96 episodes

In The Briefing by the IP Law Blog, intellectual property attorney Scott Hervey and his guests discuss current IP issues related to trademark, copyright, and entertainment, as well as IP litigation and intellectual property in the news.

The Briefing by the IP Law Blog Weintraub Tobin

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    • 4.4 • 7 Ratings

In The Briefing by the IP Law Blog, intellectual property attorney Scott Hervey and his guests discuss current IP issues related to trademark, copyright, and entertainment, as well as IP litigation and intellectual property in the news.

    Closing The Royalty Loophole- Push for a Public Performance Right in Sound Recordings

    Closing The Royalty Loophole- Push for a Public Performance Right in Sound Recordings

    Did you know? In the U.S., terrestrial radio stations don't pay royalties to non-songwriter performers or record labels! Unlike other countries, only songwriters and publishers get paid. Weintraub attorneys Scott Hervey and Jamie Lincenberg share how musicians are pushing Congress to change this with the American Music Fairness Act in this installment of “The Briefing.”



    Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.



     







    Show Notes:

    Scott

    As you are aware, or you may not be aware, that in the United States, terrestrial radio broadcasters do not have to pay royalties to the singer or the record label for the performance of music. That's correct. While radio stations pay the songwriter and publisher or performance royalty, the non-songwriter performers, whether that be the singer, guitar player, or drummer, as well as the record label, get nothing. This is different than most other countries around the world and is also different from how royalties are paid for songs that are streamed over the Internet, such as on Spotify or Pandora. Some musicians are pushing Congress to change that.  I'm Scott Hervey from Weintraub Tobin, and I'm joined today by fellow Weintraub lawyer and frequent “Briefing” contributor Jamie Lincenberg. We are going to talk about what some are calling a loophole that benefits US radio station conglomerates and the arguments to change that in today's installment of “The Briefing.”



     



    Jamie, welcome back to “The Briefing.”



     

    Jamie

    Thanks, Scott. Glad to be here again.



     

    Scott

    So, Jamie, before you heard my opening, did you know that US radio stations don't make any payments to the non-songwriter, artist or record labels when they play music over terrestrial airwaves?



     

    Jamie

    I don't think I did.



     

    Scott

    I don't think most people knew that, to be quite honest with you. So, the fact that non-songwriters and record labels get nothing when a US radio station plays a song has its genesis in the difference in rights a copyright holder in a composition has from the rights a copyright holder in a sound recording has. So, first, let's clarify a couple of things. So one, a piece of recorded music has two copyrights. The first is in the underlying musical composition, and the second is in the sound recording itself. The rights in a musical composition are usually owned by a songwriter or the music publisher, and the sound recording rights are usually owned by either the artist or a record label if there is one. Now, the copyright act vests copyright holders with certain exclusive rights. However, the rights a copyright holder has in a sound recording is more limited than the rights a copyright holder has in a musical composition. The copyright owner of a sound recording has the right to make and distribute copies of the sound recording and make derivative works from it, such as remixes, videos using the sound recording, etc. The public performance rights for sound recordings, however, is limited only to digital audio transmissions.



     



    This means that AM and FM radio stations do not have to get permission or pay royalties to publicly perform a sound recording. However, since the Copyright Act grants a copyright holder in a compo...

    • 7 min
    The Briefing: Not Terminated Cher Still Entitled to Her Share of Music Royalties

    The Briefing: Not Terminated Cher Still Entitled to Her Share of Music Royalties

    Cher recently won a major lawsuit over her music royalties from her divorce from Sonny Bono. Join Weintraub attorneys Scott Hervey and Jamie Lincenberg on today’s episode of “The Briefing” as they break down this case and its implications for copyright law.



    Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.



     







    Show Notes:

    Scott

    Cher recently won quite a big victory in a lawsuit over whether a copyright termination in various Sonny Bono compositions could terminate her share of music royalties that were accorded to her in the divorce settlement between her and Sonny. I'm Scott Hervey from Weintraub Tobin, and I'm joined by frequent Briefing contributor Jamie Lincenberg. We are going to talk about this case on today's episode of “The Briefing.”



    Jamie, welcome back to “The Briefing.”

    Jamie

    Thanks for having me, Scott.

