Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. A recent order from the Second Circuit of Appeals requested briefing from the defendants in the recent Andy Warhol-Prince fair use case as to whether the Google v. Oracle decision from the Supreme Court has any impact on the Second Circuit’s recent fair use opinion in favor of photographer, Goldsmith, and against the Warhol Foundation. After the Second Circuit’s recent fair use opinion, the Warhol Foundation petitioned for panel rehearing or rehearing en banc. In response the Second Circuit invited a response to the petition from Goldsmith, suggesting a possibility that the Court may reconsider its prior fair use decision against the Foundation with respect to the embellishment to Goldsmith’s photograph of Prince. The takeaway here is that fair use law is in substantial flux right now, making many different arguments available to plaintiffs and defendants provided one knows the case law.
2. In an order following the remand from the Supreme Court in Romag v. Fossil, the district court considered the impact of Fossil’s alleged scienter on whether a disgorgement of profits was warranted, and if so, the amount. In 2020, the Supreme Court resolved a circuit split as to whether a showing of willful infringement is required in order to disgorge a defendant’s profits in a trademark infringement case. It concluded that willfulness was not required for disgorgement, but was a highly important consideration in the analysis. On remand, the District of Connecticut applied the Supreme Court’s ruling, considered the scienter aspect in terms of not only disgorgement, but the extent of disgorgement, if any, and awarded profits, but did not increase or enhance the award because Fossil’s scienter was determined to be negligent, at most. This is a helpful post-SCOTUS guide to the application of the updated profit disgorgement analysis for trademark infringement cases.
3. In a recent decision from the Southern District of New York involving the iconic Rubik’s Cube, a Magistrate Judge rejected the defendant’s argument that the black “grid” and colored squares of the Rubik’s Cube in combination were functional and not eligible for trade dress protection. The defendant’s product had a white grid and rounded corners on the individual cubes. The Court did not believe the coordinated color scheme of the Rubik’s Cube were essential to the purpose of solving the puzzle, and therefore, was not functional. The Court, however, noted that the question of infringement would have to go to a jury. This may be delayed by the likely objection by the defendant to the Magistrate Judge’s Report and Recommendation on the issue. It appears that the plaintiff was fairly specific in designating what it claimed to be its trade dress, which is a wise thing to do in a trade dress infringement case.
