Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.

Usually, a dog toy’s squeak echoes throughout a home. A Jack Daniel’s bottle-shaped dog toy called “Bad Spaniels” will be heard at the U. S. Supreme Court and could bark for trademark use in expressive works. Will it bite?

Jack Daniel’s Properties, Inc.’s (“Jack Daniel’s”) petition to the U. S. Supreme Court explains that the case addresses a significant reoccurring tension in trademark and trade dress protection under the U. S.’s Lanham Act: VIP Products LLC (“VIP Products”) runs the e-commerce website . Under the shopping category “”, VIP Products sells an array of dog toys that parody existing brands’ trademarks and trade dress including a Mountain Dew bottle that reads “”, a Baileys bottle called “” and, the toy at issue, a nearly identical Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey bottle altered to say “.”

Image from .

Initially, that the “Bad Spaniels” dog toy likely causes consumer confusion and tarnishes Jack Daniel’s marks. On appeal, the decision holding that the likelihood-of-confusion test would not apply because the toy is an expressive work with First Amendment protection of freedom of speech. The Ninth Circuit applied the Rogers Test from the Second Circuit’s (1989) decision. free speech and trademark protection by allowing the use of trademarks in expressive works if artistically relevant and not explicitly misleading. Here, the trademark use was artistically relevant to the , the toy was not explicitly misleading because VIP Products altered the trade dress. The toy had a disclaimer on the back of the toy that stated that Jack Daniel’s was not affiliated.

Jack Daniel’s petition argues that the Ninth Circuit’s “” decision allowing for companies similar to VIP Products to tarnish trademarks and create mass marketplace confusion. Jack Daniel’s that the courts of appeal are divided on this issue, specifically that the Ninth Circuit’s use of heightened First Amendment Protection for humorous trademark use conflicts with the decisions of other Circuit courts. . These circuits have not used the First Amendment and instead applied the traditional likelihood-of-confusion test with consideration towards the humor or parody as a factor against the mark holder. For example, in , the Fourth Circuit held that Haute Diggity Dog’s “ successfully parodied Louis Vuitton’s handbags through applying the likelihood-of-confusion test with humour as a factor.

Essentially, Jack Daniel’s wants the U. S. Supreme Court to create a higher bar for parody works which would create more ease for mark holders to address consumer confusion and dilution from parodies. The main concern is the use of humour to gain immunity. , the academic director of Fordham University Fashion Law Institute, that “every brand with a beloved trademark is worried about seeing cheesy versions of its primary corporate asset used to sell not only dog toys, but also  a vast range of other novelties that, over time, could cheapen the perception of the brand.” In addition, that dog toys are expressive works because its purpose is to be played with by dogs.

However, the argument to raise the bar for parody works is contentious. , a professor at Harvard Law School and author of a brief opposing Jack Daniel’s , highlights that trademark law exists to protect consumers from fraudulent products rather than clear humorous uses of existing trademarks and trade dress. expressions on a canvas are not meaningfully legally distinctive from expressions on a dog toy.

The U. S. Supreme Court decision will be a significant precedent. In Mason Rothschild claimed his fur-covered Birkin bag NFTs, MetaBirkins, satisfied the Rogers Test by being artistically relevant and not explicitly misleading. Clearly, the humorous use and reworking of existing trademarks and trade dress is here to stay making Jack Daniel’s shot at heightened First Amendment protection highly relevant. Time will tell if Jack Daniel’s is barking up the wrong tree.

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Ariel Goldberg a 1L JD candidate at Osgoode Hall Law School.

French fashion brand garments featuring Botticelli’s Birth of Venus are heading off the rack and to legal battle. (“Uffizi”), based in Florence, Italy, are pursuing legal action against Jean Paul Gaultier for “illicit” unauthorized use of Botticelli’s Birth of Venus which violates Italy’s (Code of the Cultural and Landscape Heritage )(the “Italian Code”). The Code of the Cultural and Landscape Heritage’s legal force is separate from copyright laws and remains in effect when copyright protection does not.

Jean Paul Gaultier’s “Le Musée” capsule collection uses Botticelli’s Birth of Venus on including a scarf, skirt, sleeveless top and trouser. Jean Paul Gaultier originally used Birth of Venus in its S/S 1995 Collection on a sheer mesh top. In , Uffizi sent a cease-and-desist in response to Jean Paul Gaultier’s current use of the Birth of Venus, but the fashion brand never replied and continued its unauthorized use.��

(Photo Credits: ; )

The Italian Code , which came into effect in 2004 and was updated in 2016, . The Italian Code protects which can be historical, artistic, ethno-anthropological and archaeological. , objects require authorization and a licence fee to be used commercially by third parties regardless of whether the work is in the public domain. of the images by private individuals for the purpose of creative expression, study, research and enhancing cultural heritage are excluded from these legal obligations.

