it’s hard to get rid of a foreign TM owner’s complaint at the motion to dismiss stage despite territoriality

Posted on September 4, 2026 by rtushnet

Honest Greens Barcelona, S.A.U. v. Poky’s LLC, 2026 WL
2593358, No. 4:24-cv-07023-JD (D.S.C. Sept. 2, 2026)

Honest Greens operates restaurants in Spain and Portugal
under the HONEST GREENS name and related marks; it owns registrations for
HONEST GREENS in several foreign jurisdictions, and allegedly developed
substantial goodwill through restaurant operations, advertising, digital
platforms, and social media. It also alleged “substantial contact with United
States consumers” by selling meals to customers from the US. It also alleged
that it marketed its services to United States consumers; received tens of
thousands of visits to honestgreens.com from United States IP addresses; since
2021, has attributed at least seven percent of its sales to customers using
United States-based credit cards; identified more than 36,000 United
States-based users who have downloaded its mobile app; and has approximately
8,000 United States-based users following its HONEST GREENS Instagram account. The
app permits users, including travelers in the United States, to place an order
in advance for collection at one of HG’s European restaurants.

Poky’s allegedly uses the domain name <honestgreens.us>,
a website, a mobile application, and the Instagram username HONESTGREENS.US to
promote a Myrtle Beach restaurant operating under the HONEST GREENS name. The
complaint alleged consumer confusion, including a message asking, “Same menu as
honest greens abroad?” and another reporting, “I’ve placed this order but it
got sent to the wrong location in Myrtle Beach.”

For statutory standing, Poky’s noted that HG didn’t allege
that a consumer chose Poky’s Myrtle Beach restaurant instead of an Honest
Greens restaurant in Spain or Portugal, and that one or two instances of online
confusion are too isolated to establish a plausible causal connection with harm
to HG. This might be true later on, but at the pleading stage HG did enough. It
alleged a US-facing commercial reputation as well as injury to that reputation
from the allegedly confusing restaurants, which sufficed for proximate
causation.

Although Belmora cautioned that “[a] few isolated
consumers” who merely confuse a domestic mark with one seen abroad, without
additional misleading conduct, would rarely state a viable claim,” HG alleged
additional conduct including use of the .us domain when HG’s identical .com
domain was unavailable for the same general category of restaurant services and
an alleged specific intent to deceive consumers as to source or sponsorship. “Whether
Plaintiff can prove intentional copying, meaningful United States goodwill, or
material confusion is a later question.”

Poky’s also argued that, without US restaurants, HG could obtain
neither an injunction (Dawn Donut) nor damages. True, the relevant cases
make geographic market separation “highly relevant, particularly to likelihood
of confusion and territorial injunctive relief, but they do not establish the
categorical rule Defendant proposes.” Again, a motion to dismiss did not
determine whether the evidence could ultimately show “sufficient confusion,
market penetration, or reputational injury.”

However, because false advertising requires more evidence
than trademark infringement, the false advertising claim failed. The complaint
didn’t identify a false or misleading statement of fact or a misrepresentation
of a specific characteristic or quality, nor did it allege materiality. 

An ACPA claim over the domain name also survived because the
complaint plausibly alleged a bad faith intent to profit. At this stage, it was
enough to allege Poky’s knowledge of the mark, intent to infringe, and
confusing similarity, even though Poky’s use of the domain name to operate a
real restaurant “may be relevant to the totality of the circumstances and to
Poky’s contention that it is a legitimate concurrent user.”  “[T]he pleaded consumer diversion facts, not
mere knowledge of the .com domain or similarity of names, are what permit the
ACPA theory to survive at the pleading stage. Whether the proof ultimately
shows only ordinary infringement rather than cybersquatting remains for the
developed record.”

And HG didn’t need to plead a South Carolina registration to
bring common-law claims.

from Blogger https://tushnet.blogspot.com/2026/09/its-hard-to-get-rid-of-foreign-tm.html

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dct strikes down California’s new recyclability law on vagueness/1A grounds

Posted on September 2, 2026 by rtushnet

California League of Food Producers v. Bonta, 2026 WL
2055589, No. 3:26-cv-01675-WQH-BLM (S.D. Cal. Jul. 14, 2026)

Trade associations challenged a California law about
recyclability claims; the court found it unconstitutionally vague and also
unconstitutional under Central Hudson. Basically, the law provided that
using a recycling symbol would be deemed deceptive or misleading “unless the
product or packaging is considered recyclable pursuant to statewide
recyclability criteria and is of a material type and form that routinely
becomes feedstock used in the production of new products or packaging.” Something
would be deemed recyclable if it was collected by jurisdictions including least
60 percent of the population of the state and processed by facilities that
serve 60 percent of recycling programs statewide. But the standards for “routinely
becoming feedstock” and other key terms were too vague, even for an economic
regulation; there was no scienter requirement to mitigate its harshness. The
state’s own reporting disclaimed comprehensiveness. Defining a consumer good as
“recyclable” if it can be “conveniently recycled” in California counties with
more than 300,000 people offered no guidance as to what recycling programs
satisfy the “conveniently recycled” requirement. Reference to outside guidance
like the Basel Convention also wasn’t specific enough to provide guidance.

Reference to the APR Design Guide for plastic packaging “does
not correspond to other language in the statute because a product or package
design that is ‘detrimental to recycling’ or ‘needs improvement’ may reasonably
be understood as precluding recycling of that material”—or not. “Constitutional
concerns regarding fair notice and standardless enforcement are heightened here
because, under California law, the APR Design Guide provision may be enforced
by private individuals and local governmental actors and may result in criminal
sanctions.” Plus, the Guide described itself as “dynamic” and subject to change
as “packaging technologies evolve.” “Manufacturers are left without statutory
guidance not only as to whether their compliance will be measured at the time
of design, manufacture, or sale of their packaging, but also without reliable
information regarding which version of the APR Design Guide will apply. The
record indicates that the APR Design Guide has been repeatedly revised after
the enactment of [the new law].” Even if the date of design was key, there was
vagueness in determining when a package was “designed.”

Similarly, requirements that “plastic products and
non-plastic products and packaging” must be “designed to ensure recyclability
and [must] not include any components, inks, adhesives, or labels that prevent
the recyclability of the product or packaging” were too vague. Determining what
“prevented” recyclability requires consideration of not only recycling
technologies, but also whether it is “economically feasible” for recycling
facilities to ultimately process those materials into feedstock. The court
severed all the challenged provisions.

Unsurprisingly, then, the Central Hudson challenge
also succeeded. The law directly regulated commercial speech: “environmental
marketing claim[s], whether explicit or implied” related to products and
packaging.

