On November 14 2022, the United States Court of Appeals for the Ninth Circuit ruled in &�Բ�����;(“Jiaxing”) that foreign parties to a trademark infringement complaint can be served by trademark owners within the U.S. because of . Statutory interpretation of s.1051(e) in this case provides a new way to serve foreign defendants via the Director of the United States Patent & Trademark Office (“USPTO”).  Specifically, Jiaxing provides that a foreign defendant may be served if they have filed an application for a conflicting trademark at the USPTO. This mitigates the traditional temporal, financial, and logistical challenges associated with preventing trademark infringement by foreign companies.

The Los Angeles-based &�Բ�����;(“San Antonio”) is known for their Stella Rosa brand that they have produced under the trademarks  since 1998. They , a Chinese company, for registering the mark “RIBOLI” for tands, containers, cocktail shakers, dishware, and other kitchen products. Jiaxing registered “RIBOLI” in 2018 for clothing and shoes and in 2020 for kitchen products. Accordingly, San Antonio filed a complaint for trademark infringement, trademark dilution, and false designation of origin. They are seeking an injunction against Jiaxing from using the “RIBOLI” mark, and an order to prohibit Jiaxing’s registrations.

The current route to service of foreign defendants is the Hague Convention, but San Antonio sought a faster and inexpensive way to serve Jiaxing. They did so under  which allows U.S. residents to serve the foreign defendant’s O agent or the USPTO director in “proceedings” that affect the mark. The provision states that if the trademark applicant is not in the U.S., they can designate a person in the U.S. who may be served on their behalf regarding the marks; and if that person is not found then the USPTO director may be served. 

Jurisprudence conflicts as to whether s.1051(e) is limited to USPTO proceedings or includes civil lawsuits. As such, the  that held the provision only applies to administrative proceedings. The Ninth Circuit reversed this by interpreting that the words “proceedings affecting a trademark” are broad enough to include civil litigation. Since , the provision must encompass serving process for disputes in district court. The Court held that the wording only requires that it’s plain and ordinary meaning be taken. Moreover, since the Lanham Act grants courts the power to affect trademarks in other ways, s.1051(e)’s use of the word “process” must apply to court proceedings. Further, the word , and thus it would have been  if it were not meant to also include civil proceedings.

Serving foreign defendants through s.1051(e)  as it governs service amongst foreign countries whereas s.1051(e) governs service within the U.S without international transmittal of documents; which means it .

Foreign infringers are increasingly popular and  on marketplaces that verify IP ownership, such as Amazon. The decision is significant, in that it may act as a deterrent — it warns foreign companies that an application at the USPTO is all that is needed to be served a U.S. lawsuit. The Court’s adoption of the plain and ordinary meaning is akin to the starting point of statutory interpretation in this context in Canada —  as adopted in Rizzo and Bell ExpressVu. This points to an expectation of similar results in Canadian courts, wherein a purposive analysis would be adopted to assess the ability of domestic trademark owners to serve foreign infringers.

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Areeb Daimee is a 2L JD candidate at the University of Western Ontario Faculty of Law.

With the rise of significant non-fungible token (“NFT”) trademark disputes taking place in the United States, Canada is looking towards the outcomes of those cases in order to interpret Canadian trademark law in relation to NFTs. These disputes are a recent and growing issue in intellectual property law that requires Canadian courts’ examination.

When focusing specifically on prominent trademark infringement disputes, two significant American cases come to mind.

Nike’s suit against StockX

��������� StockX for trademark infringement in February 2022 for selling NFTs of Nike’s products on the StockX online platform. Nike argues that StockX told consumers that tokens would be redeemable for physical shoes.��������� claims that this trademark infringement by StockX is , negatively effecting Nike’s plans to release a line of virtual products.

StockX has made minimal comments on the matter but makes it clear that Nike’s “lacks merit” and is  “a mischaracterization of the service StockX offers” through NFTs.

Hermès’ suit against artist Mason Rothschild

Hermès is in a trademark dispute with artist Mason Rothschild after Rothschild sold multiple digital handbag NFTs. Hermès has for trademark infringement, trademark dilution and false designations of origins and representations amongst other claims against Mason Rothschild.

