• Rolanzo White, Esq.

A look back at 2021

This blog will explore four significant intellectual property case decisions that were decided in 2021 and how they will affect us moving forward.


One of the most exciting aspects of the law is its ever-changing nature. The law is a set of rules that must remain flexible and conform to the environment of the natural world that it looks to control. 2021, in particular, was both an exciting and challenging year. Although we were still dealing with the coronavirus pandemic, the courts were now open and decided on significant cases. As we enter 2022, we look back at some of the critical intellectual property (I.P.) law decisions that we saw in 2021 and what we can learn from them going into the new year.


Fair Use


One central point of concern and litigation in 2021 was the doctrine of fair use. The fair use doctrine has always been a point of contention in the world of copyrights because there are only a few if any, things that are strictly new and original throughout. The fair use doctrine seeks to "strike a balance between an artist's intellectual property rights to the fruits of their creative labor -- including the right to license and develop or refrain from licensing or developing derivative works based on that creative labor -- and the ability of other authors, artists, and the rest of us to express them/ourselves by reference to the works of others." See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith.

The courts are supposed to consider a non-exclusive list of four factors when evaluating whether the use of a copyrighted work is fair. 17 USCS § 107.


These factors are:

  1. The purpose and character of the use, including whether such use is commercial or is for nonprofit educational purposes;

  2. the nature of the copyrighted work;

  3. the amount and substantiality of the portion used concerning the copyrighted work as a whole; and

  4. the effect of the use upon the potential market for or value of the copyrighted work.


In March 2021, the Second Circuit made a significant decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 11 F. 4th 26 (2d Cir. 2021). This case was about prints and illustrations created by Andy Warhol, based on a 1981 photograph of the late musical genius Prince. Lynn-Goldsmith ("Goldman") took the picture, and she owns the copyrights.


Goldsmith licensed the image to Vanity Fair in 1984 as an artist reference, which she discovered was Warhol, until 2016 when Prince died. Warhol used the picture to do an additional 15 works called the Prince Series.

Goldsmith notified Warhol's foundation about her copyright in the image. The foundation sued to have the works declared non-infringing, or, in the alternative, the works made fair use of the photograph.


The United States District Court for the Southern District of New York ruled for Warhol's foundation, finding that the works were transformative. However, an appeal to the Second Circuit found that the District Court was wrong. The 2nd Circuit found that Warhol's edited images were not transformative, so they did not qualify as fair use under 17 USCS § 107 because works were substantially similar to Goldsmith's photographs.


Following the U.S. Supreme Court's decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, the assessment of the first "fair use" factor has focused primarily on the degree to which the use is transformative (i.e., whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message). The Court has used the word transformative to describe a copying use that adds something new and essential. The Court evaluates whether a work is transformative by examining how it may reasonably be perceived.


In April 2021, the Supreme Court decided Google LLC v. Oracle America, Inc., 141 S. Ct. 1183 (2021). In this case, the Supreme Court explained that some copyrighted computer code could be considered fair use under some circumstances.

Oracle America, Inc., owned the copyright in Java S.E., a computer program that uses the popular Java computer programming language. Google, without permission, coped approximately 11,500 lines of declaring code from an application programming interface (API). This portion enables a programmer to call up prewritten software to carry out any specific tasks with the computer's hardware. The Court decided that where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google's copying of the Sun Java API was a fair use of that material as a matter of law. Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209,


Trademark Infringement on Shopping Sites


On February 25, 2021, the Sixth Circuit decided The Ohio State University v. Redbubble, Inc., where they found Redbubble, Inc., an online sales platform, liable for trademark infringement due to infringing materials sold on their site.

The Court had to determine what level of involvement and control an online sales platform must exercise over the creation, manufacture, or sale of offending goods to be considered akin to a 'seller' or 'manufacturer' to whom Lanham Act liability applies.


The Court answers this question by stating that "one key distinction between a direct seller who uses a trademark under the Act and a mere facilitator of sales who does not is the degree to which the party represents itself, rather than a third-party vendor, as the seller, or somehow identifies the goods as its own. A retailer who sells products directly to a customer at a brick-and-mortar store is indisputably a seller to whom the Lanham Act applies. An online marketplace like eBay that clearly indicates to consumers that they are purchasing goods from third-party sellers is not."

However, in this case, the Court found that Redbubble was not a passive facilitator entitled to indemnification for the infringing material on its site. The evidence showed that Redbubble helped bring the infringing products to life by working with third-party sellers to create new products.

Redbubble took ownership of the goods by calling them Redbubble products, and clothes were described as Redbubble garments. Due to Redbubble taking ownership of the products, it was liable for trademark infringement. This decision sheds light on what online marketplaces must do to avoid the liability of third parties who post on their site. See The Ohio State University v. Redbubble, Inc. Case No. 19-3388 (6th Circuit 2021).


Filing Trademark to Solely Preserve Name


On May 10, 2021, the United States Court of Appeals for the Ninth Circuit in San Francisco, California, ruled that trademark applications must be tied to a bona fide use of the mark in commerce and not simply try to reserve the mark and sit on it.


This case surrounds the mark MEMOJI. Social Technologies LLC was the first to file a trademark for the mark. However, the Court ruled in favor of the alleged trademark infringer, Apple, because Social Technology did not use the mark in commerce to make its registration valid. Lanham Act, 15 USCS § 1051 et seq. The evidence showed that the development of the Memoji software and correspondences with its developer made clear that the development of the Memoji application was to reserve Social Technologies' rights to the MEMOJI mark and win a lawsuit against Apple." Soc. Techs. LLC v. Apple Inc., 4 F.4th 811, 813.


The Court's aim seems to be to distinguish what "in commerce" means, which could slow the rise of intellectual property trolls (i.e., people or entities that protect I.P. that they do not intend to use). For example, if Social Technologies had won the lawsuit, Apple would have to buy the mark from them or pay a licensing fee if they wanted to use that name.


Conclusion

The abovementioned decisions help us understand the breadth of the doctrine of fair use, the liability of online sales platforms, and the definition of in-commerce when registering a trademark. These developments will have their benefits and drawbacks. Still, it is crucial to keep in touch with your attorney to ensure you're compliant with the law and take advantage of your opportunities.


Written by: Rolanzo R. White, Esq.

Date: January 18, 2022

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