The legislature couldn’t just declare use of recyclability
claims inconsistent with the government’s definition of recyclability to be
inherently misleading. [Now do gas mileage calculations.] In the context of recyclability,
where there were a lot of variables about local practices, the term was only
potentially misleading, not inherently misleading.

California identified two primary government interests:
reducing consumer confusion and improving recycling rates. These were
substantial.

Did the regulation directly advance those interests? “To
satisfy its burden, California must provide evidence establishing that the
harms it recites are real and that its speech restriction will significantly
alleviate those harms.” However, this does not “require that ‘empirical data
come … accompanied by a surfeit of background information … We have
permitted litigants to justify speech restrictions by reference to studies and
anecdotes pertaining to different locales altogether, or even, in a case
applying strict scrutiny, to justify restrictions based solely on history,
consensus, and ‘simple common sense.’ ”

Under Ninth Circuit precedent,

[A] state can invoke ‘common sense’
only if the connection between the law restricting speech and the government
goal is so direct and obvious that offering evidence would seem almost
gratuitous. But as the government’s justifications for a regulation become more
attenuated, bare appeals to common sense quickly veer into impermissible
speculation. In such cases, the state needs to provide evidence to substantiate
that its law will meaningfully further its stated objectives.

Plaintiffs argued that uncertainty would chill recycling
claims, contrary to the state’s objective. California responded that it was
trying to address a different problem: “cross-contamination in recycling
streams, which makes recycling less effective.” This process “weakens the
recyclables market” by increasing the cost to reclaim materials and reducing
the value of contaminated “plastic lots.” But the record didn’t support the
government’s position that enforcement would reduce the total amount of
material that is deposited into landfills.

The evidence showed that “California faces serious
difficulties in efficiently recycling consumer products and packaging, at least
with respect to those made of plastic.” And there was evidence that “consumers’
attempts to recycle materials, especially plastic bags, are detrimental to the
recycling process because—as a matter of practice—recycling facilities are
unable to process these materials and turn them into feedstock that can become
new products and packaging.” Thus, “elimination of contaminated materials from
recycling streams would benefit the operations of recycling facilities and
result in a greater portion of their collected materials being turned into
feedstock. But the evidence in the record indicates that … this benefit to
recycling facilities would come at the cost of increasing the amount of
materials placed in landfills.” Plaintiffs submitted declarations from members
stating that the law would require them to omit truthful statements regarding
recyclability from their products and packaging, which will result in materials
that would otherwise be recycled going to a landfill. California conceded that
this would be a short-term effect, but argued that manufacturers would respond
by redesigning; this was speculative given manufacturers’ declarations that
instead recycling claims would be omitted entirely. “While these declarations
are self-serving, Defendant offers no evidence to counter them.”

What about consumer confusion? Plaintiffs argued that
consumers would be deprived of “accurate, qualified recycling instructions” for
products and packaging that are capable of being recycled. True, there was
evidence that consumers lack adequate information about which products to
recycle. And the court assumed that “consumers read and consider recyclability
claims on products and packaging during their purchasing decisions and at the
time that they discard the products and packaging.” But the record was conflicting
on whether the law would improve accuracy. Presumably, standardizing the
requirements would “facilitate California consumers’ ability to trust that, if
a product or package is labelled as recyclable, it will be recycled and turned
into feedstock if they place it in the appropriate bin.” And information about
recyclability is presumably difficult for consumers to obtain without relying
on manufacturers’ representations. But there was also evidence that
manufacturers would forgo some recyclability claims, leaving consumers with
less information, including “truthful and genuinely helpful information, such
as a listing of which areas accept the product or package for recycling and
which do not.” [Do such packages with lists actually exist?] And the law “would
still leave consumers in dark about whether a package or product marked as
recyclable is genuinely recyclable in the consumers’ area—i.e., whether the
consumer is in the portion of the state (which can be up to 40%) which does not
accept the material for recycling.” Ultimately, the consumer understanding
claims were too speculative to support the law.

It followed that narrow tailoring was also not present.  The law failed to leave “breathing room for
manufacturers to provide qualified information about their products and
packaging,” such as “[n]ot recyclable in most areas; check locally” or a QR
code on the packaging with “details regarding the product’s recyclability.”
This meant that the provisions of the law that survived vagueness did not
survive Central Hudson.

from Blogger https://tushnet.blogspot.com/2026/09/dct-strikes-down-californias-new.html

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look, there’s a lawsuit: bad claim against comedian leads to anti-SLAPP award

Posted on August 31, 2026 by rtushnet

Morake v. Mwanyenyeka, No. 2:26-cv-02795-JLS-AS, 2026 WL
2548629 (C.D. Cal. Aug. 28, 2026)

Noted because, well, it’s an unusually bad claim. Morake is
the creator and original performer of “Nants’ingonyama bagithi Baba,” the
opening chant from Disney’s The Lion King. Mwanyenyeka is a “comedian and
content creator” who appeared on a podcast, where he asserted that
“Nants’ingonyama bagithi Baba” means “Look, there’s a lion. Oh my god” in the
Zulu language. This went viral, and he repeated the joke at various comedy
clubs. Morake alleged that this was false and that the true
translation of “Nants’ingonyama bagithi Baba” is “All hail the king, we all bow
in the presence of the king.”

Morake sued for violation of the Lanham Act, defamation,
trade libel, and tortious interference. Mwanyenyeka filed a motion to strike
under California’s anti-SLAPP law, and then Morake dropped all the state claims
in an amended complaint.

The amended complaint now argued false advertising and false
affiliation focused on Mwanyenyeka’s “online
storefront marketing an ‘It’s a Lion’ line of apparel and goods derived
from Plaintiff’s composition.” (Sighs in Dastar.)

Because this sequence showed that Mwanyenyeka was the
prevailing party on the state claims, the court awarded $39,560 in fees.

from Blogger https://tushnet.blogspot.com/2026/08/look-theres-lawsuit-bad-claim-against.html

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5th Circuit puts its own spin on the server test

Posted on August 28, 2026 by rtushnet

Emmerich Newspapers, Inc. v. Particle Media, Inc., No.
25-60550 (5th Cir. Aug. 27, 2026)

This is being reported as creating a split with the 9th
Circuit; I don’t think that’s right in practice. As far as I can tell, the 9th
Circuit says that public display is made by the server that transmits
the display, while the 5th Circuit says that public display is made by the
server that transmits the display. Plenty of good cites to the copyright
scholars’ amicus
brief that I filed and to the Restatement of Copyright.