    Scott

    Let's jump into the facts of this case. In 2016, Mary Bono, that's Sonny Bono's widow, issued a notice of copyright termination under Section 203 of the Copyright Act to various music publishers that held rights in Sonny Bono's compositions. Under Section 203, authors or their successors may terminate copyright assignments and licenses that were made on or after January 1, 1978. Upon termination, all rights in the work that were covered by the grant revert to the author. However, any derivative works that were prepared under the authority of the grant before its termination may continue to be utilized under the terms of the grant after that grant is terminated. Apparently, though, in September 2021, Mary Bono notified Cher that pursuant to the copyright termination and their rights, Cher was no longer entitled to the 50% of royalties she was accorded under the divorce settlement agreement. Cher ended up suing for declaratory relief to enforce her rights under the marital settlement agreement she had with Sonny Bono.

    Jamie

    There is some important language in the marital settlement agreement. Let's highlight that first. The agreement, which is governed by California law, gave Cher a 50% interest in any record royalties, which is all contingent receipts payable after July 14th, 1978, from Atlantic Recording Corporation under the agreement dated August 30th, 1966, from Liberty, U. A. Inc, under the agreements dated from and after November 1, 1964, and from MCA Records Inc, under agreements dated January 1, 1972, and February 11th, 1971. It also gave a share of 50% interest in any composition royalties, which is the contingent receipts payable after July 14, 1978, from musical compositions and interests therein written and composed in whole or in part by Sonny or others prior to February 1, 1974, and/or were acquired by Sonny and certain other entities prior to the couple's separation.

    Scott

    That's right, Jamie. The marital settlement agreement also states that any of Sonny's successors and interests or assigned are also subject to share rights in both the record royalties and the composition royalties. So, in Cher's lawsuit for declaratory relief, she sought from the court a declaration that Mary Bono's copyright termination notice did not terminate and could not have terminated the marital settlement agreement and its assignment to share 50% of the composition royalties. Mary Bono took the position that Section 304(c) of the Copyright Act, the copyright termination section, preempts state contract law as to the rights to the renewal terms of the copyrights at issue. And as a result, the marital settlement agreement is now preempted and lacks effect.

    Jamie

    • 6 min
    The Briefing: TheStrength of a Trademark

    The Briefing: TheStrength of a Trademark

    Trademarks perform a number of important functions. Scott Hervey discusses the spectrum of trademark strength in this archive episode of "The Briefing"



    Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.



     







    Show Notes:



    Scott:

    Trademarks perform a number of important functions. They are consumer road signs; they tell consumers which products to buy. They are a company’s public persona; they epitomize of all the positive (and negative) qualities of a company or a product. Lastly, trademarks represent a solemn promise to the purchasing public that the products or services branded with a company’s mark will meet certain standards. Yet, even with marks as important as they are, some business select marks that are intrinsically weak and have limited protection. WE are going to talk about the spectrum of trademark strength on this installment of The Briefing by the IP Law Blog



    Scott:

    Trademarks can be one of the more valuable assets a company owns. Trademarks generate brand equity based on the amount a consumer will pay for a branded product as compared to a non-branded product. For some companies, brand equity can make up a substantial portion of its value. For example, according to a 2001 ranking by Interbrand, the Coca-Cola brand, valued at $68,945,000, represents 61% of Coca-Cola’s market capitalization as of July, 2001. Xerox’s brand, valued at $6,019,000, represents 93% of Xerox’s market capitalization as of July, 2001.



    Josh:

    In business, branding comes as second nature. In order to survive in a competitive environment, a business must separate itself and its products from the pack and summarize these differences in a concise and succinct manner. This is even more important for emerging companies who are new to the field and in competition against established businesses with market share.



    Scott:

    Given the important function of trademarks, it is imperative that an emerging company identify its marks, analyze whether the marks are strong or weak, and then protect the stronger marks from infringement, being diluted and from becoming generic due to public misuse.



    Josh For the most part, a trademark can be anything. According to the Lanham Act, the Federal law that deals with trademark issues, a trademark can be a word, a saying, or a logo.  A Trademark can even consist of a sound (think Intel), color (pink for Corning ware fiberglass insulation) and a smell.  As long as the proposed mark meets the essential purpose of functioning as a trademark, that is, it serves to identify the manufacturer of the goods or provider of the services, it can properly be categorized as a trademark. The proposed mark must mentally trigger an association between the mark owner and the goods or services bearing the mark, otherwise it is not a trademark.



    Scott:

    And while it’s true that a trademark can be anything, not everything can and should be a trademark.



    Josh:

    That’s right Scott.  There are certain marks that will be denied protection as a trademark. Marks which consist of immoral, deceptive or scandalous matter or matter which disparages any person, living or dead, institutions, beliefs or national symbols, are not registrable or protectable.



    Scott:

    Neither are marks which resemble flags of code or arms or other insignias of the United States or of any state or municipality or of any foreign nation, or marks which utilize the name, portrait or signature of a particular living individual without that individu...