In response, Rothschild has that he has protection under the First Amendment, describing the NFTs as just “ “a playful abstraction.”

The Future of Canadian Trademark Law

Both cases are still ongoing and Canadian courts and IP lawyers are waiting for the outcomes of various NFT disputes from ‘south of the border’ to better understand how to apply trademark law to NFT disputes in Canada.

George Kondor, partner at Oyen Wiggs Green & Mutala LLP, explains how significant the outcomes of these cases are for the future of Canadian trademark law.

Kondor that “"there’s nothing in Canadian legislation related to NFTs because they’re generally so new” and that court cases are the best way to crystallize what rights people have with regards to NFT issues. Canadian courts may need to wait for a concrete answer from their U.S counterparts. Kondor did also make clear that nothing is for certain: “”.

What the Future May Hold

The multitude of NFT disputes taking place in U.S Federal Courts will likely influence Canadian courts to follow suit and apply similar interpretations of trademark law. The U.S courts will establish influential decisions which assist Canadian courts in swimming through uncharted waters. Only time will tell what direction the U.S and Canadian courts take in dealing with these unique disputes.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

At last, the on the protectability of the subjects of ‘pop art’. In 1984, Vanity Fair magazine received a licence from photographer Lynn Goldsmith to use her 1981 portrait of Prince, which she had shot on assignment for Newsweek. Fast forward to 2017, when Vanity Fair published a special issue to pay homage to the recently deceased musician that featured ‘Orange Prince’ – Andy Warhol’s pop art depiction of Goldsmith’s photograph. The question of whether Warhol’s Prince silkscreens may be considered fair use has now made its way up to the US Supreme Court, and on October 12th of this year, . This is the outlining the arguments that were made in the matter of Andy Warhol Foundation for the Arts v Goldsmith.

In determining fair use according to the statute, one of the primary points of contention involved the meaning behind the of the alleged use. The Warhol Foundation contended that the purpose of ‘Orange Prince’ was to comment on modern society, thereby conveying unto the original an entirely different meaning and message. Lisa Blatt, representing Goldsmith, proposed that one may just as easily argue that the “purpose” of both uses was the commercial licensing of the works for publication. Blatt’s arguments were supported by Yaira Dubin, representing the Justice Department, who also highlighted the foundation’s commercial licensing of Warhol’s work, saying that “using another artist’s work as a starting point to turn around and compete directly with their original has never been considered fair.”

Of course, the magnitude of such a household name as Andy Warhol’s was not lost to the court. Justice Kagan questioned the influence such a name might have on the query: “Now we know who Andy Warhol was and what he was doing and what his works have been taken to mean. So it’s easy to say that there’s something importantly new in what he did with this image.” On the other hand, Justice Kagan also acknowledged that there must be a reason why Warhol’s art is hung up on the walls of museums: “[W]hy do museums show Andy Warhol? They show Andy Warhol because he was a transformative artist, because he took a bunch of photographs and he made them mean something completely different.” 

The Supreme Court judges addressed a statement made by the , which ruled in favour of Goldsmith. The Court of Appeals had warned that judges “should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue.” Justice Alito, in particular, seemed to disagree with the statement, pondering the kind of perspective that would be appropriate in determining such distinctions: “Well, suppose that [somebody]...made an almost exact copy [of the Mona Lisa]…If you showed [the two works] to most people today, they would say, well, all right, brown dress, blue dress, red dress, doesn’t make any difference, right?...But, if you called somebody who knows something about Renaissance art, the person would say that makes a big difference.”

The commentary strikes at the ambiguity often found in determining cases involving intellectual property, if only because there is an inherently subjective element to construing creations of the mind. However, though patent law has the “person of ordinary skill in the art” standard and trademark law has the “ordinary casual consumer somewhat in a hurry” standard, copyright law often relies on a judge’s evaluation of whether infringement has occurred.