The refers to works not protected by copyright, which means the works can be used without acquiring permission or paying a fee. Generally, copyright protection expires after a period following the death of the author. In Canada, under the copyright protection remains for the life of the author and 50 years following the end of the calendar year the author died in unless otherwise stated within the Act. ��

The Birth of Venus is in the public domain because it was created by Botticelli in the mid-1480s. However, Gaultier allegedly violated Italy’s Cultural Heritage Code by proceeding with commercial use of the image without authorization and paying a licence fee. Jean Paul Gaultier’s use would not likely qualify for ��creative expression exception because of its commercial nature and because Jean Paul Gaultier is a fashion brand rather than private individual. , a lawyer and comparative cultural heritage, art and fashion law scholar, states that Jean Paul Gaultier could argue that some uses are of Botticelli’s Birth of Venus which would exclude the use from the ��

Uffizi’s Director Eike Schmidt commented that such as Leonardo da Vinci, Caravaggio, Titian, Raphael and Giotto di Bondone. The prevalent use of Uffizi’s artworks despite Italian law led to to police whether artworks are used to sell products, especially on social media. This hyperfocus on social media reflects the double-edged nature of social media, providing a greater connection through increased sharing and platforms while also allowing easier access and subsequently, easier appropriation of works.

Last year, a similar conflict emerged from the use of the Birth of Venus. online guide to erotic art which used the artwork. Hopefully, the Birth of Venus does not birth more legal issues in the immediate future. ��

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Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.

Typically, include strictly hygienic recommendations, but tattoo artist Kat Von D might have a unique suggestion: prepare to be an exhibit in a copyright infringement lawsuit.

Back on February 7, 2021, award-winning professional photographer Jeffrey B. Sedlik (“Sedlik”) filed in the U. S. District Court for the Central District of California against Katherine Von Drachenberg, famously known as Kat Von D (“Kat Von D”), and her companies Kat Von D, Inc. and High Voltage Tattoo, Inc. for copyright infringement under the Copyright Act of 1976. Sedlik claims that Kat Von D infringed the copyright protection of his iconic photograph of world-famous jazz musician Miles Davis (“Davis”) when she tattooed the image onto a client’s body without authorization and posted photos of the tattoo on social media. On May 31, 2022, triable issues on substantial similarity and fair use.

Background

In , Kat Von D inked a tattoo of Sedlik’s Davis photograph on the arm of lighting technician Blake Farmer (“Farmer”) for free. Prior to the tattoo sessions, Farmer selected the image from a Google search. Kat Von D did not request authorization or a license to reproduce the image. To freehand ink the tattoo, Kat Von D created a stencil by using a light box to trace the Davis photograph. On March 18, 2017, Kat Von D posted on her personal Instagram of herself using the Davis image as a reference while inking the tattoo. On May 16, 2017, Kat Von D posted on her personal Instagram account.

Sedlik’s copyright infringement claims raise the of whether a tattoo artist commits copyright infringement when replicating a copyright protected image as a tattoo. In comparison, previous copyright infringement cases over tattoo art focus on an existing tattoo being reproduced in another work rather than the copying of a reference image. For example, in , a tattoo artist sued the video game producer Take-Two for copying in a video game series six tattoos that the tattoo artist inked on World Wrestling Entertainment (WWE) wrestler Randy Orton.

The Arguments

Kat Von D claims Sedlik does not have protection over the photograph’s subject matter and pose because Sedlik .�� In Nike photographed Michael Jorden similar to professional photographer Rentmeester’s original photograph of Michael Jordan leaping to dunk a basketball in a basketball net. The Ninth Circuit held that Nike did not infringe on Rentmeester’s photograph because Rentmeester’s copyright protection cannot prevent photographers from the idea of Jordan leaping, rather only the specific details expressed in the photo he took. While the Court agrees that the ‘Sssh!’ pose is not protectable, the Court states that the , such as lighting and camera angle, are protectable.

Kat Von D argues that the use of the photograph in creating the tattoo is fair use because the tattoo is transformative . First, the tattoo has a new meaning because Farmer selected the tattoo due to his personal identification with Davis, whereas Sedlik’s portrait commented on Davis’ . Second, the tattoo has a new meaning by virtue of being a tattoo because tattoos have personal meaning to their wearers. Third, Kat Von D created her own interpretation by using a freehand method of inking the tattoo. She added movement to the hair, eliminated the black background and created a new melancholy aesthetic. Interestingly, Kat Von D urges the Court to consider “ ��as a non-statutory factor of fair use.

the Court rejected the argument that the tattoo has a different meaning solely because it is placed on the human body. The Court was more convinced that Von D’s freehand tattooing style created visual differences. However, that these differences do not make the tattoo transformative because the differences only arise from the medium of tattooing.

