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US Supreme Court to hear IP cases
RICHARD WEINER
Technology for Lawyers
Published: February 3, 2023
The United States Supreme Court is set to decide a wide range of intellectual property cases in its upcoming term, including cases involving Andy Warhol and Jack Daniels whiskey.
Feel free to dig into these cases yourself if you’re interested.
Here’s a brief overview.
The most highly publicized of these cases involves the Andy Warhol estate in Andy Warhol Foundation for the Visual Arts v. Goldsmith (Docket 21-869).
In this case, the Goldsmith of the title is photographer Lynn Goldsmith, who took a series of photographs of the musician Prince at the start of the latter’s career.
Warhol, the Pittsburgh native who died in 1987, painted a series of portraits of Prince based on one of these photographs (long story short).
After Warhol’s death, Conde Nast magazine published one of those photos without mentioning Goldsmith and she sued the foundation, which owns the series.
The foundation claimed fair use defense. The foundation won at trial but lost in the 2nd Circuit.
Most analyses of this case say that the decision may affect the entire fair use doctrine.
On to Jack Daniel’s, in the case Jack Daniels Properties, Inc. v. VIP Products LLC (22-148). It is an expressive rights First Amendment case.
So—VIP Products make dog toys.
They made a squeak toy called “Bad Spaniel” which was shaped like a Jack Daniel’s bottle with a label that looked like a Jack Daniel’s label (if you don’t know what I’m talking about, you probably aren’t an acquaintance of mine).
JD sent a warning letter to VIP, who sued for a declaratory judgment and lost at trial.
The trial judge found that the humorous intent of the bottle-shaped doggie was within the First Amendment.
The case was overturned by the 9th Circuit which sought a more demanding First Amendment test (Squeak Toy Test?).
JD brought the case to the supremes to try to keep their trademarks from being parodied.
Another trademark case will have international law implications in Abitron Austria GmbH v. Hetronic International, Inc. (21-1043).
This case will decide on damages that a US company can recover for trademark violations which are based on foreign sales of a product.