Affiliate Marketing vs Retail Services – TTAB’s Landmark Ruling

Get into the holiday spirit with a look at some of the most unique Christmas patents ever filed. From Santa detectors to upside-down Christmas trees, Scott Hervey and Jamie Lincenberg explore festive inventions that add a little extra cheer to the season on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: Welcome to a special holiday edition of The Briefing. Today, we are decking the Halls with a look at some of the most unique Christmas-related patents ever filed, at least in my opinion. That's right, the spirit of invention doesn't take a break during the holiday season. I'm Scott Hervey, a partner with the law firm of Weintraub Tobin, and I'm joined today by my colleague, Jamie Lincenberg. We are going to examine these festive follies of intellectual property. So grab your eggnog, snuggle up, and let's dive into five truly unique Christmas-themed patents on today's installment of The Briefing. Jamie, welcome back. Are you ready for this? Do you have your Santa hat nearby? Jamie: I'll grab it in a minute, but you have to put yours on, too. Okay. Scott: Well, I don't happen to have one nearby, unfortunately. That was really a mistake in prepping for this episode. I really should have brought my Santa hat. Oh, well. Okay. First, let's just point out, neither of us are patent lawyers. This is really more for humor than anything else. Second, I want to point out in doing my research for this episode, there are a lot of Christmas patents out there. Jamie: Well, that makes sense. Scott, Christmas is a big business. Scott: It is. It This is a big business. All right, so kicking things off, let's talk about the Santa detector. Every kid wants to try to spot Santa, and this device purports to give kids an edge on the elusive elf. This patent, filed in 1996, is for a device designed to detect Santa Claus entering your home. I mean, isn't that what the ring camera and ADT is all about, too? This patent application says, In the minds of young children, Santa Claus's arrival is denoted by the presence of Christmas presents under the tree and/or Christmas stockings filled with treats or cold, depending upon whether you're good or bad. That was not in the patent application. That was my ad lib. The patent continues on. However, none of these customary practices nor any prior art arrangements known to the applicant provides a Christmas stocking that is capable of being selectively illuminated to signal the arrival of Santa Claus. This ingenious gadget uses motion detectors, sound sensors, and even a Christmas tree light to trigger to alert an eager kids when the big man makes himself available. It's like a ring, doorbell for Santa, only much less practical. Jamie: Imagine the chaos if it went off every time Uncle Bob wandered into the living room for another round of Christmas cheer. Scott: Oh, yes, I'm sure everybody has an Uncle Bob. Unfortunately, though, Jamie, it seems that kids will have to use a less high-tech mechanism for spying on Santa. This patent expired in 2014 due to failure to pay maintenance fees. Jamie: Well, maybe the inventor was on the naughty list. Scott: Oh, maybe he was. Jamie: This next one seems very practical. For people that If you don't live in California and Arizona, where it tends to be in the mid '70s all December long, this patent application is for a Christmas tree watering system, which aims to solve the age-old problem of crawling under your tree to add water. It's a simple setup, a water reservoir in the shape of Santa with a water hose that extends from it to another hidden reservoir under the tree. Functional? Sure. Festive? Absolutely. Creepy? 100%. No one wants to see a water hose extending from Santa's rear end that doubles as a tripping hazard at 2 AM after the office holiday party. Scott: That's right. I love that. The picture that's in the patent application here.