The court of appeals also suggested that URLs could constitute CMI, though it recognized that this would often create not just expensive fact-finding but also a separate issue of intentional removal–intentionally removing URLs as a general practice, even if some might be CMI, doesn’t seem like it should trigger 1202, similar to the cases holding that stripping metadata from photos isn’t actionable even though metadata might sometimes have CMI in it. 

Overall, a good result (and I would have said that even without the repeated citations, promise!).

from Blogger https://tushnet.blogspot.com/2026/08/5th-circuit-puts-its-own-spin-on-server.html

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weak infringement case + bad litigation conduct = fee shift for anticompetitive suit over descriptive term

Posted on August 27, 2026 by rtushnet

BBK Tobacco & Foods LLP v. Central Coast Agriculture Inc.,
No. CV-19-05216-PHX-MTL, 2026 WL 2445019 (D. Ariz. Aug. 20, 2026)

Previously.
Although BBK forced Central Coast to an (expensive) trial on its very weak
infringement claims over the use of “raw” on smoking-related products, it is
now subject to a fee award. “[W]hen a company pushes flimsy legal arguments
with scorched-earth, win-at-any-expense litigation to bully its competitors
into submission,” it harms consumers by raising prices. “In about two hours,
after a two-week trial, the jury returned a verdict fully in favor of Central
Coast,” finding no infringement based on the shared word “raw.” “The jury’s
verdict makes perfect sense, since the trademarks have nothing else in common
other than this three-letter combination. Tellingly, BBK could not introduce a
single instance of actual customer confusion.”

But it took over seven years, plus a trip to the Ninth
Circuit and the aforementioned jury trial, to get there.

Central Coast (CCA) was the prevailing party because it is now
free to use its RAW GARDEN mark without the threat of an infringement suit by
BBK. Even though BBK succeeded in voiding CCA’s pending intent-to-use
applications, both parties were free to use the marks just as before, and
defeating CCA’s cancellation counterclaims left BBK’s registrations just as
they already stood. By contrast, “[h]ad BBK prevailed on the infringement
claims, CCA would have faced damages and an injunction against its Raw Garden
brand, and the defense verdict removed that exposure.” BBK’s successful defense
of CCA’s counterclaims didn’t make it a prevailing party, because CCA succeeded
on the infringement claims that drove the litigation.

Octane Fitness provides that “[a]n ‘exceptional’ case
is simply one that stands out from others with respect to the substantive
strength of a party’s litigating position (considering both the governing law
and the facts of the case) or the unreasonable manner in which the case was
litigated.”

BBK argued that the court of appeals, in reversing the initial
grant of summary judgment already found the Sleekcraft factors “evenly
matched or tip[ped] only slightly in favor of either party” and remanded for
trial, foreclosing any finding that its position was weak. But that’s not what
the court of appeals did—it said that likely confusion “is a factual question
ordinarily reserved for the trier of fact.” (See Sepehr Shahshahani’s useful Fact-Law
Confusion for why this is a silly thing to say.) The Ninth Circuit’s “evenly
matched” observation “established only that the question could not be resolved
on summary judgment … and, in any event, it described a summary judgment record
rather than the proof ultimately presented at trial.” Nor was the panel even
unanimous on that point.  

“And this Court, having presided over a two-week trial and
observed the evidence develop live before the jury, is well positioned to
assess the strength of the merits of BBK’s arguments.” The trial bore out all
the weaknesses in the central factors. For example, there was no evidence of actual
confusion, even though the RAW and Raw Garden brands had been sold in some of
the same California dispensaries together for more than five years. “The
absence of actual confusion over so lengthy a period of concurrent use in the
same market is itself powerful evidence that confusion is unlikely.”

Nor was this unclear to BBK until trial. At summary
judgment, the Court found the record “contain[ed] no evidence of actual
instances of confusion,” and that the relevant deposition testimony of BBK’s
founder was “uncorroborated and self-serving” and insufficient even to create a
triable issue, particularly because BBK’s own Rule 30(b)(6) witness was unaware
of any confusion. “That BBK could marshal no more than this, after years of
head-to-head sales in the same dispensaries, strongly indicates confusion was
not occurring.”

BBK’s affirmative confusion evidence came from a survey that
produced net confusion rates of roughly 11.9 percent. Rates in that range are
“not so high as to constitute persuasive evidence in favor of confusion,” and
“survey confusion numbers that go below 20% need to be carefully viewed against
the background of other evidence weighing for and against a conclusion of
likely confusion.” Weighed against the marks’ visual dissimilarity and the lack
of other evidence of confusion, the survey did not show that confusion was
“probable, not simply a possibility.”

Nor was BBK’s position on mark similarity justified. “Marks
must be compared as a whole and as they appear in the marketplace, rather than
by taking a deconstructionist view of the different components of the marks,
and across appearance, sound, and meaning.” Apart from the shared descriptive term
“raw,” the Court found the marks “visually…not similar” and possessed of
“significantly different commercial impressions,” such that “consumers could
readily distinguish between the parties’ products as they appear in the
marketplace”—a dissimilarity that “weigh[ed] strongly against a likelihood of
confusion.”

But this was not the sole reason to find exceptionality,
merely a factor weighing in favor of it.  [Comment: if we’re almost never going to allow
TM cases to be rejected at summary judgment, then a fee shift for pressing
ahead with an expensive trial despite clear weakness in the case is one of the
few remaining constraints on abusive litigation, and should be available even
in the absence of litigation misconduct. But that’s a worse solution than just
actually applying the summary judgment standard.] “The manner in which BBK
litigated this case supplies the additional showing that, combined with the
weakness of its proof, makes this case exceptional.”

Most significantly, BBK relied on a photograph of a
purported Raw Garden product bearing RAW-branded cones, and the Court
sanctioned BBK’s counsel under Rule 11 for advancing allegations about that
photograph “that counsel must have known were false.” There was no evidence
that BBK itself fabricated the photograph, but counsel had been repeatedly
warned was not genuine, “and a party’s counsel’s conduct is properly considered
in the exceptional-case analysis. Knowingly pressing fabricated evidence to
defeat summary judgment is the sort of conduct that makes a case stand out from
others.”

That wasn’t the end of it.

BBK introduced, both before and
during trial, late-disclosed evidence of supposed actual confusion that it had
never produced in discovery, including an affidavit dated years after the close
of fact discovery and testimony that roughly fifty people had approached [its
principal] expressing confusion. That testimony was at odds with BBK’s own
verified discovery responses, in which it had repeatedly denied awareness of
any actual confusion. A litigant’s reliance on confusion evidence it withheld
through discovery and sprang at trial supports an exceptional-case finding.