There is much to be anticipated from the Supreme Court’s final decision, the kind of effect such a decision might have on the world of art and photography, as well as whether a ruling in favour of the foundation would indeed “decimate the art of photography by destroying the incentive to create the art in the first place,” as Blatt argues.

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

For all the gamers out there, do you still remember the classic, pixelated games of the 2000s? Gone are the days where fiction and reality were easily discernible, with the emergence of hyper-realistic video games such as , and depicting entire fantasy worlds at a crisp 1080p quality or better.

The video game industry has sky-rocketed in the last decade, especially due to historic amounts of people turning to digital forms of entertainment to wait out the pandemic. In this , game developers must be especially cautious of potential trademark infringements. Two recent U.S. court cases addressed the question of whether depictions of real vehicles in video games constitutes trademark infringement.

Battle of the tractors:

The star of this case is a K-700 tractor. Saber Interactive Inc.(“Saber”) had entered into a licensing agreement with the trademark owner for the exclusive intellectual property rights to depict the K-700 in its video game, Mudrunner. The agreement included the right to enforce the license in court. Subsequently, Oovee Ltd (“Oovee”) released its game Spintires, featuring the K-700 as a playable vehicle. Saber then sues Oovee for unfair competition caused by unauthorized use of the K-700 trademark and trade dress under the American Lanham Trademark Act.

Expressive works are granted expression rights by the First Amendment. Oovee’s use of the K-700 was hence protected as such, as the Court found video games to indeed be expressive works. Accordingly, then, Saber had to satisfy the two-prong Rogers test to bypass this defense by showing that Oovee’s use of the K-700, as follows:

1. Had no artistic relevance to its Spintires game; or
2. Explicitly misled consumers regarding the source of the K-700.

The Court found that Saber “did not explain why Oovee’s use of the K-700 is artistically irrelevant,” and did not satisfy the high bar of “explicitly misleading” in their submissions. Saber argued that because consumers expect that “actual vehicles featured in simulations are licensed,” there arises a likelihood of confusion amongst the public as to the involvement of Saber in Oovee’s game. The Court found that without an explicitly misleading statement, this likelihood of confusion is insufficient to satisfy the second prong. Accordingly, Oovee’s use of the K-700 did not infringe upon any marks and the motion was dismissed.

Humvee v. Call of Duty, aka

The Saber case ruling follows an earlier case concerning the appearance of Humvee vehicles in the Call of Duty franchise games. Call of Duty, created by Activision Blizzard, is a first-person shooter game simulating a modern warfare setting with Humvees depicted throughout the game. AMG sued Activision Blizzard for these depictions since Blizzard did not acquire authorization for such uses. Like the Saber case, First Amendment protection applied to the video game, and this protection was subjected to the Rogers test.

Ultimately, the Court found that the use of Humvees was artistically relevant to the game because they evoked “a sense of realism and lifelikeness” to the players. The second prong, however, was unmet because despite there being survey evidence of confusion, the confusion itself did not arise from Activision Blizzard’s actions. The case was dismissed in favour of Activision Blizzard.

Implications

As more of our world moves online, these such lawsuits help guide the direction of developers designing the digital space. To make video games more immersive and realistic, developers would have to bring in real-life characteristics and these precedents help to shield designers from tedious trademark litigation. However, as we have seen from the Orton case , similar protection may not be granted to copyright infringements in games. Regardless, we expect further guidance as the courts continue to clarify how the nuances of IP law apply online.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

Over 3 years have passed since New 91��ɫ’s District Court a ruling in the matter of Andy Warhol’s “Orange Prince”, and the ripples of the case have finally made their way up to the Supreme Court. On Wednesday, October 12th, 2022, the judges of the US Supreme Court heard from both sides, and considered whether Warhol’s , which he had based on a 1981 photograph of Prince by photographer Lynn Goldsmith, may be considered a use that is “fair”. 

The doctrine of fair dealing in Canada has long played an important role in balancing the scales of copyright law from leaning too far in favour of copyright holders. The fair dealing exceptions recognize certain uses of protected works as benefitting society, and thereby safeguard those uses from findings of infringement. The parallel doctrine in the US tracks along similar reasoning and is known as the ‘fair use’ doctrine. In determining whether a use of a copyrighted work is “fair,” courts consider numerous factors, including whether the use in question is “transformative” of the original material.