Can an influencer sue another for having a similar aesthetic? Scott Hervey and Jessica Marlow dive into a Texas case that could reshape creator marketing on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: Can a natural beige and cream aesthetic be protected? There's a case pending in Texas, a lawsuit brought by one social media influencer against another social media influencer in which the plaintiff claims that the defendant copied her look. Can you protect a look? I don't think so. I'm Scott Hervey, a partner with the law firm of Weintraub Tobin, and I'm joined today by my partner, Jessica Marlow. We're going to discuss the case of Sydney Nicole versus Alyssa Shell and its potential implications on the creator marketing industry on this installment of The Briefing. Welcome back, Jessica. It's been a while. Jessica: Well, thank you for having me. I'm very interested in this case and looking forward to talking it through. Scott: Yeah, this one is just right up your alley for sure. Can you give us some background on the case? Jessica: Absolutely. This case involves two influencers who both operate in the same niche, promoting Amazon products. Sydney Nicole Gifford, the plaintiff, filed a lawsuit against Alyssa Shell and her company, alleging that Shell copied Gifford's entire online persona, including her Instagram and TikTok posts, Amazon storefront layout, and even the designs of apparel Gifford created through Amazon. Gifford claimed that Shell replicated her esthetic, described in the lawsuit as a neutral beige and cream brand identity to mislead followers and increase her own earnings from sales commissions. Scott: So Gifford's complaint included a wide range of claims, totaling eight. Copyright infringement, vicarious copyright infringement, trade dress infringement, misappropriation of likeness under Texas law, tortuous interference, unfair trade practices, and unfair competition, unjust enrichment, and violations of the Digital Millennium Copyright Act or DMCA. Shale moved to dismiss the complaint or parts of the complaint, arguing essentially that she has not broken any laws by making social media posts like Gifford's. In ruling on Shale's motion to dismiss, the magistrate judge noted that this appears to be the first time a court has looked at whether one influencer can sue another for copyright infringement and other claims based on the similarities in their social media posts promoting the same products. Jessica: Of the six claims, the court dismissed three: tortuous interference, unfair competition, and unjust enrichment. Let's talk about the claims that the court didn't dismiss. The first is claims for vicarious copyright infringement. Scott: And we should be clear, the reason why the court didn't address the copyright infringement and trade dress infringement claims is because Shell did not move to dismiss those. So to establish vicarious copyright infringement, a Plaintiff Must Plead, Direct Infringement by a third party, the defendant's right and ability to supervise the infringing conduct, and the defendant's direct financial interest in the infringing activity. The last element that Shell had a direct financial interest in the infringing activity would easily be established if Gifford could prove the first two elements. That's what both the court and Shell focused on. As to the first element, Shell argued that Gifford failed to allege any act of infringement by a third party since Gifford accuses both Shell and her entity of direct infringement. Gifford clarified that the vicarious infringement claim was not an attempt to hold Shell liable for the direct infringement committed by Shell's company and vice versa. Rather, the claim was an attempt to hold both of them liable for the vicarious copyright infringement of Shell 's followers. Jessica: And the court was satisfied with this allegation. Scott:

Oakland’s attempt to rename its airport didn’t take off. On this episode of The Briefing, Scott Hervey and Jamie Lincenberg discuss the trademark dispute between San Francisco and Oakland over airport naming rights. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: When Tony Bennett sang about leaving his heart in San Francisco, he wasn't singing about Oakland. There are no little cable cars climbing halfway to the stars in Jack London Square, as charming as it is. Essentially, that's why the City and County of San Francisco sued the city of Oakland and the operator of the Oakland International Airport, the Port of Oakland, to stop Oakland from renaming its airport to San Francisco Bay Oakland International Airport. I'm Scott Hervey, a partner at the law firm of Weintraub Tobin, and I'm joined today by my colleague Jamie Lincenberg. Fasten your seat belts and put your seats in the upright and locked position. It's SFO versus OAK in today's installment of The Briefing. Jamie welcome back. Thank you for joining me today. Jamie: Thanks, thanks. Thanks for having me, Scott. Scott: Let's let's see how many airline airport puns and bits of humor we can spontaneously include in this story here. Jamie: Sounds good. Scott: Okay, so, are you ready for takeoff? Jamie: I'm ready. Scott: Okay, so this case is about the Port of Oakland's attempt to rename its airport and include San Francisco in its name. And this is also about the city of San Francisco's claim that such use would create consumer confusion and constitute trademark infringement. But the reason Oakland wanted to include San Francisco, at least it claims, isn't just about the desire to trade off of San Francisco's goodwill. Jamie: Okay, so please tell us, why did Oakland want to include San Francisco in the new name of its airport? Scott: Well, as you know, whether we have to travel into our office in San Francisco, which is right in the heart of the financial district or otherwise fly into downtown San Francisco. We don't always fly into SFO. Those who have to fly into San Francisco know that flying into Oakland is most often the better bet. It's fairly common to have weather delays in San Francisco, but that's not the case in Oakland. And also, you can catch the Bart right into San Francisco, right from the Oakland airport. And if you need a car. Oakland Airport is just right across the Bay bridge from downtown San Francisco. And apparently this was not well known to people outside of the Bay area or travelers who travel regularly in the San Francisco. Jamie: That's true. Scott: So, you know, apparently the Port of Oakland conducted some studies that concluded that Oakland's Oakland's proximity to San Francisco isn't really well known outside of the Bay area and completely unknown outside of California. And the port believed that this lack of awareness, this lack of awareness of the, you know, geographical proximity created challenges from the port in serving travelers. Jamie: Yeah. And I can understand why Oakland would want to do this, but I'm sure that San Francisco was not on board, so. Scott: True. Very true. San Francisco claimed that this would cause consumer confusion, and a few airlines also objected to the purported name change, saying that it would cause confusion for their travelers. The port went through with its internal requirements to implement the name change, and then the city of San Francisco sued, claiming trademark infringement. San Francisco claimed that consumers would believe that there was some association or affiliation between the two airports, and San Francisco also argued that consumers would buy tickets to the wrong airport or go to the wrong airport. Jamie: And so I guess this brings us to the heart of the case. Did Oakland's use of San Francisco constitute trademark infringement. Scott: So in determining that, the court applied the standard likelihood of con...

