Weekly IP Takeaways

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

1. In an amended opinion, the Second Circuit Court of Appeals reached the same finding of no fair use in the dispute between photographer Lynn Goldsmith and the Andy Warhol Foundation in connection with a photograph of Prince, which was subsequently embellished in the Warhol style. We previously wrote about the Second Circuit’s original opinion in this case (Takeaway No. 2), as well as the Second Circuit reviewing its opinion (Takeaway No. 1) in light of the Supreme Court’s Google v. Oracle fair use opinion. The upshot is that the Second Circuit maintained its position that there was no fair use with the Warhol enhancement of the Prince photograph taken by Lynn Goldsmith. The takeaway here is that use of others’ photographs or artwork and making stylistic changes to the prior work may not be a fair use such that copyright infringement can be avoided.

2. In a recent jury verdict out of the Southern District of California, in a case we previously wrote about (Takeaway No. 2), and which was the subject of a previous Federal Circuit decision, the jury determined that there was no design patent infringement. Basically, the issue in the case was whether ornamental branding indicia should be considered as part of the design patent infringement analysis. The Federal Circuit said that it could be, and on remand, a jury found non-infringement. The takeaway here is that previously prevailing wisdom would have said that branding indicia should have no part in the design patent infringement analysis, but the Federal Circuit’s decision, and this jury verdict, seem to be chipping away at such prevailing wisdom.

3. In another design patent case, the Federal Circuit issued an opinion invalidating two design patents based on obviousness. The design patent pertained to gravity feed dispensers used for soup cans. Campbell’s found that these dispensers served to increase soup sales. After using the patent owner’s product for a time, Campbell’s decided to switch vendors, which resulted in a patent infringement lawsuit. Campbell’s and its second vendor petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) based on the obviousness of the design of the dispenser. The PTAB affirmed the validity of the design patents finding that the primary reference was not a proper primary reference. In an initial appeal, the Federal Circuit reversed this decision of the PTAB and remanded. The PTAB again upheld the validity of the design patents continuing to find issues with the primary references, but also finding that secondary indicia of nonobviousness supported patent validity. A second appeal to the Federal Circuit was taken and the Court held that the primary reference was acceptable, and that there was no “nexus” between the secondary indicia of nonobviousness and the “design patent claim’s unique characteristics.” The Federal Circuit also dismissed evidence of copying in light of the strong obviousness showing. This case is important because it requires the “nexus” between any secondary indicia of nonobviousness and the patent to pertain specifically to the unique or novel features of the patent claims, not just the claims or design in general. This is very narrow and would seem to be another nail in the coffin of secondary indicia of nonobviousness as a counter to an obviousness showing. I am concerned about this for the simple reason that secondary indicia of nonobviousness is one of the factors set forth by the Supreme Court in 1966 in Graham v. John Deere that forms part of the obviousness analysis. Yet, it is extremely limited in its application in practice. While patent owners facing an obviousness attack should still look to secondary indicia of nonobviousness as a “defense” to obviousness, the evidence better be strong and specific to the unique and novel features of the claim(s).