Charlie Nelson Keever writes:

The Supreme Court ruled this morning that a federal law that prohibits the government from registering trademarks that “disparage” others violates the First Amendment.

Members of an Asian-American rock band filed a lawsuit after the U.S. Patent and Trademark Office (PTO) kept the band from registering its name, The Slants, a reference to the derisive slur sometimes wielded against Asian-Americans. The PTO said the name was likely to denigrate a significant number of Asian-Americans in violation of the Lanham Act, which prohibits any trademark that could “disparage … or bring … into contempt[t] or disrepute” any “persons, living or dead.”

Rock star cartoon
Copyright: kennykiernanillustration / 123RF Stock Photo

The band’s founder, Simon Tam, said the point of the band’s name is just the opposite. “[Growing up] the notion of having slanted eyes was always considered a negative thing… Kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.”

The Supreme Court sided with The Slants.

“The disparagement clause violates the First Amendment’s Free Speech Clause,” Justice Samuel Alito wrote in his opinion for the court. “Contrary to the Government’s contention, trademarks are private, not government speech.” Alito noted that the government “still has an interest in preventing speech expressing ideas that offend,” but suggested the “disparagement clause” was overly broad.

This case could have a broad impact on how the First Amendment will be applied in other trademark cases. In 2014, the PTO canceled the Washington Redskins’ trademarks, finding the term “Redskins” disparages Native Americans under the same statutory clause that was quashed by the Supreme Court today. The team is calling today’s ruling a win. Redskins attorney Lisa Blatt said in a statement, “The Supreme Court vindicated the team’s position that the First Amendment blocks the government from denying or cancelling a trademark registration based on the government’s opinion.” The Redskins’ case has been on hold in the U.S. Court of Appeals for the 4th Circuit in Richmond, pending today’s decision.

Charlie Nelson Keever is a summer associate in the firm’s Los Angeles office.

Sugar Hero Video Screenshot
SugarHero Video Screenshot

The Food Network is snowed in controversy after popular food blogger, baker and CSO (“Chief Sugar Officer”) of the recipe site Elizabeth LaBau filed for copyright infringement this month alleging the network copied her video tutorial on how to create “snow globe cupcakes.”

LaBau first published the recipe in 2014 and experienced so much acclaim that she posted a one-minute video tutorial to her site last December, which accumulated approximately 5.7 million views on Facebook to date.  The video describes step-by-step how to coat small balloons in sheets of gelatin.  The gelatin hardens overnight into translucent domes which are then placed on top of a regular cupcake frosted with vanilla buttercream and coconut shavings to complete a delectable winter wonderland.

LaBau alleges that three weeks after she posted her video, the Food Network released a similar video on its Facebook page and rebuffed LaBau’s requests for attribution. Although mere lists of ingredients are not protected under copyright law, a video that describes, illustrates or explains a recipe could qualify for protection.  As a result, LaBau’s complaint focuses solely on her video and contends it was willfully copied “shot-for-shot” featuring the same camera angles, colors, lighting, text, and other elements.  The Food Network’s video attracted approximately 125,000 likes and 11 million views.

LaBau seeks monetary damages for lost profits, emotional distress and an injunction prohibiting the Food Network from further dissemination of its video.  The Food Network has yet to publish an official response.

Copyright: ratru / 123RF Stock Photo

We reported previously that LA City Attorney Mike Feuer had brought misdemeanor criminal charges against five casting workshops and 25 individuals under the Krekorian Talent Scam Prevention Act. Feuer alleged that the workshops–purportedly for training actors in audition techniques–were actually pay-to-play schemes in which aspiring thespians would pay for the opportunity to be seen by casting directors.

On June 5, one of the accused, Bradley Sachs, pleaded no contest to the charges. He was placed on 36 months summary probation and sentenced to serve either 10 days in jail or perform 150 hours of community service. He also agreed to pay investigative costs, and not to be involved in any talent training service until completion of his probation. Sachs’ company, The Actors Alley, shut down when the charges were first announced.

Although it had previously expressed support for the defendants, the Casting Society of America declined to make a statement on Sachs’ plea on the grounds that he is not a CSA member.