In , the Supreme Court was invited to assess whether a work was “transformative” when it conveys a different meaning or message from its source material, or whether, in cases where the accused work “recognizably derives” from its source material, judges are forbidden from deriving or considering such meanings. It was an engaging proceeding with an abundance of references to pop culture icons and current affairs, and was punctuated at times by laughter in the courtroom at an amusing hypothetical posited by one of the judges.  

Roman Martinez appeared on behalf of the Andy Warhol Foundation, and clarified the issue at hand, as well as the Foundation’s position: “[b]oth courts below agreed, and Goldsmith doesn’t dispute, that Warhol’s Prince Series can reasonably be perceived to convey a fundamentally different meaning or message from Goldsmith’s photograph. The question in this case is whether that different meaning or message should play a role, any role, in the fair use analysis. Our answer is yes.” Martinez argued that while Goldsmith’s original photograph captured a “vulnerable-looking Prince,” Warhol’s depiction turned it into a commentary on celebrity and fame – an entirely different meaning and message. 

The judges somewhat pushed back against this argument. Justice Elena Kagan suggested that in Hollywood, while a movie adaptation of a book might introduce plenty of new elements that may make a derivative work “transformative” under Martinez’s proposed test (“...new dialogue, sometimes new plot points, new settings, new characters, new themes”), one would still expect some sort of licensing agreement to be required.

Chief Justice John Roberts and Justice Clarence Thomas also commented on Martinez’s arguments, albeit in more lighthearted terms. The Chief Justice wondered whether a claimant who depicted Prince with “a little smile on his face” may advance the argument that the “meaning or message” of the work was fundamentally changed to convey that “Prince can be happy” or that “Prince should be happy.” Justice Thomas in turn asked Martinez to imagine the Justice at a Syracuse football game as a Prince fan, “which [he] was in the ‘80s.” Justice Kagan interjected, “No longer?,” to which Justice Thomas replied, “Well…so only on Thursday night.” This elicited some laughter in the courtroom. Justice Thomas continued, “And I decide to make one of those big blowup posters of ‘Orange Prince’ and change the colours a little bit around the edges and put ‘Go Orange’ underneath. Would you sue me for infringement?,” insinuating that the changes and add-ons may be considered to convey a new “message” to Warhol’s work, under the Foundation’s proposed test. In response, Martinez emphasized that the verdict in both scenarios would largely depend on the degree of transformation in meaning or message, as well as the other factors in the ‘fair use’ analysis, such that a holistic assessment may be applied.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Sonos achieved a major milestone in their Canadian patent battle against Google, which follows several rulings in favour of Sonos in their corresponding US litigation (previously published in the IPilogue ).

In an infringement action against Google LLC (“Google”) dated August 15, 2022, Justice Zinn of the Federal Court of Canada in favour of the defendants, Sonos, Inc. (“Sonos”). This case concerns the infringement of Claim 7 of Canadian Patent No. (“150 Patent”) relating to Google’s method and apparatus for adaptive echo and noise control. Sonos counterclaimed, alleging that Claim 7 of the 150 Patent is invalid for obviousness and lack of invention.

The Court held:

1. Sonos does not directly infringe Claim 7 of the 150 Patent;
2. Sonos does not indirectly infringe Claim 7 of the 150 Patent by inducing users to infringe; and
3. Claim 7 of the 150 Patent is valid.

This decision follows the of Sonos’ motion for summary judgment in March 2021, where Sonos alleged that Google made factual admissions in a corresponding US proceeding related to the infringement of US Patent No. , for which the 150 Patent claims priority. Justice Southcott of the Federal Court of Canada rejected Sonos’ arguments that Google’s voluntary dismissal in the US action represented an admission of non-infringement or eliminated any genuine issue for trial.

