Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In keeping with the ongoing discussion of fair use in copyright law, another recent decision from the Second Circuit Court of Appeals found that the Metropolitan Museum of Art’s use on its website of a photograph of Eddie Van Halen and his “Frankenstein” guitar (which was “forwarded” in the Met’s use of the photograph) was a fair use. The purpose of the use of the photograph by the Museum was to comment on the guitar’s place in the development of guitar technology, which differed than the purpose of the original photograph, which, according to the photographer, was to show Eddie Van Halen performing. The Second Circuit also found that the use was not commercially exploitive because the Met is a non-profit entity, and the website access is free. The Court also said that the Met’s use would not interfere with the commercial value of the photograph for the photographer (a conclusion that was not really explained). Thus, the Met’s use of the photograph on its website was a fair use. The takeaway here may simply be that fair use determinations are very factually intensive, and reading too much into the possible trends of recent rulings may be unwise.

2. In a recent copyright case, the District of Minnesota denied a motion to dismiss filed by retailer Target against, essentially, a teenager with autism who had created a series of scribble dots (or “sketch-style dot art”) that Target apparently had seen on Instagram, that had been copyrighted, and that Target incorporated, without permission, into a line of children’s clothing and related products. Target argued that there was no substantial similarity between the copyrighted works and the accused products. Taking the allegations in the complaint as true, as the Court must on a motion to dismiss, the Court indicated that the “sketch-style dot art” warranted copyright protection, and that there were sufficient indicia of substantial similarity such that the motion to dismiss should be denied. The takeaway here is that clients should be careful in “borrowing” art from social media accounts of others. Just because something is on the internet does not mean it is free for the taking.

3. In a recent decision from the Southern District of Ohio, the Court determined that there was no right to a jury trial in connection with a design patent infringement claim where the remedy sought is disgorgement of defendants’ profits under 35 U.S.C. 289. The Court analyzed the right to jury trials in disgorgement scenarios, and determined that there was none. The defendants then requested a bench trial, and the Court determined a bench trial was not required either. The takeaway here is that for disgorgement of profits remedies in design patent infringement cases, there is no entitlement to a jury trial. We previously wrote about a similar determination in trademark cases (Takeaway No. 1).