Copyright: jagcz / 123RF Stock Photo
Copyright: jagcz / 123RF Stock Photo

The Walt Disney Company claims there was no monkey business in creating the Oscar-winning animation film Zootopia and has moved to dismiss writer Gary L. Goldman’s lawsuit for copyright infringement.  Goldman, an author whose credits include Total Recall, Next and Minority Report, filed suit in March and alleges that Disney copied the themes, settings, plot, characters and dialogue of Goldman’s live action film and television series titled Looney which Goldman pitched to Disney in 2009.  Goldman also claims Disney’s purported exploitation of Goldman’s work constitutes unfair competition and breached an implied contract with Goldman that any story ideas or components submitted to Disney would remain confidential.

Goldman alleges that he is no stranger to Disney.  According to Goldman, in 2007, he was hired by Disney to write a screenplay for a Marvel project then known as Blaze.  Goldman claims that Disney executive Brigham Taylor oversaw this assignment and also received Goldman’s subsequent pitch of Looney in 2009 at which Goldman says he orally presented the themes, plot, settings, synopsis, and provided copies of character descriptions and illustrations for the proposed franchise.  Goldman asserts that Taylor at first reportedly demonstrated interest in Looney, but Disney ultimately declined the project.  Goldman now alleges Disney copied his work in the 2016 blockbuster Zootopia.

In response, Disney told the Hollywood Reporter the lawsuit is an “unprincipled attempt to lay claim to a successful film [Goldman] didn’t create.”  Specifically, Disney says the components and characters of Zootopia bear little similarity to Looney.  For example, Zootopia’s female lead character is a rabbit named Judy Hopps dressed as a police officer, whereas Goldman pitched a naked squirrel named Mimi.  Additionally, the male lead of Zootopia is a fox named Nick Wilde who wears a green dress shirt and tie, while Goldman’s male lead is a clothesless hyena named Roscoe.

On a broader note, Disney argues the differences between Looney and Zootopia are self-evident.  Looney is a live action work featuring a human protagonist who creates a cartoon world of animals while Zootopia is a wholly fictional world solely populated by animals.  Additionally, Zootopia’s dialogue runs approximately two hours yet Goldman could only identify one sentence of Zootopia that matches the dialogue in Looney.  Finally, Disney noted Goldman’s failure to attach a copy of Looney’s synopsis, treatment or copyright application to his complaint, essentially foreclosing the court’s ability to conduct a side-by-side comparison of the works.

Goldman seeks to enjoin Disney from producing derivative works based on Zootopia, including further display and distribution of the film.  Goldman also seeks actual and punitive damages.  Given that Zootopia reportedly grossed over a billion dollars at box offices worldwide, it seems unlikely that Goldman will settle on the cheap if his complaint survives dismissal.

Copyright: buzzfuss / 123RF Stock Photo
Copyright: buzzfuss / 123RF Stock Photo

TBS comedian and late-night talk show host Conan O’Brien was given good reason to frown Monday when a federal judge denied summary judgment as to three of the five jokes comedy writer Alex Kaseberg claims O’Brien and his writing team stole from Kaseberg’s Twitter feed between December 2014 and June 2015. The three jokes left standing: a gag about New England Patriots’ quarterback Tom Brady giving Seattle Seahawks coach Pete Carroll the new car Brady promised to award the MVP of Superbowl XLIX, a jeer about a hypothetical street named after Bruce Jenner (i.e., “cul-de-sacless”), and a discovery that the Washington Monument is ten inches shorter than previously recorded because of “shrinkage” resulting from cold weather.

As we previously reported, O’Brien filed for summary judgment in February arguing the jokes were created independently of Kaseberg’s tweets and derive from current events and common themes of life.  Judge Janis Sammartino agreed the jokes contain inherent newsworthiness and therefore carry “thin” copyright protection where proof of infringement requires verbatim plagiarism.  The court also found the other two jokes poking fun at the N.Y. Jets and Delta Airlines were independently created and/or too different to withstand summary judgment.  However, with respect to the other three jeers, Judge Sammartino found the material issue of whether O’Brien and his team had access to Kasberg’s Twitter feed and whether O’Brien’s jokes are substantially similar to Kasberg’s Twitter content remain disputed.

