Two highly anticipated decisions from the Supreme Court of the United States addressed issues of fair use of trademarks and copyrighted works.
JACK DANIEL’S PROPERTIES, INC. V. VIP PRODUCTS LLC
In Jack Daniel’s Properties, Inc. v. VIP Products LLC [opinion], the Supreme Court found that the parody defense is not available where an accused trademark infringer is using the mark as a source identifier.
Under the longstanding Rogers v. Grimaldi test, infringement will not be found by an “expressive work” (e.g., a parody) unless the work has no artistic relevance to its purported target or is explicitly misleading as to the source of the work. At issue here was a squeaky dog toy labeled “BAD SPANIELS”, mimicking the famous whiskey brand’s distinctive bottle, and parodying the label with references to dog droppings. The toymaker argued that its product was a parody, and therefore a fair use, of the Jack Daniel’s mark.
The Supreme Court unanimously reversed the earlier Ninth Circuit decision, agreeing with the district court that where the accused designation is being used as a source identifier—which was undisputed here—the Rogers test is inapplicable. The regular likelihood-of-confusion test is applied instead, though the Court noted that “a parody is not often likely to create confusion,” signaling that the humor of the attempted parody may be taken into account as part of the analysis.
ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC. V. GOLDSMITH
In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith [opinion], the Supreme Court held that a copyright fair-use defense may not prevail where the derivative work achieves the same or similar purpose as the original work.
At issue was a photograph of the musician Prince taken by photographer Lynn Goldsmith. Years earlier, Goldsmith had given a limited license to the artist Andy Warhol to create a derivative silkscreen of a cropped version of the photo for use in an issue of Vanity Fair magazine profiling Prince. After Prince’s death, the Warhol Foundation licensed another version of Warhol’s work based on the Goldsmith photograph without further permission from Goldsmith.
In considering whether a derivative work constitutes a fair use of the original, courts look at four factors, though here the majority opinion focused solely on the first factor examining the character of the later use. Writing for the majority, Justice Sonia Sotomayor concluded that the Warhol work “share[s] substantially the same purpose” as the original, namely, selling or licensing the depiction of the subject for financial gain. Whereas a successful fair use uses the underlying work to serve a different end, the fact that Warhol’s work was of a commercial nature and “substitute[s] for” and “supplant[s]” Goldsmith’s work weighs against fair use.
In their dissent, Justice Elena Kagan and Chief Justice John Roberts argued for a more traditional analysis under the first factor, namely, whether the derivative work was “transformative” (and thus favored a finding of fair use) by adding a sufficiently new purpose, character, expression, meaning, or message.