BACKGROUND

Claim 7 of the 150 Patent, owned by Google, details a method and device for echo and noise control in a device that adaptively determines an order of noise suppression and echo cancellation based on noise in the input signal. This patent allows for voice assistants in smart speakers, such as Amazon Alexa and Google Assistant, to change how much background noise is filtered out (i.e., noise suppression) when addressing a user’s commands, also referred to as “echos” (i.e., echo cancellation). Google claimed that five of Sonos’ products (collectively, “Sonos Devices”), all of which are compatible with Amazon Alexa and Google Assistant, infringed Claim 7 of the 150 Patent.

CLAIM CONSTRUCTION

In constructing Claim 7, Google and Sonos’ experts disagreed on whether echo cancellation is a subset of noise suppression or whether these terms are mutually exclusive. Google submitted that “noise”, as confined to the asserted claim, was to be interpreted generally to include all background sound and user commands. In contrast, Sonos interpreted “noise” more narrowly to include only background sound, not user commands. Justice Zinn sided with Sonos to interpret noise in the narrow sense, thus concluding that echo cancellation and noise suppression are mutually exclusive processes.

INFRINGEMENT

Direct Infringement: Justice Zinn succinctly shut down Google’s claim that the Sonos devices directly infringe the 150 Patent. Out of the box, the Sonos devices are simply speakers and do not have voice assistants set up and configured. The essential elements of Claim 7, echo cancellation or noise suppression, require user activation of the compatible voice assistants. Thus, the court held that Sonos does not directly infringe Claim 7 of the 150 Patent.

Indirect Infringement: The Court focussed on considering whether Sonos indirectly infringed Claim 7 of the 150 Patent by inducing their users to enable Amazon Alexa or Google Assistant.  Justice Zinn sided with Sonos in finding that their technologies are not configured to adaptively adjust these elements based on input noise as described in Claim 7 of the 150 Patent. Instead, these processes are user controlled or done in a pre-determined manner. Consequently, the court held that Sonos did not indirectly infringe Claim 7 of the 150 Patent.

INVALIDITY

Justice Zinn used the approach outlined in Apotex Inc v Sanofi-Synthelabo Canada Inc, to assess the obviousness of the patent. Google and Sonos generally agreed on the person skilled in the art, common general knowledge, and the inventive concept of the claim. Sonos relied heavily on US Patent No. ("871 Patent”) as prior art to assert that it would have been obvious for a skilled person to make the claimed invention in the 150 Patent. The Court rejected this argument, accepting Google’s submission that the skilled person would not easily come up with the 871 Patent and, therefore, the 150 Patent is not invalid for obviousness.

NEXT STEPS

Google has yet to appeal this decision. A few days prior to the decision, Google announced against Sonos regarding voice control technologies.

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Dan Bereskin presenting. Photo by Prof. Pina D'Agostino

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On August 31, 2022, IP Osgoode held its first in-person event in over 2 years and the first instalment of the IP Osgoode Speaks series since 2020. At the event, , the founding partner of the highly regarded IP Boutique firm , gave a lecture on balancing rights to freedom of expression with the rights of IP owners and users.

Being the first in-person event since the beginning of the pandemic, the lecture brought us back to an energised and inquisitive group addressed by Mr. Bereskin’s ease and sense of humour. Dr. Pina D’Agostino began with opening remarks, recognized the novelty of an in-person lecture in 2022 and acknowledged all the work that went into bringing it together.

Mr. Bereskin began his lecture by acknowledging the multitude of perspectives held by different IP enthusiasts, such as academics, IP owners and private practitioners. He recognized that the views he presents maybe termed as him “going over to the dark side.”

He proposed that in IP infringement cases where freedom of expression is a concern, an injunction should not be granted without proof of actual substantial harm or proof of likely actual substantial harm. This harm primarily consists of economic loss and reputational loss. It is noteworthy that, in the absence of proof of economic loss, Mr. Bereskin does not include mere rhetoric of reputational harm, without solid evidence, within the ambit of actual substantial harm.

To make his point, Mr. Bereskin used some interesting examples of how courts have treated parodies of IP rights around the globe. He discussed examples of corporate overreach by IP owners, such as Louis Vuitton and United Airlines.