The defeat leaves O’Brien with the choice of settlement or trial.  Although copyright infringement suits between comics rarely come before a jury, given O’Brien’s caustic deposition testimony where he declares “accusing a comedian of stealing a joke is the worst thing you can accuse them of… short of murder,” the future of this case remains uncertain.

The upfront selling season is when broadcast networks sell the majority of their advertising inventory. That season kicks off this week as the networks present their fall schedules to advertisers in lavishly staged events. The networks have been losing viewers to online platforms steadily for years, particularly younger viewers in the coveted 18-49 demographic. Ad revenues have been slower to decline, but there is understandable concern that the loss will accelerate in response to increasingly dramatic ratings erosion. The buzz this year is that the networks are fighting back with strategies to retain those ad dollars.

Copyright: scanrail / 123RF Stock Photo
Copyright: scanrail / 123RF Stock Photo

First of all, the broadcasters are pointing out to the brands that online media are not always the most congenial platforms for their advertisements. Ads are placed on digital platforms primarily by automated programs, not humans. This has resulted in ads appearing next to content antithetical to a brand’s message, including videos promoting terrorism. Television spots, on the other hand, run alongside known content, produced to be advertiser-friendly.

The networks are also hoping to blunt one of the most powerful weapons in the arsenal of digital platforms: data. Television viewer data has been limited in the past to broad categories of age and gender. Using information available from cable and satellite providers, social media and other sources, the networks are offering much more detailed portraits of their viewership, enabling advertisers to target ad buys with greater precision.

Another growing trend is to schedule live event programs, such as last year’s Hairspray Live! These shows can generate a lot of publicity and excitement. Equally important, viewers can’t skip ads when watching TV live . For these reasons, NBC has announced plans to air Jesus Christ Superstar Live! next Easter, Fox is planning live broadcasts of Rent and A Christmas Story and ABC is reviving American Idol.

Some say these are rearguard actions against the inevitable decline of broadcast television in the new convergent universe. The broadcast networks are doing their best to prove the naysayers wrong.

Copyright: <a href='//'>olegdudko / 123RF Stock Photo</a>
43756518 – hotel.

The iconic American rock band The Eagles released its platinum album “Hotel California” in December of 1976.  It sold more than 32 million copies worldwide and its title track “Hotel California” achieved legendary status.  Over four decades later, it appears the “lovely place” on a “dark desert highway” might actually exist, but not how the band envisioned.

The Eagles launched a trademark infringement action last Monday against a small hotel in Todos Santos, Mexico with a familiar name – Hotel California.  Described on its website as a “sub-tropical oasis” just 45 minutes outside Cabo San Lucas, Hotel California was founded in 1948, when the Eagles were just toddlers.  The hotel was later named “Todos Santos Hotel” and underwent numerous transitions in ownership concluding with current owners John and Debbie Stewart, a Canadian couple who bought the establishment in 2001.  Thereafter, the hotel’s original name was restored allegedly to deceive guests into associating the property with The Eagles.

In its complaint, the band cites as evidence of infringement the hotel’s Eagles-themed lobby music and gift shop merchandise bearing the brand “Legendary.”  The Eagles also identify numerous customer reviews which indicate that guests routinely perceive an affiliation between the hotel and The Eagles.  The hotel appears to reinforce this perception by listing on its website a series of “coincidences” wedding the hotel to the world-famous song.  For instance, the website advertises that Hotel California sits near a “long desert highway,” neighbors a mission church with bells heard daily, hosts “ghosts and spirits” in the courtyard, and previously accommodated guests who smoked “colitas” (a slang term for joint) during the 1960s and 70s.

In response, The Eagles are flexing their talons.  The band seeks injunctive relief, actual damages, profits, and punitive damages against the hotel (and maybe a complimentary colita).