    • 9 min
    The Briefing: Supreme Court Holds Copyright Damages Can Go Beyond 3 Years

    The Briefing: Supreme Court Holds Copyright Damages Can Go Beyond 3 Years

    Weintraub attorneys Scott Hervey and Jamie Lincenberg unpack the Supreme Court's follow-up decision on damages in Neely v. Warner Chapel Music. Explore how this ruling could reshape future infringement cases.

     

    Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.  















    Show Notes:

    Scott:

    In a previous episode of “The Briefing,” we pondered just how far back a plaintiff in a copyright infringement case can go in recovering damages when we discussed the case of Warner Chapel Music versus Neely. Well, the Supreme Court answered that question on May 9th, 2024. The answer is as far back as they're able. I'm Scott Hervey of Weintraub Tobin, and I'm joined today by my colleague and frequent briefing guest, Jamie Lincenberg. We will be talking about the Neely case and how the Supreme Court's answer to what was a contested question in copyright law might impact future infringement cases on today's episode of “The Briefing.”   Jamie, welcome back, and thank you for joining us today.  

    Jamie

    Thanks, Scott. I'm happy to be here.  

    Scott

    Jamie, can you give us some background on this case?  

    Jamie

    Of course. In the case of Neely versus Warner Chapel Music, which began in 2018, music producer Sherman Neely filed a lawsuit against Warner Chapel Music and Artist Publishing Group. It was a run-of-the-mill copyright infringement case in which Neely claimed that Flo Rida's 2008 song, “In the Air,” featured an unlicensed sample of a 1984 track that Neely owned.  

    Scott

    And this case became not so run-of-the-mill when Neely's lawsuit headed to the Supreme Court to answer the then unresolved question of whether damages in a copyright case are limited to just the last three years before the case was filed, or can damages go way back beyond the three years? The reason why this case was right for Supreme Court review was due to a circuit split on the issue.  

    Jamie

    Right. The Second Circuit, the jurisdiction covering Neely's case, applied a three-year damages cap that Justice Ruth Bader-Ginsberg explained in the Supreme Court's past holding in Petrella versus MGM, as a successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be had for infringement in earlier years, and profits made in those years remain the defendants to keep. The Second Circuit applied the three-year limitation on damages, even in where a plaintiff alleges that his discovery of the infringement was only recently discovered. Despite the Supreme Court's apparent endorsement of the three-year limitation on damages rule, the Ninth Circuit and the 11th Circuit later broke rank and held that if a plaintiff can prove they only recently discovered the fact that their copyright was infringed, not only can they bring a copyright lawsuit outside of the three-year limitation period, but the plaintiff can also see seek damages going back all the way to the very first infringement.  

    Scott

    That's right. So, the question on which the Supreme Court granted certiorari in Neely was whether under the discovery, a cruel rule applied by the circuit courts, a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. And the Court, the Supreme Court, ended up answering that question in the affirmativ...

    • 9 min
    Is the FTC Recent Rule on Non-Competes a New Reality for Reality TV Stars

    Is the FTC Recent Rule on Non-Competes a New Reality for Reality TV Stars

    The FTC just issued a final rule banning post-employment non-compete clauses, and it's shaking things up, especially in the non-scripted TV world. How will this impact talent deals? Join Weintraub attorneys Scott Hervey and Shauna Correia as they discuss what this means for networks and on-air talent on the latest installment of “The Briefing.”  

    Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.















    Show Notes:

    Scott

    The FTC recently issued a final rule banning post-employment non-compete clauses in agreements between employers and their workers. While this is causing consternation with the standard corporate GC set, in-house counsel of television networks that are heavy into non-scripted television are quietly expressing concern. Why? Well, post-term exclusivity provisions are huge in the non-scripted television industry, and they're used to prevent non-scripted talent from jumping ship. I'm Scott Hervey from Weintraub Tobin, and today I'm joined by my partner, Shauna Correia. We're going to talk about this FTC ban and how it will impact non-scripted talent deals on today's installment of “The Briefing” by Weintraub Tobin.   Shauna, welcome to “The Briefing.”  

    Shauna

    Thanks for having me, Scott.  

    Scott

    Okay, so Shauna, why don't you tell us what this ruling actually says?  