Upholding Freedom of Expression

Most notably, Mr. Bereskin discussed two unsuccessful actions by Louis Vuitton (“LV”). The first was LV’s suit against artists Nadia Plesner. Plesner had used a sketch of an LV bag in her painting to showcase the commercialising of Darfur genocide victims to appease first world audiences. This painting was later reproduced on t-shirts which were sold to raise money for the genocide victims. LV sued Plesner alleging trademark infringement. Ultimately, Plesner won the case against LV and her rendition of the bag with the court upholding her right to freedom of expression over LV’s . Mr. Bereskin astutely noted that Plesner’s artwork would have been less popular if LV had abstained from legal action.

(Photo credits: )

Mr. Bereskin also discussed LV’s case against Haute Diggity Dog, a company that makes plush toys for pets to chew through parody of famous trademarks of luxury products. One such example is Haute’s “Chewy Vuiton” plush toys. LV sued Haute for trademark infringement and trademark dilution. The US Court of Appeals (4^th circuit), however, that Haute’s products are successful parodies of LV’s handbags, do not raise any likelihood of confusion and are therefore, not infringing.

Priortizing IP Rights over Freedom of Expression

On the flip side, we have the case of United Airlines and Mr. Jeremy Cooperstalk, a Canadian professor who catalogued complaints against United Airlines on the parody website “Untied.���dz�”. United Airlines filed a lawsuit in 2012 alleging IP infringement and confusion through the website which led people to believe that they are registering complaints with United Airlines themselves. This reasoning was dubious at best, since “���Գپ����’s” website denied any allegiance with United Airlines. The Federal Court however disagreed with Mr. Cooperstalk and held his website violative of United’s IP rights. Interestingly, Jimmy Kimmel’s amended slogan (“F**k You”) and accompanying ad for the airline in the US continue to be available due to the US’s stronger protection of freedom of expression.

Takeaways

Through these, and many more examples, Mr. Bereskin made a compelling case for not only recognizing creators’ IP rights, but also the limitations of those rights, especially when they conflict with the right to freedom of expression. Overexpansion of IP owners’ rights poses risks to freedom of expression and should be curbed before these rights go rogue.

For a student who did not get an opportunity to experience Osgoode and IP Osgoode pre-pandemic, the energy and fervour of the lecture hall, the brilliant insights by Mr. Bereskin and the surrounding conversations around his lecture, this lecture served as a unique insight into the power of hallway chatter. Surrounded by snacks and coffee, the lecture was a unique opportunity to learn from an IP legend. It also marked the first step in IP Osgoode’s next chapter where a hybrid system can bring together IP enthusiasts in a most enriching way.

Left to Right: Prof. Pina D'Agostino, Dan Bereskin, & Rhoda Gryfe. Photo by Ashley Moniz

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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

The post Kat Von D, Think Before You Ink appeared first on IPOsgoode.

Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 3L JD Candidate at Osgoode Hall Law School.

How similar is too similar? Television producers need to be careful to ensure that they are not mimicking real-life businesses too closely to offer their fictitious shows some realism. According to , AMC Networks and Sony Pictures, the production companies behind Better Call Saul, are being sued for trademark and trade dress infringement by Liberty Tax. The tax company claims that the producers and film studios “decided not to be original at all” and “rip off” of its trademark which has been in use for over 25 years.

The episode in question (Season 6, Episode 2) portrays a business called “Sweet Liberty Tax Services,” shown below. The fictitious business is run by Betsy and Craig Kettleman, who embezzle money by taking advantage of their clients who do not understand the tax system. The real-life tax company "Liberty Tax" claims that the show copied its logo and style, including the Statue of Liberty, which is a frequent identifier of the company.

Photo retrieved from The Wrap

The is no stranger to trademark infringement issues. Audiovisual professionals know to be especially careful whenever trademarks are displayed on screens. However, production teams can defend their works against claims of trademark infringement. Among these avenues are demonstrating that the trademarks are being used in an “indicative manner” or a “mere accessory,” instead of for identifying goods and services. Camerawork plays an important role in achieving that the trademarks blend into the scene’s overall ambience. For example, to mitigate trademark infringement risks, directors may take active measures to prevent fixed close-ups or give too much screen time to one particular trademark over another.

