The Firm congratulates Patent Engineer and Law Clerk, Victor Bruzos, on his recent election as President of the Intellectual Property Law Society at the University of Miami School of Law for the 2021-2022 academic year. IPLS is an active student organization that supports classmates interested in careers in IP. With the help of his executive board, Mr. Bruzos plans to host a range of advanced educational events on emerging IP topics, to strengthen mentorship programs by pairing students with IP practitioners, and to solidify Miami Law’s reputation as the IP leader among law schools.
Latest firm news
Associate Attorney Jared Doster authored an article on the Establishment of a Small Claims Forum for Copyright Cases
Associate Attorney Jared Doster authored an article on the Establishment of a Small Claims Forum for Copyright Cases, which was featured in The IP Examiner, the Federal Bar Association Intellectual Property Law Section’s publication. The article can be found here: https://bit.ly/3wKOJIr.
Firm Partner, Meredith Frank Mendez, will be speaking at the Florida Bar Intellectual Property Symposium on April 23, 2021, serving as a Moderator of a panel on Intellectual Property Litigation. Esteemed panelists include U.S. District Judges Mary S. Scriven of the Middle District of Florida and Darrin P. Gayles of the Southern District of Florida.
We are fortunate, indeed, to have such terrific teammates. All of the Firm’s Partners joined Nancy Cabrera, the lead Paralegal in the Firm’s Patent Department, for a very special lunch to mark a major milestone. As the inscription on her crystal award reads: “Presented to Nancy Cabrera with our great appreciation for 25 Years of dedicated service to clients and co-workers.” Nancy will continue to be the anchor for the Firm’s many Registered Patent Attorneys.
In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (Case No. 19-2420), the United States Court of Appeals for the Second Circuit clarified how to determine whether a copyrightable work is “transformative” such that use of the work is deemed fair under the Copyright Act of 1976. The Second Circuit rejected the bright-line rule proposed by the district court that “any secondary work is necessarily transformative as a matter of law ‘[i]f looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.’” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 19-2420-cv, 2021 U.S. App. LEXIS 8806, at *17 (2d Cir. Mar. 26, 2021) (quoting Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d at 325-26 (S.D.N.Y. 2019)).
In rejecting the district court’s proposed bright-line rule, the Second Circuit stated the analysis for transformative works in the context of fair use cannot simply rely on the “stated or perceived intent of the artist or the meaning or impression that a critic—or for that matter, a judge—draws from the work.” Warhol, 2021 U.S. App. LEXIS 8806, at *25. Instead, a judge must determine whether a secondary work “stands apart from the ‘raw material’ used to create it” by examining “whether the secondary work’s use of its source material is in service of a “fundamentally different and new” artistic purpose and character . . . .” Id. at *26.
Additionally, the Second Circuit issued a warning to future courts, cautioning them not to “assume the role of art critic . . . to ascertain the intent behind or meaning of the works at issue” when engaging in fair use analyses. See id. at *25. With the case currently on remand, the district court will have another opportunity to determine whether the use of Goldsmith’s photograph in preparation of Andy Warhol’s Prince Series constitutes a fair use.
The images above are provided in the Complaint filed by The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”). The decision can be found at the following link: https://www.ca2.uscourts.gov/decisions/isysquery/68f30721-3c0f-4864-8d2c-e5186beae10b/2/doc/19-2420_complete_opn.pdf
Nusret Gökçe, better known as “Salt Bae”, (the “Defendant”) is the Turkish chef and restaurateur who rose to fame in 2017 through a series of viral Internet videos and memes showing his technique to prepare and season meat.
On April 12, William Logan Hicks (the “Plaintiff”), an artist based in Brooklyn, New York, best known for his photorealistic stenciled paintings and murals, filed suit in the U.S. District Court Southern District of New York against the Defendant and its related entities (the “Defendants”) for copyright infringement. In the Complaint, the Plaintiff alleged that after being commissioned, alongside another artist, to create several original murals depicting “Salt Bae” is his “salt-sprinkling pose” in late 2017, the Defendants decided “that rather than continue to lawfully contract and compensate [the Plaintiff] for additional use of his copyrighted images, they would instead willfully engage in a massive, global infringement scheme in complete disregard for [the Plaintiff’s] rights under the law”. The Plaintiff holds copyright registration VAu001293548 in the Pattern. Joseph Iurato (non-party) obtained copyright registration VA0002244316 in the Stencil and, thereafter, assigned all rights in the Stencil to the Plaintiff pursuant to a copyright assignment agreement. Accordingly, the Plaintiff is the owner of the copyrights in both Original Works. An image of the Original Works included in the Complaint is below:
The Defendants requested that the Plaintiff and Mr. Iurato combine the Original Works to create the final artwork for the Defendants’ Miami steakhouse (“Miami Artwork”). In November 2018 and February 2019, respectively, the Defendants’ commissioned the Plaintiff and Mr. Iurato to create additional artwork derived from the Original Works to be displayed in other restaurants. By early 2020, the Plaintiff claimed to have discovered the Defendants’ were “engaging in widespread, unauthorized distribution and use of the Original Works in, among other places, Nusr-et steakhouses and Saltbae Burger restaurants in New York, Dubai, and Istanbul. Among other uses, Defendants have been prominently using the Original Works in their window displays and digital signs, menus, wipes, and takeout bags.” An image of the Miami Artwork, similar to the other commissioned work, included in the Complaint is below:
The Plaintiff seeks actual damages, all of Defendants’ disgorged worldwide profits “attributable to Defendants’ willful copyright infringement“, statutory damages under the Copyright Act, 17 U.S.C. § 504(c), as well as attorney’s fees and costs under the Copyright Act, 17 U.S.C. § 505, $25,000 per violation of 17 U.S.C. § 1202(b), ordering the impounding of all existing copies of the Infringing Materials, Infringing Artworks and Infringing Products under 17 U.S.C. § 1203, and awarding costs and attorney’s fees under 17 U.S.C. § 1203, no less than five million dollars ($5,000,000) in connection with the foregoing claimed damages as a result of Defendants’ “willful unlawful conduct”, an injunction that permanently restrains and enjoins Defendants from copying, reproducing, distributing, adapting, and/or publicly displaying the Infringing Materials, Infringing Artworks, Infringing Products, or any unlawful copy of the Original Works, interest, including prejudgment interest, on the foregoing sums, and any such other and further legal and equitable relief as the Court may deem just and proper.
