica.
Scott:
There was testimony that NBA players like LeBron James expressly give the NBA and the Players Association the right to license their likeness, which those organizations then licensed to video game companies and others. But I think the most compelling evidence, the evidence which supported the implied license were the following two pieces of evidence. First, the fact that James had appeared, LeBron James had appeared in numerous NBA 2K games with his tattoos for years before getting tattooed by Hayden. Second, despite Hayden knowing that James was a star athlete and that he also had appeared as an avatar in video games, Hayden admitted that he never told James that he, meaning James, would need permission to show the tattoos on his person when James appeared in television or when he appeared in advertising or when he appeared in movies or was depicted in merchandise or in video games. Hayden’s exact reply to the questioning by the NBA 2K’s lawyer was, We never had a discussion about that. So pair that with James’ testimony, LeBron James’ testimony, that he, LeBron James, believed he had the right to license his entire likeness, including tattoos, and it was a slam dunk for the court, so to speak.
Tara:
It sounds like lack of any discussion about restrictions or approvals was really important here.
Scott:
Exactly. The court emphasized that the key question was Hayden’s intent at the time he tattooed LeBron James, based on the totality of the circumstances. The fact that Hayden never communicated any restrictions on displaying the tattoos, and possibly also the fact that LeBron James had appeared in video games prior to being tattooed by Hayden, seemed to weigh heavily on the court’s decision.
Tara:
Let’s talk now then about some important points of guidance that this case gives to creators who may feature a person’s likeness with tattoos in other media, like movies or animation. First, there’s the implied license. This case suggests that tattoo artists may be granting an implied license for the tattoos to be depicted as part of the person’s likeness in various media. In doing so, the totality of the circumstances would need to be considered in order to determine the tattoo artist’s intent at the time of creating the tattoo. For movies or animation, this could mean considering whether the artist knew that they were tattooing a public figure likely to appear in various media.
Scott:
Right. Another key factor would be if there were no restrictions conveyed by the tattoo artist to the person getting tattooed prior to the work commencing. The court found it significant that Hayden never communicated any restrictions to LeBron on his ability to display the tattoos, probably because I imagine LeBron James would look at him and get up and leave. This suggests that if a tattoo artist doesn’t explicitly restrict the use of their designs and their tattoos, it may be assumed that they’re allowing the tattoos to be depicted as part of that person’s likeness.
Tara:
Yes, and also relevant are existing licensing practices for the given media at hand. This case noted that the video game industry had long operated under the assumption that character likenesses included tattoos. This certainly applies to the movie and television industry where, at least prior to the tattoo cases, it was generally assumed that the right to feature a person’s actual likeness also included any tattoos that they may have on their body.
Scott:
Lastly, the understanding of the person getting tattooed is relevant. Le Ron James’ testimony that he believed he had the right to license his entire likeness, including tattoos, was considered relevant by the court. Now, absent, of course, any evidence of any restrictions expressly conveyed by the tattoo artist, the subject’s understanding of their rights to their own likeness, including those tattoos, will be taken into account by the court. Now, while this case doesn’t provide definitive rules for all situations, taken Together with the decision in the US District Court for the Southern District of New York and Solid Oak Sketches versus 2K Games, I think it shows that the courts will be inclined to find an implied license for depicting tattoos as part of a person’s likeness in various media, absent clear restrictions from the tattoo artist that are conveyed to the person getting the tattoo prior to the work being done.
Tara:
I think that’s right, Scott. I think it’s also right now in the age of social media, where almost everybody, of all generations, have a social media digital media presence of some kind or another. So this case started quite a while ago, but I think the court’s ruling rings true, especially now in the age of digital media that’s changed since this all started.
Scott:
Now, I definitely agree with you. And hopefully, we can begin to rely on the analysis that this court went through and stop being so concerned about the predicting actors that have tattoos in television and motion pictures, at least where that actor is a well-known actor. We understand that they received those tattoos prior to or after becoming a public figure like Mike Tyson.
Tara:
Yeah, I think that’s right for sure.
Scott:
Well, that’s all for today’s episode of The Briefing. Thanks to Tara Sattler for joining me today, and thank you, the listener, for viewing or 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.

...more
11min
September 06, 2024 Late Night, Early Dismissal: The Santos-Kimmel Copyright Case
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.
...more
8min
August 30, 2024 Deep Dive into the NO FAKES Act
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.

...more
10min

FAQs about The Briefing by Weintraub Tobin:

How many episodes does The Briefing by Weintraub Tobin have?

The podcast currently has 247 episodes available.

More shows like The Briefing by Weintraub Tobin

The NPR Politics Podcast by NPR

The NPR Politics Podcast

25,880 Listeners

Bloomberg Law by Bloomberg

Bloomberg Law

374 Listeners

IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more by Rolf Claessen and Ken Suzan

IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

24 Listeners

The Lawfare Podcast by The Lawfare Institute

The Lawfare Podcast

6,287 Listeners

Pod Save America by Crooked Media

Pod Save America

87,149 Listeners

The Daily by The New York Times

The Daily

112,489 Listeners

Up First from NPR by NPR

Up First from NPR

56,391 Listeners

Post Reports by The Washington Post

Post Reports

5,446 Listeners

Strict Scrutiny by Crooked Media

Strict Scrutiny

5,757 Listeners

The Journal. by The Wall Street Journal & Spotify Studios

The Journal.

6,060 Listeners

Consider This from NPR by NPR

Consider This from NPR

6,383 Listeners

The Bulwark Goes to Hollywood by The Bulwark

The Bulwark Goes to Hollywood

246 Listeners

The Ezra Klein Show by New York Times Opinion

The Ezra Klein Show

16,035 Listeners

Martini Shot by TheAnkler.com

Martini Shot

456 Listeners

On with Kara Swisher by Vox Media

On with Kara Swisher

3,424 Listeners