This litigation conduct reinforced the court’s conclusion
that BBK “pursued scorched-earth tactics aimed at securing exclusive rights to
the ordinary word ‘raw.’” The court noted “BBK’s broader litigation practice of
strong-arming other companies out of using the term.” It repeatedly threatened
and sued businesses that incorporated “raw” into their marks. “Trademark law
does not exist to let a single company annex a common, descriptive word and
wield costly infringement suits to keep competitors from using it.” Octane
Fitness allows the court to consider anticompetitive motive. “The trial
record indicates that part of BBK’s aim was to position itself to claim the ‘raw’
name for its own use as the cannabis market moves toward national legalization.”

CCA got over $2.5 million in fees, less than half of what it
requested. So BBK was still able to impose a lot of costs on it.

from Blogger https://tushnet.blogspot.com/2026/08/weak-infringement-case-bad-litigation.html

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use of (R) on goods for which mark is not registered might be literally false

Posted on August 27, 2026 by rtushnet

Southern Marsh Collection, LLC v. Dixie Decoys, LLC, 2026 WL
2431220, No. 24-00905-BAJ-EWD (M.D. La. Aug. 19, 2026)

This opinion deals only with defendant’s attempt to get
claims against its allegedly false use of the ® symbol dismissed; it is otherwise
a trademark and copyright infringement case. Southern Marsh sells a variety of
outdoor apparel and accessories using a duck-style logo; it has several
registrations for its trademarks, including the logo and the slogan “PRESERVE
THE TRADITION.” Dixie Decoys allegedly uses a registered mark for its outdoor
apparel that is confusingly similar to Southern Marsh’s, as well as “Preserve
the Sporting Tradition” and “Preserve Your Sporting Tradition,” which allegedly
infringes.

Southern Marsh duck
Decoy duck

These are really weak, anticompetitive claims, but the usual deference given to trademark claims here extends even to the false advertising claim based on misuse of the ® symbol, which is that Dixie Decoys does have a registration for the logo, but only for “Waterfowl hunting decoys.” Nonetheless it uses the ® symbol more broadly.

The court found that general allegations of harm to Southern Marsh’s reputation and goodwill sufficed to plead both standing and sufficient harm to survive a motion to dismiss. That is, let’s say, unusual in false advertising cases. I tell my students to tell, and challenge, “harm stories,” but other than reciting the word “harm,” there is no harm story here. People might believe that Dixie Decoys has a trademark registration for its logo for apparel and … what? True underpants gnomes reasoning here.

The court also rejected Dixie Decoys’ argument that the use wasn’t literally false because there was a registration. “Federal trademark registration is not totally untethered from the goods or services identified in the registration, as Dixie Decoys contends…. [G]iven that federal trademark registration rights are goods-specific, this Court similarly finds that Southern Marsh has plausibly alleged that Dixie Decoys’ use of the ® symbol next to the challenged marks on goods outside of the registration could be a literally false statement of fact.” Thus, no evidence of deception was required, and anyway Southern Marsh alleged that consumers were deceived, which was enough at the pleading stage. [Materiality?]

from Blogger https://tushnet.blogspot.com/2026/08/use-of-r-on-goods-for-which-mark-is-not.html

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Midjourney can’t force Disney to disclose the prompts it used that didn’t generate material in complaint

Posted on August 27, 2026 by rtushnet

Disney Enterprises, Inc. v. Midjourney, Inc., No. 2:25-cv-05275-JAK-AJR,
2026 WL 2055488 (C.D. Cal. Jun. 15, 2026)

This is what seems like a significant discovery dispute; I’m
not an evidence scholar, but there’s interaction with the fair use analysis
that copyright folks should attend to.

Plaintiffs sued Midjourney over its image and video
generation “diffusion models,” arguing that they infringed both by copying their
characters in training and by distributing copies of those characters in images
and videos to Midjourney subscribers.

Midjourney sought to compel plaintiffs to produce: “(1)
documents concerning their development, use of, and policies regarding
generative artificial intelligence (‘AI’) tools for image and video creation,
and (2) the complete set of Midjourney prompts and outputs that Plaintiffs (or
their agents) used” for the operative complaint. The court granted the request
in part for (1) but found (2) was privileged.

Plaintiffs objected to producing documents about third-party
datasets they used in connection with any AI tool and similar documents. They
agreed to produce nonprivileged responsive documents “sufficient to show
instances in which [Plaintiffs] authorized its employees or contractors to use
generative AI to generate images and/or video outputs intended for consumers,
featuring the asserted works.” As for the prompts, they agreed to produce
nonprivileged responsive documents “sufficient to identify the prompts used to
create the image[s] generated by Midjourney shown in the complaint and put at
issue in this action, and the side-by-side outputs contemporaneously generated
in response to such prompts,” but not the prompts that they didn’t choose to
include.

Midjourney argued that these discovery requests were
relevant to both its defense of fair use, as well as its equitable defense of
unclean hands.

Fair use: Midjourney argued that its requests bore on
multiple elements of fair use, including transformativeness. But the court didn’t
buy its argument that, “if Plaintiffs are developing and deploying diffusion
models (employing the same technology, training techniques, and public data as
Midjourney), that is a powerful concession that such models produce something
fundamentally new and useful—relevant evidence of the transformative nature of
that (and Midjourney’s) technology.” After all, Warhol says “the same
copying may be fair when used for one purpose but not another.” [But this would
be the same purpose, just a different user, no?] The SDNY has agreed that “the
relevant inquiry under the first fair use factor concerns a defendant’s use of
a plaintiff’s copyrighted material, not a downstream use of defendant’s
allegedly infringing material by a copyright-holder plaintiff.” In re OpenAI,
Inc., Copyright Infringement Litig., 800 F. Supp. 3d 602, 608 (S.D.N.Y. 2025). Likewise,
New York Times Co. v. Microsoft Corp., 757 F. Supp. 3d 594 (S.D.N.Y. 2024),
held that the fair-use factors “do not require a court to examine statements or
comments a copyright holder may have made about a defendant’s general industry,
whether the copyright holder has used tools in the defendant’s general
industry, whether the copyright holder has admitted that other uses of its
copyrights may or may not constitute fair use, or whether the copyright holder
has entered into business relationships with other entities in the defendant’s
industry.”

Public benefits (part of factor four after GvO): But GvO
“made clear” that balancing the public benefits against the losses to copyright
owners would not “always [be] relevant to the application of fair use,” and focused
on the consequences of Google’s copying, not anything that the plaintiff
(Oracle) did in its own business.