As detailed in an article published by Firm Associate, H. Jared Doster, in The IP Examiner, the Federal Bar Association Intellectual Property Law Section’s publication (see full article here: https://bit.ly/3wKOJIr), the U.S. Copyright Office will establish a Copyright Claims Board in Washington, D.C. This Board is designed to provide a venue for Copyright holders to file small claims while avoiding the expense of litigation in the Federal Courts. The Register of Copyrights is expected to issue regulations governing the procedures of the Board, but the forum will likely apply relaxed evidentiary standards and expedited determinations. This is an interesting development for individuals and small businesses, as well as overburdened Federal Courts.
Creative Klick Agency LLC (“Creative Klick”), a Florida-based marketing agency, recently brought suit against social media influencer and cannabis businessman Dan Bilzerian and his company, Ignite Spirits, Inc. (“Ignite”). According to the complaint, Bilzerian has more than 32 million followers on Instagram, while Ignite has more than 3 million followers. The complaint alleges that after Creative Klick and Ignite discussed “entering into a formal relationship” with one another where Creative Klick would provide “social media marketing material, including high-end photography,” Ignite requested a few samples of Creative Klick’s work product in conjunction with Ignite’s beverage line, namely vodka bottles. The complaint filed on April 12th goes on to state that although Ignite subsequently claimed that it was deciding how it wanted to move forward with marketing and budgeting, Ignite nevertheless used the samples provided by Creative Klick and posted them to millions of people via Bilzerian’s and Ignite’s Instagram pages. Creative Klick is seeking damages and attorneys’ fees in a three (3) count complaint filed in the U.S. District Court for the Southern District of Florida.
On February 25, 2021, the United States Court of Appeals for the Sixth Circuit handed down a ruling that effectively clarified how the Lanham Act can be applied to direct infringement cases in the context of online marketplaces. In its decision, the Sixth Circuit broadened the scope of its test for direct infringement, holding “use in commerce,” a prerequisite for trademark infringement, can occur in its classic form—through actual product sales—and also through alternative forms such as distribution, advertisement, and the offering of a product for sale. See Ohio State Univ. v. Redbubble, Inc., No. 19-3388, 2021 U.S. App. LEXIS 5610, at *22-24 (6th Cir. Feb. 25, 2021).
The Sixth Circuit’s decision arose out of a March 2019 lawsuit where The Ohio State University (“OSU”) sued Redbubble, alleging, inter alia, Redbubble directly infringed on a number of OSU’s trademarks by selling a variety of products containing OSU’s iconic insignias and school mascot. Ohio State Univ. v. Redbubble, Inc., No. 2:17-cv-1092, 2019 U.S. Dist. LEXIS 53695, at *1 (S.D. Ohio Mar. 29, 2019). Redbubble, a so-called “print-on-demand” online marketplace whose products exhibit user-submitted designs, offers products ranging from tapestries to tank tops, from phone cases to couch cushions, and to many other items in between.
While other online global marketplaces, such as Amazon and eBay, have been able to avoid being held liable for direct trademark infringement due to their hands-off business approaches, the Sixth Circuit has left the door open for Redbubble to be liable for direct infringement due to the amount of oversight it exercises.
The case is Ohio State University v. Redbubble, Inc. (Case No. 19-3388) in the United States Court of Appeals for the Sixth Circuit. The decision can be found at the following link: https://www.opn.ca6.uscourts.gov/opinions.pdf/21a0050p-06.pdf
The U.S. Patent & Trademark Office (“PTO”) recently released data indicating record levels of trademark application filings since the first quarter of 2020.
Over 260,000 trademark applications were filed by Q1 2021 compared to over 151,000 applications filed by Q1 2020. In light of the COVID-19 pandemic, there was a substantial increase in trademark applications filed by the end of 2020. Specifically, Q2 2020 saw 157,877 applications filed, Q3 2020 saw 180,961 applications filed, and Q4 2020 saw 247,807 applications filed. The majority of trademark applications through Q1 and Q3 2020 were filed on an intent-to-use basis. The average time for an Examining Attorney to be assigned to a trademark application has increased from 2.5-3 months to around 4-5 months. Please note that the U.S. PTO’s target number of months from the date of application filing to the Examining Attorney’s first office action is between 2.5 and 4.5 months. By Q1 2021, the total number of new application classes prior to the first office action awaiting examination was 358,298. By Q1 2021, 93,580 trademark applications matured to registrations. Similarly, there has been a gradual increase in registrations since 2018. Learn more on “Trademarks Data Q1 2021 at a glance“.