    Shauna

    This 540-page rule that the FTC came up with prohibits an employer from entering into or attempting to enter into any post-employment non-competent clause with a worker in the United States. The definition of worker is very broad. It applies to all-natural persons, so that's direct and indirect relationships with employees and independent contractors. There are a couple of important but narrow exceptions. First, it does not apply to senior executives, which is defined as individuals making over $151,164 in annual compensation and are in a policy-making position for the company like a CEO or president, and the non-compete agreement was in place before the rule took effect. Second, it doesn't apply in connection with a legitimate sale of a business. Third, it doesn't apply to a small number of industries, which include nonprofits or specific industries like air carriers or ground transportation or banks that are not governed by the FTC but are regulated by some other governmental agency. But the vast majority of industries are covered by this.  

    Scott

    What about existing non-competes?

     

    Shauna

    It's important to note that this rule will not take effect for 120 days from today, May 7th. We have until September 4th before it becomes law. But assuming the rule takes effect, unless this worker is a senior executive, the rule as written will apply to retroactively ban enforcement of existing non-competes. Also, to note, if a cause of action for a breach of a valid non-compete has accrued prior to the effective date of the rule, that can still be enforced.  

    Scott

    Companies that have non-competed agreements in place, they're also required to send out a notice of non-enforcement, correct?  

    Shauna

    Right. Employers are going to be required to send out a clear and conspicuous notice to all workers that have a non-competent provision in their contract, and the notice will have to tell the workers that the non-compete provisions will not and cannot be legally enforced.  

    Scott

    A company can't satisfy this by, say, putting a notice on its website, can't it?  

    Shauna

    No. The rule will require individualized communication, but it's pretty open.

    • 12 min
    Scarlett Johansson vs Chat GPT What the Legal Claims Would Look Like

    Scarlett Johansson vs Chat GPT What the Legal Claims Would Look Like

    Did Scarlett Johansson's voice inspire 'Sky'? Scott Hervey and Jamie Lincenberg of Weintraub Tobin unpack the controversy between Scarlett Johansson and OpenAI's Chat GPT. Explore potential legal claims and the intricacies of voice rights in AI on this episode of The Briefing.



    Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.







    Show Notes:

    Scott

    Scarlett Johansson claims that Chat GPT's voice of Sky is her voice, or is intended to be her voice. Despite Sam Altman, the CEO of OpenAI, attempting to engage Johansson to voice Chat GPT, Altman claims that Sky isn't her, that it's a voice actress OpenAI hired well before his initial discussions with Scarlett's agent. I'm Scott Hervey from Weintraub Tobin, and I'm joined today by a fellow Weintraub lawyer and frequent “Briefing” contributor, Jamie Lincenberg. We are going to talk about the Scarlett Johansson OpenAI controversy, the claims she could bring, and how those claims may fair on today's episode of “The Briefing” by Weintraub Tobin.



     



    Jamie, welcome back to “The Briefing.” I think this one's going to be a good one.



     

    Jamie

    Thanks, Scott. It's good to be back. I'm excited to dive in.



     

    Scott

    This has been in the news for quite a while now, and the facts are mostly out there. In a nutshell, Sam Altman approached Scarlett Johansson in September 2023 about voicing Chat GPT. According to Scarlett Johansson, Altman said that he felt that by voicing the system, she could bridge the gap between tech companies and creatives and help consumers feel comfortable with the seismic shift concerning humans and AI. Apparently, Altman felt that her voice would be comforting to people. Scarlett Johansson ultimately declined. Two days before the Chat GPT 4.0 demo was released, Altman contacted Johansson's agent asking that Scarlett reconsider. Now, also sometime before the Chat GPT demo was released, Sam Altman tweeted, “Her”, which seems to point to the 2013 movie where Scarlett Johansson voiced a Siri-like AI assistant. Now, apparently, before the two could connect, the Chat GPT demo was released, and Scarlett began getting calls and emails from friends and family who thought that the Chat GPT voice, Sky, was her. Altman claims that the voice of Sky is that of a voice actor who was hired before he contacted Scarlett Johansson's agent.



     

    Jamie

    Thanks, Scott. I think that sums up the facts. That's far, fairly well. Let's now talk about the type of claims that Johansson could bring. I think the first logical step is a right of publicity claim.



     

    Scott

    Yeah, I agree with you, Jamie.



     

    Jamie

    California's right of publicity statute is Civil Code Section 3344 and prohibits the use of another's name, voice, photograph, or likeness on or in products, merchandise, or goods, or for purposes of advertising or selling, such products, merchandise, goods, or goods without such person's prior consent. California also has a common law right of publicity that's a bit broader than the statute. If Johansson did bring a case, it would follow some of the soundalike recording cases that the Ninth Circuit has previously adjudicated.



     

    Scott

    Yeah, that's right. The first was Midler versus Ford, and the second was Tom Waits versus Frito-Lay. Both of those cases involved the use of a soundalike singer singing a song in ...

    • 10 min

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