Nor was this evidence relevant to market harm. Relevant
discovery would include the loss to plaintiffs and how the challenged use might
“kill demand for the original,” as well as discovery directed to Midjourney concerning
the public benefits from the copying.

What about industry custom and practice? Wall Data Inc. v.
Los Angeles Cnty. Sheriff’s Dep’t, 447 F.3d 769, 778 (9th Cir. 2006), says that
courts “should bear in mind that fair use is appropriate where a reasonable
copyright owner would have consented to the use, i.e., where the custom or
public policy at the time would have defined the use as reasonable.” But that’s
dicta. [This is contrary to what one might have thought was happening two
decades ago.] Sure, “industry custom and practice may be relevant to the
analysis of fair use in a particular case,” but “courts consistently reject the
argument that ‘everybody else is doing it’ as a defense to copyright
infringement.” This is really about the (narrower) defense of unclean hands.

But the equitable defense of “unclean hands is recognized
only rarely, when the plaintiff’s transgression is of serious proportions and
relates directly to the subject mater of the infringement action.” Indeed, “the
alleged wrongdoing of the plaintiff does not bar relief unless the defendant
can show that he has personally been injured by the plaintiff’s conduct.”

Thus, plaintiffs’ development, use of, and policies
regarding generative AI were not relevant to the defense of unclean hands
because none of the discovery would establish inequitable conduct that is both
directly related to plaintiffs’ claims and injured Midjourney. [Other than through
preventing competition with this lawsuit.]

Still, the requested discovery was potentially relevant to
establishing: (1) the potential market for or value of the copyrighted work;
(2) industry custom and practice; and (3) the defense of unclean hands. But plaintiffs
agreed to produce documents sufficient to show their business plans, roadmaps,
research reports, other studies, and approvals of their actual or proposed
development or training of generative AI intended for consumers, including
their contractors’ authorized use of generative AI intended for consumers, as
well as documents about some related matters. That was enough. Documents
related to the actual or proposed development of generative AI not intended for
consumers were not relevant, or not enough to be proportional. However, the
court granted the motion to compel plaintiffs to also produce documents sufficient
to show plaintiffs’ approval of the use of generative AI to generate images
and/or video outputs intended for consumers, featuring the asserted works,
which is relevant to the market-harm factor.

Requests for training-related documents had some relevance
to establishing industry custom and practice, but had to be narrowed to focus
on actual or proposed development of generative AI intended for consumers. “By
contrast, Plaintiffs’ training of generative AI tools not intended for
consumers would not provide evidence of industry customs and practices that
would be relevant to Defendant’s defense of fair use,” or, if relevant, not enough
to justify the burden of production. Thus, plaintiffs needed to produce
non-privileged responsive documents sufficient to show their “development,
training, or contemplated development or training of any generative AI to
generate images and/or video outputs intended for consumers, featuring the
asserted works, including training datasets, datasources, or model weights.”

Midjourney prompts: Plaintiffs agreed to produce documents
sufficient to identify the prompts used to create the images generated by
Midjourney shown in the operative complaints, as well as the side-by-side
outputs contemporaneously generated in response to such prompts.

Midjourney argued that “withholding prompts and outputs
related to images not used in the operative complaints would allow Plaintiffs
to artificially inflate the universe of allegedly infringing outputs, distort
the damages calculus, or misrepresent their own engineered images as examples
of third-party infringement.” But “the volume of prompts and outputs related to
images generated for potential use in the operative complaints, but not
actually used, is infinitesimal compared to the true scope of this case which
involves tens of millions of subscriber prompts associated with Plaintiffs’
copyrighted works.” Given the current statistical sampling protocol that the
parties are finalizing, withholding the prompts wouldn’t distort a damages award.

The non-used prompts and outputs were protected work
product.  The work-product doctrine
protects “from discovery documents and tangible things prepared by a party or
his representative in anticipation of litigation.” This was “classic” pre-suit
investigation and efforts to prepare the operative complaints. Such unused prompts
and outputs were “core” work product because they necessarily reveal counsel’s
“mental impressions, conclusions, opinions, or legal theories developed in
anticipation of litigation.” This kind of opinion work product “is virtually
undiscoverable.” 

Midjourney argued that plaintiffs waived protection by
submitting prompts to Midjourney in the first place because Midjourney’s Terms
of Service make prompts and outputs public by default and grant Midjourney a
license to reproduce, prepare derivative works of, publicly display, publicly
perform, sublicense, and distribute their inputs. But “waiver of attorney
work-product protection requires more than the disclosure of confidential
information, it requires an act inconsistent with the adversary system.” Pre-suit
investigation was not inconsistent with the adversary system. Nothing stops
Midjourney from conducting its own investigation of prompts submitted by plaintiffs
and their counsel, though.

“Accepting Defendant’s view of selective disclosure would
virtually eliminate the protection for attorney work product in the context of
any court filing because every court filing inherently reflects strategic
choices of counsel in what facts to include and even what legal arguments to
make.”

Comment: If you believe, as many people seem to, that “how
hard was it to get the model to generate an allegedly infringing output?” is a
relevant question, then the rulings here make it harder to conduct that
inquiry. I’m no evidence expert, but the ruling seems to make
probabilistic/guardrails inquiries off-limits to fair use, which seems
directionally wrong to me. (Burden-shifting might help—one could say that if
the defendant puts in evidence that it tried to make it hard to generate
infringing outputs, then the plaintiff has to do more to show that those
guardrails didn’t work, which wouldn’t necessarily require disclosure of
attorney work product. This is my optimistic reading of the reference to the
millions of prompts at issue in this case.)

from Blogger https://tushnet.blogspot.com/2026/08/midjourney-cant-force-disney-to.html

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Private label brands show lack of exclusive use for Pedialyte’s trade dress claim, but bad social media use saves TM claim

Posted on August 27, 2026 by rtushnet

Abbott Laboratories v. Revitalyte LLC, 2026 WL 2374024, No.
23-1449 (DWF/DTS) (D. Minn. Apr. 30, 2026)

The court here allows part of Abbott’s infringement claim to
proceed, including against “compare to Pedialyte,” which I think is wrong,
though Revitalyte did other sketchy stuff that is less clearly comparative. It
rejects Abbott’s trade dress claim, in part because so many house brands have
the same or similar trade dress.

The parties compete in the market for oral electrolyte
solution (OES), drinks intended to relieve symptoms of dehydration. Pedialyte
now expands beyond the pediatric market and is now also sold to adults for
illness-and exercise-related dehydration; Abbott briefly advertised it as a
remedy for alcohol-related dehydration/hangover. Abbott dominates the OES
market with over half of the total sales in the category.