Netflix handed a pleasant surprise to Hollywood when in announced that it is committing to spend its $6 billion annual budget for original productions in California rather than chasing tax incentives in other states and countries. Ted Sarandos, Nexflix’s chief content officer, explained the decision this way.  “[It’s] very

Smart TV
Copyright: scanrail / 123RF Stock Photo

tough on families and eventually it grinds on the talent,” he said. “Shooting in LA is an investment in the quality of the show.”

Encouraging as this may be, it shouldn’t be viewed as the leading edge of a trend. The Netflix business model is very different from other content providers. It’s proved itself willing to spend whatever it takes to establish an insurmountable subscriber lead to head off growing competition from other subscription services, and it’s willing to accept lower profits to accomplish this goal. The commitment to LA production will make it that much easier to attract A-list talent who will appreciate working close to home.


Copyright: studiostoks / 123RF Stock Photo

Hollywood is on pins and needles at the prospect of a Writers Guild of America (WGA) walkout, which could occur as early as May 2. On April 24, the Guild announced that a strike authorization vote had passed with 96% support. Although the vote is largely symbolic–a second vote would be required to begin an actual strike–it succeeded in sending the message that writers are ready and willing to take that next step.

The last writers’ strike, in 2007-08, lasted 100 days and created severe hardships throughout the industry, although the WGA claims the strike was ultimately a win for its members. The threat of another strike has created an atmosphere of mild panic as studios rush to close deals and stockpile scripts. Although many insiders express optimism that a walkout can be averted, the consensus is that this is too close to call.

There are three critical issues on the table as negotiations enter their home stretch.

  • Compensation: The WGA asserts that average writers’ earnings have been going down despite the explosion of “peak TV.” Staff writers are paid on an episodic basis. Wage scales were historically set on the expectation that a typical television season would comprise 22 episodes. While this may still be the case on broadcast TV, most shows on cable and streaming services have seasons of 12 episodes or fewer. Yet despite this cutback, the exclusivity provisions in writers’ contracts prohibit them from finding other work during hiatus periods.
  • Pension & Health: This Guild made this less of a priority in previous negotiations. As a result, it predicts that the Pension & Health Plans will be out of money by 2020. The shortfall is exacerbated by an aging membership and the overall decline in compensation. The Guild is looking for a big boost in contributions from employers in order to shore up the plans.
  • Streaming Residuals: Budgets for series on subscription streaming services such as Netflix and Amazon are frequently higher than those for broadcast television, but the residuals structure is much less favorable. The Directors Guild reached a deal in December that tripled residual payments from such services, so the studios and networks clearly have room to move on this issue. It’s an open question, however, whether the concessions they are prepared to make will be adequate to the writers’ particular needs.

We will know very shortly whether the industry is facing another shutdown. Meanwhile, dust off those unscripted projects.

This week provided yet another reminder to entertainment law practitioners that there is still plenty of work to do even after your clients pass away.  On Wednesday, April 19th, 2017 the U.S. District Court in Minnesota issued a temporary restraining order blocking the digital release of a six-song EP entitled “Deliverance” by Prince, who passed away one year ago this week.

The EP was to be released by George Ian Boxill, through independent record label, Rogue Music Alliance, and contains all previously unreleased songs.  Boxill was a collaborator with Prince, and producer on the EP songs.  Prince’s estate alleges that Boxill violated the terms of a confidentiality agreement with the late singer, which conveyed all rights to the materials they created exclusively to Prince, and provided that Boxill would not use the recordings in any manner.

Boxill and most Prince fans would argue Prince would have wanted to share these unreleased recordings with his fans.  However, given the propensity of Prince to demand control and exclusivity over his work, brand, and persona while he was alive, it should not be a surprise that his estate continues to seek protection of those rights after his death.  This is notwithstanding likely financial benefits from the sale of this work. We are all aware of Prince’s so-called “vault” of recordings, but so long as his estate maintains his protectionist views over his body of work, we may never hear the fruits of his labor.  There is no obligation under copyright law that requires copyright holders to exploit their works, even if there is a high demand for it.

The temporary restraining order on the Deliverance EP expires on May 3, 2017, unless the District Court grants an extension.  Only time will tell if we can purchase an EP copy before it goes back into the “vault.”