This Thanksgiving, we're diving into the world of intellectual property and recipes. Can chefs own their culinary creations? Can a recipe be copyrighted? From Turducken trademarks to creative cookbooks, we're discussing the legal side of your favorite holiday dishes. Tune in to The Briefing’s milestone 200th episode with Scott Hervey and Tara Sattler for all the tasty legal details. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: There are numerous ways to cook a turkey and thousands and thousands of recipes for turkey. Some are old fashioned like roasting with stuffing, some are newer like Tandoori Style, and some, well, I still just don't get like the turducken. But who exactly owns all of these turkey recipes, not to mention all the recipes for stuffing and cranberry sauce. I'm Scott Hervey, a partner with the law firm of Weintraub Tobin. And today I am joined by my partner, Tara Sattler. We're going to talk about IP protection for recipes on this special Thanksgiving episode of the Briefing. Tara, welcome back to the Briefing. Happy Thanksgiving to you. Tara: Thanks, Scott. Thanks for having me. And this is an exciting topic to dig into. Scott: Yes, I see we both have our like, fall themed backgrounds up, despite the fact that it's 71 degrees here today in Los Angeles. Tara: Well, not for much longer. Scott: Yeah. Well, so today we're diving into the fascinating and often murky world of intellectual property protection for recipe recipes. So can a chef actually own their culinary creation? And what about their cookbooks? And what happens when recipes are copied and shared? Tara: All great questions. So let's start with the basics. Protection of a recipe. So some famous chef creates a dish that is huge and a really big hit. But legally, how much protection does a recipe actually get? Scott: Well, that's a great question. So U.S. copyright law protects any original work of authorship that's fixed in a tangible medium of expression. So one would think that an original recipe that a chef creates and writes down and may include in the cookbook or online is protected by copyright. However, that is not necessarily the case. In the United States, recipes generally don't receive strong intellectual property protection. Copyright law does not cover lists of ingredients or basic instructions on how to use setting ingredients. In 1996, the SEC, the Seventh Circuit case of Publications International Limited versus Meredith Corporation involved claims of copyright infringement of a number of recipes. And in that case, the court said that recipes that were involved in that case comprised merely of the list of required ingredients and the directions for combining those ingredients to achieve the final product. The recipes contained no expressive elaboration upon either the functional components or how to create the end result. And as a result, the court found the recipes to be not protectable. Now, this is as opposed to recipes that might spice up functional derivatives by weaving in creative narrative. Tara: But digging into what the court said, if a recipe included expressive elaboration, then that may be protectable. This probably explains why some cookbooks and food bloggers weave personal stories into Their recipes. Scott: That is true, and probably the case. But regardless how creatively a cookbook may lay out a recipe filled with stories from the chef's childhood pictures, et cetera, the ingredients and the process for making the dish itself are not protectable. Tara: Okay, so this probably accounts for the thousands of Turducken recipes that we can find on the Internet. Scott: It probably does. But speaking of Turducken, let's talk about what can be protected. And that's a trademark. So, Tara, did you know that Turducken is a registered trademark? Tara: I did not know that. Scott: Yes, it is. So that mark was registered in 1986,