Three kinds of Pedialyte: regular, advanced and sport

It defined its claimed unregistered trade dress as:

the clear rectangular plastic
bottle; the bottle’s rounded corners; the placement and appearance of the two
ridges or “ribs” around the bottle’s circumference; the placement and
appearance of the bottle’s gently sloping shoulders; the bottle volume of roughly
one liter; the wrap-around label encircling the middle 50-60 percent of the
bottle with the name of the product prominently displayed horizontally; the
bright colors of the various Pedialyte flavors as visible above and below the
label; the color palette, size, and alignment of the wrap-around label; and the
size, color palette, and appearance of the shrink-wrapped screw-on.

Abbott claimed use since 1986, despite slight change in the
bottle specifications.

“[C]onsumer research showed that parents and doctors wanted
something non-breakable with the ability to see the fluid level. Abbott chose a
square bottle shape for the plastic container to mimic packaging from sterile
irrigation bottles; the medicinal feel communicated to parents that the product
was safe and trusted for medical purposes. Abbott also added the shrink-wrap
cap to show the consumer if the product had been tampered with.” [There’s more functionality evidence but it is irrelevant.]

Revitalyte targets young adults seeking relief from
alcohol-related dehydration. “The link with alcohol abuse and other off-color
themes is explicit in the company’s marketing. Its social media pages are rife
with references to excessive drinking, hangovers, and partying.”

In the original Revitalyte bottle, the shrink-wrapped cap
included the text “Compare to Pedialyte.” The back of the wrap-around label
included a disclaimer that Revitalyte was not associated with Pedialyte. Revitalyte
also partnered with Barstool Sports on Revitalyte Black Label. Revitalyte
initially used PBM Nutritionals as its manufacturer; PBM designed and supplied
the bottle itself (it didn’t offer different shapes), the placement of the
label, the shrink-wrapped cap, and the “Compare to Pedialyte” language. PBM had
a trademark registration for its “block shaped bottle.” “Revitalyte could have
further customized by removing the ‘Compare to Pedialyte’ on the shrink-wrapped
cap, but chose not to because it would have been more expensive.”

private label with “compare to Pedialyte” on cap

Since 2024,
Revitalyte has sold only 20-ounce products and no longer uses PBM as a manufacturer.

current bottle

Revitalyte’s admitted goal was to be an adult version of
Pedialyte— “the same product but purchased in the liquor store instead of
having to go to the baby aisle.” It used a square bottle to communicate that
the product was part of the OES category by matching the category leader. 

also three kinds of Revitalyte

Also:

Revitalyte’s marketing strategy has
leaned into the similarity with Pedialyte®. Revitalyte’s website said it was
the “same electrolyte formula found in the baby aisle.” Revitalyte’s website
also included screenshots of social media posts discussing Pedialyte® by name.
(Further, Revitalyte advertised its products using a comparison to Pedialyte®.)

This resulted in consumer confusion, e.g., a social media
post calling Revitalyte “Revitalyte by Pediatlyte.” Other posts called Revitalyte
Black Label Barstool’s version of Pedialyte (it’s not obvious to me that
reflects confusion, but the court thought so). Revitalyte didn’t shut down this
confusion. Instead, it shared those posts on its social media pages. This
proved to be a bad plan.

retweet of “Revitalyte is the adult version of Pedialyte”

Retweet of “barstool sports brand pedialyte”

similar

quote post of “like Pedialyte” (which should be fine)

Pedialyte tagged as producer of Revitalyte

Revitalyte used social media posts mentioning Pedialyte

Trade dress infringement: Abbott failed to show that its
trade dress was protectable. It had no direct evidence of secondary meaning. “Given
that Abbott did commission an expert on a related issue, that omission is
telling.” Instead, it relied on its advertising and sales; proof of Revitalyte’s
intent to copy; and instances of actual confusion by consumers.

If “advertising promote[s] the product’s functions and
appearance, not its source,” then advertising expenditures are not probative. The
ads in the record focused on function, e.g., the resealable cap, ability to
pour and measure, and visibility of the liquid touted as “conveniences” to
parents.

Similarly, sales are probative of secondary meaning only if
they can be traced to the use of the claimed trade dress. Abbott’s “sales are
impressive, but there is no indication that the trade dress specifically was
responsible.”

Intentional copying can indicate secondary meaning, but “when
a defendant clearly labels its products with its own trademark, the inference
of secondary meaning is rebutted.” The Revitalyte trademark was used
conspicuously on the bottle and Revitalyte used an express disclaimer. The
evidence suggested an intent to compete, which wasn’t sufficient to establish
secondary meaning.

Consumer confusion can also be evidence of secondary meaning.
But here, its significance was  “refuted
by the ample evidence of third-party products with similar packaging because it
shows a lack of exclusive use. When there are similar components used among
various products, it is more difficult for a consumer to attribute that feature
to any one source.” The PTO told PBM , that the applied-for mark was not
inherently distinctive because “it is a common practice in the industry to
market electrolyte replacement solutions … [in] bottles with narrow necks
that slope down to straight sides.”

Even more telling, the Pedialyte®
bottle design was based off medical irrigation bottles. Any claim that the
bottle’s features are indicative of only one source is belied by the fact that
the bottle design was initially copied from a different type of product. The
ubiquity of the square bottle shape in the OES market and in medical packaging
suggests that it cannot be attributed to a single source in the minds of
consumers.

Abbott argued that the third-party products were “private
label brands,” less likely to confuse consumers. Its evidence here is sealed
(grrr) but its consumer expert opined that, because Revitalyte is “branded,”
that’s more likely to be confusing. “But regardless of whether consumers think
Revitalyte® is a private label or national brand, the market is still saturated”
(citing Versa Prods. Co. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 216 (3d Cir.
1995) (“The use of private labelling undermines a claim that a product’s
appearance denotes its source, because consumers will be less likely to
associate the multifariously labeled product with a single source.”)). Thus, Abbott
couldn’t show the exclusive use of the trade dress required to establish
secondary meaning.

After all that, “Compare to Pedialyte”—the most standard
comparative message there is—kept Revitalyte in trouble, along with its hinky
social media. The court noted that defendant didn’t provide much in the way of
argument on trademark infringement, making it hesitant to grant summary
judgment.

The various factors could support a finding either way: The
products are similar (thus, “compare”). The different target audiences and
different retail locations cut against likelihood of confusion. There was “ample
evidence of Revitalyte’s intent to align with the Pedialyte® name, even
purposely rhyming with Pedialyte®, which indicates an intent to ‘pass off’
Revitalyte® as part of Abbott.” But Revitalyte’s use of “compare to” and its
own branding indicated an intent to differentiate (ciating Conopco, Inc. v. May
Dep’t Stores Co., 46 F.3d 1556, 1571 (Fed. Cir. 1994) (finding that a “compare”
statement “draws a clear distinction” between products)). Thus, there was a
material question of fact on likely confusion.