All that said, a trademark does not necessarily have to be displayed visually to trigger a trademark infringement lawsuit. After the release of “Black Mirror: Bandersnatch” in 2018, , a children’s book publisher known for their ‘game books’ titled Choose Your Own Adventure. As an interactive film, Bandersnatch viewers could take control and make decision for the protagonist, Stefan Butler, as he navigates a series of disturbing events. By adopting the unique narrative structure of its books and using the specific phrase “Choose Your Own Adventure Book,” Chooseco accused Netflix of willfully infringing its trademark and ultimately tarnishing the series’ child-friendly reputation. Netflix eventually settled with Chooseco in late 2020 after unsuccessfully arguing on grounds related to trademark law and fair use allowances. 

Moreover, in 2020, Netflix's movie "Enola Homes" was the by the estate of Sir Arthur Conan Doyle over “similarities to existing Sherlock Holmes material.” The estate argued that the film depicted a version of Holmes that was not yet in the public domain, illustrating how IP infringement issues can arise when films are based on works still under copyright protection.

Liberty Tax’s recent lawsuit shows that minor alterations to fictitious names may not be enough to bypass trademark infringement issues – not so “sweet” anymore for the “Better Call Saul” team.

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Emily Chow is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On June 10, 2022, Adidas launched its first federal lawsuit against its main competitor, Nike, at the US District Court in Eastern Texas. Demanding a jury trial, the alleges that Nike has conducted nine counts of patent infringement relating to Adidas’ GPS, sensor and wearable technologies.

Both retailers are at the forefront of the sportswear/sporting goods industry, although Nike substantially exceeds Adidas in global sales with a profit of compared to The are Puma ($5.72B), Under Armour ($5.22B) and Lululemon Athletica ($3.75B).

The global sneaker industry, valued at by the end of 2027. According to , a large proportion of Nike’s income comes from footwear, with an estimated revenue of $28 billion USD in 2021 compared to Adidas’ $12.84 billion.

In its complaint, Adidas claims that Nike induced infringements of nine patents through their development of the , , and mobile applications. Adidas also takes issue with shoe line, which launched in 2016 and features self-tightening laces according to the wearer’s foot. The company claims that this is an infringement of Adidas’ existing patent for an that senses and adjusts the comfort of the shoe when worn. was announced in 2004 and released in 2005, touted as the world’s first intelligent running shoe.

In addition to selling sneakers, Adidas and Nike have both developed various mobile applications and exercise companions. According to , features of Nike’s apps – such as location-based GPS run tracking, the creation of training plans, audio feedback, and integration with third party devices – are direct infringements of Adidas’ intellectual property and its app.  

Furthermore, Adidas points to similarities between its app, launched in February 2015, and , introduced a few days later. Both apps claim to make buying exclusive products easier and fairer for users, . The patented technology in question is , “systems and techniques for computer-enabled geo-targeted product reservation for secure and authenticated online reservations,” which allows Adidas to confirm a and prevent a bot from reserving the product in advance of the launch.

Adidas seeks a declaration from the court that Nike has infringed its patents, a permanent injunction, and compensatory damages, that “unless enjoined by this Court, [Nike’s] acts of infringement will continue to damage adidas irreparably.”

This new lawsuit comes at the and corresponding lawsuit filed in Oregon in December 2021. Nike sought to ban the import of shoes, accusing Adidas of appropriating Nike’s patented technology – a special knit weave made up of recycled and reclaimed yarn that creates a sock-like fit for the wearer.

The in Washington is often a forum for companies competing in the global market. Given the ITC’s relatively faster decisions – 15 to 18 months – , the ITC offers an expedited, comprehensive mechanism for addressing patent infringements.

Back in 2005, Nike also sued Adidas in East Texas. However, the companies It will be interesting to see how the ITC and Oregon verdicts will affect both companies’ strategies moving forward.

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