Did Netflix push the boundaries of "based on a true story"? Scott Hervey and Jamie Lincenberg discuss Harvey v. Netflix, the risks of docudramas, and explain how truth and fiction collide in this high-stakes lawsuit on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Cases discussed: Fairstein v. Netflix Williams v. Netflix Harvey v. Netflix Show Notes: Scott: It seems like every good docudrama results in a defamation lawsuit. There is the recently settled lawsuit, Fairstein versus Netflix, which is a defamation claim over the portrayal of Linda Fairstein, former New York City prosecutor in the Netflix series, ‘When They See Us.’ Then there's Williams versus Netflix, a defamation lawsuit brought by then Vanity Fair photo editor, Rachel Williams, whose friendship with Anna Delvey is highlighted in the Netflix series, ‘Inventing Anna.’ Then there's the defamation case du jour, and for some reason, the one that seems to have Hollywood's current attention, Fiona Harvey versus Netflix, the defamation case surrounding the Emmy Award-winning series, ‘Baby Reindeer.’ Earlier this month, a California federal court hearing the dispute denied Netflix's anti-slapp motion and allowed the plaintiff's defamation case to go forward. I'm Scott Hervey, a partner with the Entertainment and Media Group at Weintraub Tobin, and today I'm joined by my colleague, Jamie Lincenberg. We We are going to talk about this case and the lessons in the court's opinion for avoiding claims like this on today's episode of The Briefing. Jamie, welcome back. It's good to have you. Jamie: Thanks, Scott. Great to be here again. Scott: Let's get into this, Jamie. Can you give us a little rundown of what happened in this case? Jamie: Absolutely. This lawsuit stems from the Netflix series, Baby Reindeer, if you've seen it, inspired by the real-life experiences of comedian Richard Gad, following his early career as a stand-up comic in Scotland. The series depicts a character named Martha, who is a stalker of Gad's character. Martha is portrayed as a troubled individual, a convicted criminal who spent five years in prison for stalking, a violent individual who sexually assaults Gad in a public setting, and a relentless stalker who harasses Gad at his home and workplace. Scott: Jamie, have you seen this Have you seen Baby Reindeer yet? Jamie: I have. Scott: Okay. I haven't. So Jamie, it's on my list to watch, but feel free to add color commentary as we're going through. So Fiona Harvey, she's the plaintiff in this case. She claims that the The character of Martha is clearly based on her and that these portrayals are entirely false and defamatory. Harvey asserts that this serious portrayal of Martha goes far beyond the actual events and fabricates serious criminal acts she never committed. This, she argues, has caused severe damage to her reputation and her emotional well-being, which led her to file this lawsuit against Netflix for defamation and other claims. Jamie: Netflix fired back with two key legal endeavors. First, they filed a special motion to strike, also known as an anti-slap motion, aiming to have the entire case dismissed. Second, they filed a motion to dismiss, seeking to to go out the individual claims that Harvey brought against them. Scott: We're going to focus on the anti-slap motion and Harvey's defamation claim here. And by the way, those were... Her defamation claim was the only claim that actually survived. So anti-slap laws are designed to protect individuals from frivolous lawsuits aimed at silencing their free speech, especially when they speak out on matters of public concern. In California, where this case was filed, an anti-slap motion requires the defendant to first demonstrate that the plaintiff's claims arise from a protected activity. If the defendant meets this burden, then the burden shifts to the plaintiff to prove that the plaintiff ...