[Now, how do we segregate the confusion evidence based on
name from that supposedly based on shape/trade dress? There’s going to be a
causation problem. “Compare to” isn’t likely to cause confusion, but the online
behavior much more plausibly is. But that wasn’t clearly based on the name
itself, where the overlap in suffix “lyte” has a pretty descriptive meaning. If
anything, the strongest claim is false association under 43(a) based on the online
conduct, not even really trademark infringement as such.]

Trademark dilution: Revitalyte conceded the fame of
Pedialyte. “The textbook example of trademark dilution by tarnishment is the
association of a mark with an unsavory context. Revitalyte readily associates
its brand with alcohol abuse and uses a crude advertising approach.” Thus, a
fact finder could find tarnishment of Pedialyte, “a product centered on health
and, often, children’s health specifically.” But Abbott did, at one point,
advertise it as a cure for hangovers, so Abbott’s own attempts to identify with
that market would justify a finding that associations with alcohol are not a
tarnishment to the brand.  

Revitalyte briefly argued that the use of the “compare to”
statement mitigates any risk of reputational harm because consumers know they
are separate products. True, comparative advertising is exempted from dilution
claims.

But, making up something that isn’t in the dilution provision,
“the comparative advertisement exception only applies if the user does not do
anything to suggest sponsorship or endorsement.” [So apparently the jury can
only find dilution by tarnishment if it also finds confusion? Cool with me, I
suppose.] And here,

Revitalyte’s attempts to align with
Pedialyte® go far beyond a mere “Compare to Pedialyte” statement on the bottle.
There are multiple documented examples of Revitalyte reposting social media
posts that describe Revitalyte® as owned by Pedialyte® and Revitalyte did not
correct that factual error. In some of those posts, there is either no Revitalyte®
bottle or no shrink-wrapped seal, so the comparative language is not present to
clarify the lack of a relationship. Those advertisements suggest sponsorship by
Pedialyte®, which distinguishes this case from those which allow comparative
use.

I hate to borrow a bit from copyright law, but this might be
better addressed by a use by use analysis. Under no circumstances should the (not
misleading) statement “compare to Pedialyte” ever constitute dilution or be
enjoined. But the other uses weren’t comparative advertising and weren’t
eligible for that exception.

Abbott also moved to preclude Revitalyte’s rebuttal expert
on the “private label” point above. “[R]ebuttal evidence may be used to
challenge the evidence or theory of an opponent—and not to establish a
case-in-chief.” Id. A rebuttal expert “may only respond to evidence offered by
the defendant.”

Though we can’t see it, Abbott’s expert report analyzed
whether Revitalyte is better described as a private label brand or a national
brand by applying the “4Ps” framework: place, product, price, and promotion and
concluded that Revitalyte “exhibits the hallmarks of a national brand.” The
report further opined that, as a result of the positioning as a national brand,
a meaningful segment of consumers is likely to perceive that Revitalyte is
associated with Pedialyte. He didn’t conduct a survey.

The rebuttal report was about a confusion survey that
purportedly showed de minimis confusion between Pedialyte and Revitalyte
bottles. It didn’t address the issue of national brands versus private labels,
nor the 4Ps framework. “Even if using a different approach, [the] rebuttal
testimony must have engaged with the 4Ps framework or addressed the central
question of national brand versus private label.” Thus this report was
excluded.

Given that Abbott was seeking only disgorgement, Revitalyte
wasn’t entitled to a jury. [Disgorgement would nicely solve the obvious
causation problems, too.]

from Blogger https://tushnet.blogspot.com/2026/08/private-label-brands-show-lack-of.html

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9th Circuit orders class decertified: common issues on materiality/damages insufficient without deception

Posted on August 25, 2026 by rtushnet

Rusoff v. Happy Group, Inc., — F.4th —-, 2026 WL
2387098, No. 24-7706 (9th Cir. Aug. 17, 2026)

Court’s summary:

This is a deceptive advertising
class action concerning “pasture raised” labels on egg cartons. After excluding
the opinion of plaintiffs’ expert on egg industry standards, the district court
found that plaintiffs’ inability to demonstrate consumer deception on a
class-wide basis “precludes a finding of predominance” under Federal Rule of
Civil Procedure 23(b)(3). The court nonetheless certified the classes based on
assertedly common questions of materiality and damages. Because plaintiffs did
not meet the requirements of Rule 23(b)(3), we reverse the grant of class
certification.

USDA recognizes caged and cage free eggs; the latter has two
subcategories, organic and free range. USDA considers “free range,” “pasture
raised,” and certain similar terms to be synonymous. But there are a number of
other standards from associations and retailers who operate voluntary
certification programs, which egg producers pay to participate in. To these
certifying organizations, “pasture raised” is the more stringent standard, so
certified pasture-raised eggs tend to command a price premium in the market. But
the certifiers’ standards differ, e.g., one requires at least 2 square feet of
uncovered outdoor area per hen, while another requires about 22 square feet per
hen available for potential use (though only about 5.5 square feet needs to be
accessible to the hens at any one time if there’s rotation).

Happy Egg’s egg cartons advertise that its hens are “free
range” and “pasture raised on over 8 acres.” Plaintiffs alleged that the more
stringent “pasture raised” standards are the dominant industry standards, and
that consumers paid a price premium for Happy Egg products based on the
company’s implied compliance with these standards (even though Happy Egg did
not identify either standard on its cartons).

Plaintiffs’ expert opined that “the prevailing consumer
expectation is that an egg producer making a free-range or pasture-raised claim
is adhering to the commonly accepted standards pertaining to such claims as set
by the AHA or HFAC.” The lead plaintiffs testified that they didn’t know about
the standards’ content. The court found that one expert didn’t have a
methodology for examining different egg products in Seattle, rather than
California or New York (where the class members resided).

There was also a consumer survey expert. The survey results
found that using both the “pasture raised” and “free range” labels led
consumers to conclude that the eggs were both pasture-raised and free-range,
whereas with only a “free range” label, they concluded that the eggs were
free-range, but not pasture-raised. The survey did not address whether a
reasonable consumer understood “pasture raised” as aligned with either allegedly
dominant standards. For materiality, survey respondents were 8.1 times more
likely to state a preference for the eggs that included the “pasture raised on
over 8 acres” representation.