Moving Forward

The broader issue of translating a copyright protected photograph into a different medium with a different purpose will be addressed by the U. S. Supreme Court in The case questions if Andy Warhol’s “Prince Series” infringes professional photographer Lynn Goldsmith’s copyright protected photograph of Prince by using the photograph as an artistic reference without authorization. The decision on Kat Von D’s tattoo until the U. S. Supreme Court’s decision on Andy Warhol because the case could set precedent for fair use, specifically when the use of the original work is transformative enough to avoid copyright infringement.

The outcome of this case may alter the tattoo industry. Clients often request tattoos of Google-searched images or copyright protected works like album covers. The possibility of a tattoo artist being liable for copyright infringement creates complex implications for what tattoo artists are willing to ink as tattoos. More generally, the case towards balancing the rights of copyright owners and the right of tattoo owners’ to privacy and bodily autonomy.��

Further Reading

For more information on intellectual property law and tattoo art see Emily Prieur’s IPilogue article

For more information on The Andy Warhol Foundation for Visual Arts, Inc. v. Lynn Goldsmith, et al. see Tianchu Gao’s IPilogue article

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Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

On June 21, 2022, the U.S. Patent and Trademark Office (“USPTO”) granted The Ohio State University trademark protection for the most common English word: . However, the fashion house Marc Jacobs has a pending trademark application for an identical “T�ᷡ” mark. Both “T�ᷡ” marks are filed under the under the Nice classification system, which specifies trademark protection for uses on clothing and headwear. The “T�ᷡ” marks created a ‘the’ mess and a concern about enforcing trademark rights for a common word.

, Ohio State University began using ‘the’ to avoid the acronym “OSU”, which was identical to Oregon State University and Oklahoma State University. To avoid confusion, Ohio State University rebranded itself as The Ohio State University. Due to the humorous nature of the rebranding, The Ohio State University began being referred to as “T�ᷡ” including on .

The Ohio State University’s trademark protection for the “T�ᷡ” mark was not an easy feat — it took three years. , The Ohio State University filed a trademark application for the “T�ᷡ” mark with the USPTO. However, the USPTO initially rejected the trademark application for two reasons. the USPTO argued that the “T�ᷡ” mark was not functioning as a trademark because it was used by The Ohio State University ornamentally on clothing rather than as a source indicator. the USPTO highlighted a potential refusal on likelihood of confusion because Marc Jacobs filed a trademark application for an identical “T�ᷡ” mark on clothing items earlier than The Ohio State University. A full breakdown of these refusals and the corresponding responses can be read in the IPilogue article by Claire Wortsman.

While The Ohio State University secured a trademark win, there is now a concern about enforcing trademark rights over such a common term. In theory, the trademark protection grant broad enforcement over the term ‘the’. Instead, the trademark protection to unauthorized uses of the mark that confuse consumers of source. Further, the trademark protection exists with other trademarks that include the term ‘the’. Therefore, The Ohio State cannot prevent the use of ‘the’ in and including those in the collegiate clothing market like .

On the other hand, trademark bullying is a widespread tactic to enforce and maintain trademark rights. The USPTO defined as the practice of using trademark rights to intimidate businesses beyond what trademark protection allows. While trademark enforcement is necessary to avoid a , there is a fine line between suitability and aggression. For example, trademark professor Alexandra J. Roberts the drink company Monster’s tendency to stop any use of the word “monster.” ��Therefore, The Ohio State University could aggressively and overbroadly target uses of the term “T�ᷡ”.

Moving forward it will be interesting to see how The Ohio State University enforces their trademark rights. Hopefully, the trademark registration marks the “T�ᷡ” end.

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Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

While Hailey Bieber’s new skin care brand promises “” the brand itself has a blemish: . On June 21,2022, Rhode-NYC, LLC. (“Rhode-NYC”) in the U. S. District Court for the Southern District of New 91��ɫ against Hailey Bieber and her companies RHODEDEODATO CORP. and HRBEAUTY, LLC for trademark infringement. Rhode-NYC is a founded by two women entrepreneurs in 2014, whereas Hailey Bieber’s launched in June 2022 during .

Rhode-NYC that Hailey Bieber’s use of her middle name “Rhode” as the name of her skin care brand is creating market confusion and potential harm to its goodwill and reputation. ��Rhode-NYC claims that for “rhode” were immediately populated by Hailey Bieber and her companies’ brand as evidence of source confusion. consumers are tagging the wrong Rhode brand on Instagram content. This is a case of where the junior user of a similar mark, usually with more resources, creates confusion that a senior’s goods and services originate from the junior user. Hailey Bieber d her fame and social media following, and that of her husband Justin Bieber’, to immediately establish her brand.