The 90s hip-hop group 2 Live Crew won big in their copyright case against Lil' Joe Records. Scott Hervey and Jamie Lincenberg break down termination rights, bankruptcy, and what it means for artists reclaiming their work on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: In mid-October, a Miami federal jury handed a win to Luther Luke Campbell and the heirs of Mark Ross and Christopher Wong Won of the 2 Live Crew in their long-running copyright reclamation lawsuit against Lil’ Joe Records. The Master Sound recordings were transferred in 1990 to Skywalker Records, the label that once released the iconic 2 Live Crew albums.   The court case had its twists and turns, including a ruling earlier this month that copyright termination rights survive bankruptcy. I'm Scott Hervey with the Entertainment and Media Group at Weintraub Tobin, and I'm joined today by Jamie Lincenberg, and we're going to talk about this case on this installment of The Briefing. Jamie, welcome back to the briefing. It's been a little while. Jamie: Yeah, thanks for having me. Scott: Jamie, before we get into this, I don't know. I thought we'd chat about what's on your desk. Is there anything interesting that you're working on? Jamie: There's a lot on my desk, always. But let's see. Lately, I've been working on some production legal for a feature film that is going to start principal photography on Sunday. So, it’s been tying up all the loose ends, making sure that we have all of the financing in place, and getting ready to roll camera. Scott: It's always busy right before the start of principal photography, for sure. Yeah. All right. Well, let's get into this. Just some quick background. So, Skywalker Records was formed by Luther Luke Campbell, and it was the record label that owned the master recordings to all five. I didn't know they had that many, but all five of the 2 Live Crew albums. Now, the name Campbell and Skywalker should ring a bell with those of you that follow copyright law, because Campbell was one of the name parties in a case that transformed copyright law, literally. Campbell versus A Cuff Rose, which introduced the concept of transformative use into the lexicon of copyright law and fair use. Skywalker later changed its name to Luke Records. Jamie: In 1995, Luke Records then filed for bankruptcy. Joseph Weinberger, a tax lawyer that served as Luke Records' CFO and In-House Counsel, bought the rights to 2 Live Crew’s master recordings out of bankruptcy for $800,000, and he then formed his own label, Lil Joe Records, to distribute them. Scott: In 2020, Luke Campbell, Mark Ross, and the heirs of Chris Juan, served a notice of termination on Little Joe Records and others purporting to terminate the transfer of the rights to the various 2 Live Crew albums that were transferred to Skywalker Records via a 1987 recording agreement, and then the subsequent transfer from Skywalker/Luke records to Little Joe records pursuing to a bankruptcy court purchase. Jamie: Scott, as we know, Section 203 of the Copyright Act permits authors, or if the authors are not alive, their surviving spouses, spouses, children or grandchildren, or executors, administrators, personal representatives or trustees, to terminate grants of copyright assignments and licenses that were made on or after January first, 1978, when certain conditions have been met. Scott: On the effective date of termination, all rights in the work that were conveyed by the terminated grant revert to the author. Jamie: Copyright termination rights were created by Congress in the 1976 Copyright Act. They allow authors or their heirs to terminate or cancel a prior grant of copyright, even if they previously sold or licensed it. This gives them a chance to recapitulate capture control over their work after a set period. The idea behind this really is simple.

Clearing titles for creative projects has become more challenging after the Supreme Court’s decision in Jack Daniels v. VIP Products. In this episode of The Briefing, Scott Hervey and Tara Sattler explore the evolution of the Rogers test and the new hurdles studios face in title selection. Cases Discussed: Jack Daniels Properties, Inc. v. VIP Products LLC HomeVestors of America, Inc. v. Warner Brothers Discovery Rogers v. Grimaldi Punchbowl, Inc. v. AJ Press Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: One of the things we do for our production company and studio clients is clear the titles to their projects. Now, ever since the Supreme Court case of Jack Daniels Properties versus VIP products, clearing titles have become a little bit more challenging. And last year's district Court case of Home Investors of America versus Warner Brothers shows exactly how challenging it's become. I'm Scott Hervey from the Entertainment and Media Group at Weintraub Tobin, and today I'm joined by my partner, Tara Sattler. We're going to talk about the impact of Jack Daniels on clearing titles for creative works on this installment of The Briefing. Tara, welcome back to the briefing. It's good to have you back, especially on this topic, because this is something you and I deal with quite frequently. Tara: Absolutely. It's great to be here, and thanks for having me back. Scott: All right. So, let's provide a quick recap of the Rogers test and the impact that Jack Daniels had on the Rogers test. Tara: That's a great place to start. The Rogers test comes from the 1989 Second Circuit case, 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. The question in that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act as well as state right of publicity laws, for using a celebrity's name in the title of a work. The District Court and the Second Circuit on appeal both said no, and from that case, the Rogers test was created. Scott: Under the Rogers test, First, the use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever. If the title has some artistic relevance, the use does not violate the Lanham Act unless the title explicitly misleads as to the source or content of the work. Now, the first line of inquiry is whether the use of the third-party mark has some artistic relevance. Now, that threshold is extremely low. Basically, if the level of artistic relevance is more than zero, this is enough. Now, the second line of inquiry is to whether the use of the third-party mark explicitly misleads as to the source of content or work. Now, the Rogers test has been widely adopted by other circuits, including California's Ninth Circuit. Tara: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties Inc. Versus VIP products. The dispute involves the claim by Jack Daniels that the dog toy, Bad Spaniels, infringed a number of its trademarks. At the district Court and on appeal at the Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test. Scott: That's right. But on appeal to the Supreme Court, the Supreme Court said that the issue was not whether the dog toy is an expressive work, but rather the nature of the use of Jack Daniel's marks. The Supreme Court found that VIP's use of the marks, while humorous, was for the purpose of serving as a source identifier. So, trademark use, in other words. The Supreme Court held that the Rogers test does not apply to instances where a th...

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...

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 sourc...

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,