Thus, plaintiffs’ theory of deception required both experts:
the first to show that “pasture raised” had a commonly understood meaning tied
to the dominant standards, while the survey would show that a reasonable
consumer would understand Happy Egg’s “pasture raised on over 8 acres” claim to
mean that its eggs were pasture-raised.

But the district court excluded the first expert, whose
methods for assessing what a reasonable consumer would understand—such as
photographing egg cartons in stores near his home for his own “personal
purposes”—were unreliable, as they “[did] not pass the standards that he would
expect of his own survey consultant.” Then, the survey lacked a key foundation
piece, and couldn’t prove predominance.

But the district court still certified the class under Rule
23(b)(3) after finding that materiality and damages were common questions that
predominated.

The district court correctly excluded the first expert’s
opinions as unreliable because they didn’t come from “a rigorous evaluation of
how a reasonable consumer understands the term ‘pasture raised.’” As a result, “on
the foundational issue of deception, plaintiffs failed to make the required
showing.” It wasn’t enough to show that certain industry standards are dominant
without connecting that to consumer beliefs.

Plaintiffs responded that deception is governed by an
objective “reasonable consumer” standard, which means that all claims by any
plaintiff will necessarily rise and fall together. “But in order to reach the
reasonable consumer analysis, a plaintiff must first show, on a classwide
basis, what deceptive marketing or false advertising a reasonable consumer
could have been misled by.” Thus, “[w]here the theory of deception is tied to
an industry standard, evidence must be brought forward showing that there is a
commonly understood industry standard, and that a reasonable consumer would
associate a given representation with that standard.”

Then, the district court erred by not weighing the common
issues against the individualized issues and determining whether the common
issues are, on balance, important enough to justify class-wide treatment
despite the existence of individualized issues. Deception is a central element
of the claims. “[O]n this record, the lack of a classwide showing on deception
cannot be overcome by supposedly common issues of materiality and damages that
are unmoored from any classwide showing of actionable wrongdoing.”

from Blogger https://tushnet.blogspot.com/2026/08/9th-circuit-orders-class-decertified.html

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court finds ROP claim preempted where model initially consented to being in ad

Posted on August 25, 2026 by rtushnet

Delacruz v. Roc Nation LLC, No. 2:25-cv-11864-AH-(SSCx), 2026
WL 2455107 (C.D. Cal. Jul. 28, 2026)

Should copyright preemption apply to a right of publicity
claim where the original, consented-to use of the work was created for
advertising? The court here answers yes, although I think I would say no under
conflict preemption.

Delacruz is a professional model “whose likeness has been
featured in advertisements throughout the world.” Roc photographed her for a
fee in connection with an advertising and marketing campaign for Megan Thee
Stallion’s Hot Girl Summer swimwear.  She
allegedly granted consent only for use in social media, but Roc used her
likeness on physical, public billboards. She sued for California statutory and common
law misappropriation of her right of publicity and false endorsement/false
advertising under the Lanham Act. (A breach of contract claim was apparently
dropped.)

The question in the 9th Circuit is whether the use of the
likeness forms the basis of a publicity rights claim—if so, it’s not preempted.
On the other hand, “merely interfering with the distribution, display, or
performance of a copyrighted work” is preempted. While existing precedent “strongly
implies that misuse of an individual’s likeness is the ‘basis’ of a
publicity-right claim when the name or image is exploited in advertising or on
merchandise,” the circuit has considered other factors. For example, where
there’s not voice imitation, but rather licensing of an existing sound
recording, “the entirety of the allegedly misappropriated vocal performance is
contained within a copyrighted medium” and there is preemption. (This is
downstream of §301 preemption just being a bad fit for the relevant
considerations, as I have argued—the court here, like many before it, mixes and
matches statutory and conflict preemption reasoning, not to its benefit.)

The court here also drew on Second Circuit precedent, which
looked at whether a plaintiff’s name or likeness was “extracted in any way to
appear independently from how it originally appeared” in the works at issue. Melendez
v. Sirius XM Radio, Inc., 50 F.4th 294 (2d Cir. 2022). Fleet v. CBS, Inc., 50
Cal. App. 4th 1911 (1996), also found preemption where “the only alleged
exploitation occurred through the distribution of the actor’s performance in a
motion picture.”

Thus, it wasn’t enough to avoid preemption that the photos
were (re)used in commercial advertising when they were created as commercial
advertising. Under such circumstances, the plaintiff was objecting to the “ ‘unauthorized
distribution and republication of a copyrighted work, not the exploitation of
[her] likeness on an unrelated product or in advertising.’ In other words, the
entirety of the misappropriated likeness is contained within a copyrighted or
copyrightable medium.” She consented to the commercial use of the photographs; her
claims arose from the further distribution or duplication of those photographs.

 

Nimmer says that a claim “deserve[s] to be preempted …
[involving] facts of a party trying to suppress the very copyrighted work to
which she had earlier voluntarily contributed.” Therefore, “the conclusion
cannot follow mechanically that all advertising is actionable.” Following
Nimmer, plaintiff “collaborated in the creation of a copyrighted advertising
product,” and “even if she … can also adduce a contractual dispute” regarding
the scope of placement of such photographs, her collaboration “precludes her
from using the right of publicity to squelch exploitation of that copyrighted
work for its intended purpose of appearing on” Hot Girl Summer swimwear
advertisements.

True, Toney v. L’Oreal USA, Inc., 406 F.3d 905 (7th Cir.
2005), allowed a publicity rights claim to proceed when the defendant used the
ad in which she appeared beyond the authorized time period, but the court
thought that conflicted with Ninth Circuit precedent. “[T]he commercial use
element does not qualitatively distinguish the right of publicity claim from a
claim in copyright because the claim involves acts of distribution for
commercial use. Thus, the claim does not involve additional elements beyond the
reproduction of copyrighted works.”

Lanham Act: There was no literal falsity. Her theory was
that the billboards were misleading because it suggested that she endorsed the
Hot Girl Summer swimwear to billboard viewers when she sought to endorse the
swimwear to social media viewers only.

However, by agreeing to participate
in the photoshoot for the advertising campaign, Plaintiff effectively lent her
endorsement of the Hot Girl Summer swimwear. Plaintiff does not allege that
there was anything about that endorsement that communicated a limitation to certain
viewers only, such that the photograph was misleading when it was posted on a
billboard. Moreover, Plaintiff does not allege a theory of likelihood of
confusion where the only plausible confusion alleged is who was to receive the
message, not anything about the message itself.

from Blogger https://tushnet.blogspot.com/2026/08/court-finds-rop-claim-preempted-where.html

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