Hailey Bieber and her companies’ trademark applications’ history suggests an awareness of Rhode-NYC’s prior trademark rights and the brand confusion that would result from the existence of both brands. , Hailey Bieber and her companies attempted to purchase the RHODE mark from Rhode-NYC after filing an application with the US Patent and Trademark Office (“USPTO”) for the use of “Rhode” on clothing. Then, , Hailey Bieber and her companies filed an intent-to-use trademark application for RHODE as a word mark and stylized word depiction for use in skin care. Notably, Rhode-NYC the 2020 application.

While the two brands registered the RHODE mark for different uses under the system, that expansion of either brand increases the potential for harm because the uses are in adjacent industries. �� Hailey Bieber and her companies are filing trademark applications outside cosmetics and promising Rhode clothing. Following the of celebrity brands, Hailey Bieber’s Rhode is unlikely to remain in the realm of skin care. For example, the beauty brand developed the line which includes apparel and accessories such as a hoodie. In addition, that Hailey Bieber and her companies’ use of the RHODE mark prevents Rhode-NYC’s own intentions to enter the beauty and lifestyle market.

The lawsuit over the RHODE mark demonstrates the trademark implications of the rise of celebrity brands. Specifically, how celebrities’ existing fame impacts secondary meaning and the importance of considering trademark rights in industries that would be a natural extension of a brand. Ultimately, Rhode-NYC co-founders are only attempting to protect their brand, not to harm Hailey Bieber. They explained in an Instagram statement,

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Photo by Tommao Wang��

Ariel Goldberg is a third-year undergraduate student at 91��ɫ.

For most, Tiffany’s robin’s-egg blue box immediately represents luxury jewelry. However, British artist Stuart Semple considers Tiffany Blue as being held captive through trademark law. To , Semple created 150 ml tubes of matte acrylic paint named which replicates Tiffany & Co’s signature hue.

Semple has been , with previous paints replicating trademarked colours including , , and . His is to increase the possibilities within art by making accessible what he claims are unattainable colours. Semple has pushed his commentary further by preventing individuals who hold registered colour trademarks from purchasing specific paints on his e-commerce website. Now, Semple’s most recent paint, Tiff, targets Tiffany & Co by sharing the brand’s iconic blue with all artists.

was created in 1873 by Charles Tiffany and John Young and has been registered as a colour trademark in the U.S since 1998. colours were outside the scope of trademark protection. The Lanham Act—the federal trademark statute in the U.S—does not include colour in the statutory definition of trademarks. In the 1995 decision, the U.S Supreme Court held that a colour could be registered as a trademark but required that the colour’s use be non-functional and that it has a In other words, consumers must associate the colour with a single source.

While Tiff paint has sparked conversation about monopolizing colours, Semple’s strong language on his e-commerce website and social media posts overstates the Tiffany & Co’s trademark rights. Semple wrote in an Instagram caption that Tiffany Blue is “trademarked in every category” and that However, colour trademarks are not synonymous with ownership of the colour. Trademarks are generally registered in connection to specific goods and services, which are divided by industry under the global system. Tiffany & Co has a multi-class registration for Tiffany Blue, but these are all narrowly defined. Tiffany Blue is registered for its use on “jewelry pouches with drawstrings” in Class 14. The trademark covers uses of the colour that would reasonably confuse the public to believe Tiffany & Co was the source.

Essentially, trademarks operate as a source indicator. Colour trademarks protect brands if the use of the colour in connection to specific services or goods would confuse customers. Christian Louboutin holds trademark rights for the use of Pantone 18-1663TP on shoe soles and Hermès maintains trademark rights for the use of a specific orange on packaging. Again, trademark protection is granted over the use of the colour in relation to specifically defined goods and services. It is not protection for the use of the colour on anything and everything.

In addition, colour trademarks are not effortlessly granted; it is difficult to gain monopoly over a colour. It can take time to develop the required secondary meaning. In the case of , The New 91��ɫ Sun reported the iconic nature of Tiffany & Co’s blue boxes in 1906, which is a significant time frame to be using the colour in relation to packaging and jewelry. Essentially, the colour’s use was so well known it was functioning as a source indicator before protection was granted. Even if secondary meaning is established, the colour which means that the colour cannot be essential to or a characteristic of the good or service. The functionality doctrine protects competitors against a disadvantage. Ultimately, there are safeguards to granting a colour trademark which prevents widespread and overly broad monopoly of colours. Further, rights are limited to the consistent use of the colour.

Tiffany has yet to respond to Semple’s paint. Regardless, Semple plans to continue “liberating” Tiffany Blue. He , “I see the art materials as more of a cultural critique, a piece of critical art [rather] than a business.” While Semple’s cultural critique exaggerates the protection granted through colour trademarks, Semple has started a conversation. He has also shown the importance in recognizing the limitations and safeguards in colour trademarks.

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