This week, the U.S. Supreme Court agreed to hear an appeal filed by the Andy Warhol Foundation to overturn the U.S. Court of Appeals for the Second Circuit’s decision finding that Warhol’s paintings of the musician Prince created in 1984 were not “fair use” of Lynn Goldsmith’s photograph taken in 1981. More specifically, last year the 2nd Circuit held that a “transformative” work must have a “fundamentally different and new artistic purpose and character.” However, Warhol’s paintings were found to be “much closer to presenting the same work in a different form.” Accordingly, the Foundation is now asserting that the Second Circuit‘s ruling “chill[s] artistic expression and undermine[s] First Amendment values” and “casts a cloud of legal uncertainty over an entire genre of visual art” in the hopes that the Supreme Court will recognize that Warhol’s works are fully protected under the law. This impending decision will not only assess what it means to be a transformative work; it will also examine the scope of the fair use defense to copyright infringement.
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Russia Authorizes Infringement of Patents Owned by Holders Associated with “Unfriendly” Countries
Earlier this month in Moscow, Russia’s Chairman of Government Mishustin released a decree effectively allowing patent infringement within the country. The decree amends Russia’s method for determining the amount of compensation paid to a patent owner in the case of infringement. Of course, this news comes in the wake of President Vladimir Putin’s invasion of Ukraine in late February, for which the international community has imposed heavy sanctions on Russia.
Specifically, the decree revises Russian intellectual property law so that, if patent holders are “associated with foreign states who commit unfriendly actions against Russian legal entities and individuals” then “the amount of compensation is 0 percent of the actual proceeds” gained by infringers. In the words of the Russian government, an infringer enabled by this amendment is a “person who exercised the right to use an invention, utility model or industrial design without the consent of the patent owner . . . .” Patent holders may fall within this unprotected class if they are a citizen of an “unfriendly” state, or if such a state is their place of registration, primary business activity, or primary profit from business activity. The list of “unfriendly” countries includes the United States, Canada, the United Kingdom, Japan, South Korea, Australia, all European Union member countries, and, of course, Ukraine.
Patent Infringement in the COVID-19 Pandemic: mRNA Vaccines Take Center Stage
On February 28, 2022, Arbutus Biopharma Corporation and Genevant Sciences GmbH (collectively the “Plaintiffs”) sued Moderna, Inc. and ModernaTX, Inc. (collectively “Moderna”) in the U.S. District Court for the District of Delaware, alleging Moderna had infringed upon six of Plaintiffs’ issued patents in the creation of its COVID-19 mRNA vaccine. This suit marks the first major patent infringement action in the now-rapidly developing landscape of mRNA vaccines.
In its complaint, Plaintiffs alleged, inter alia, that Moderna was able to produce its mRNA vaccine for COVID-19 in “record speed” because it unlawfully used the technologies in U.S. Patent Nos. 8,058,069, 8,492,359, 8,822,668, 9,364,435, 9,504,651, and 11,141,378, which are collectively directed to a lipid nanoparticle (“LNP”) delivery platform that aids in the uptake of specific mRNA sequences into human cells (and without which the uptake of such sequences and eventual production of important proteins would be stymied by the human immune system). Furthermore, the complaint alleges that Moderna was “well aware” of Plaintiffs’ issued patents, as it had “licensed them for other product programs . . . but chose not to do so for its COVID-19 vaccine,” and unsuccessfully “attempted to invalidate several of [Plaintiffs’] patents” through inter partes review (IPR) proceedings.
Plaintiffs did not seek a preliminary injunction—as they claimed they did not want to “impede the sale or manufacture of Moderna’s life-saving vaccine”—but rather only requested damages, stating that “[a]ll Plaintiffs seek is the compensation due to them under the patent laws of the United States and as a matter of simple fairness.” If Plaintiffs prove to be successful in their suit, the resulting damages could total in the tens of billions of dollars.
This case is Arbutus Biopharma Corp. et al. v. Moderna, Inc. et al., Case No. 1:22-cv-00252. The complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zgpomzkbzpd/IP%20MODERNA%20PATENTS%20complaint.pdf
Kendall Jenner’s 818 Tequila Brand Sued for Trademark Infringement
“The Kardashian-Jenner family strikes again,” says ClipBandits, LLC, owner of the brand Tequila 512. On February 16, 2022, ClipBandits filed suit in the Central District of California against K & Soda, LLC, known for doing business as 818 Spirits, for trademark infringement, false designation of origin, and unfair competition. Reality television star and fashion supermodel Kendall Jenner debuted 818 Spirits in May 2021 as her own tequila brand, and it quickly skyrocketed in popularity.
ClipBandits has a federal trademark registration for its “512” mark, which it applied for in 2008 and registered in 2013. Following the launch of Jenner’s brand, however, ClipBandits filed another trademark application for “TEQUILA 512” and Design in an effort to protect the elements featured on the Tequila 512 label.
In its Complaint, ClipBandits accuses 818 Spirits of “simply and blatantly” copying the Tequila 512 logo and color scheme, in addition to similarly choosing a “prominent area code” with “a central 1” as its brand name. ClipBandits further argues that there has been actual consumer confusion in the marketplace, which has damaged the Tequila 512 brand. More specifically, ClipBandits submits that 818 Spirits is not entitled to “steal sales . . . through its deception” or transfer to Tequila 512 the “substantial ill-will” associated with 818 Spirits (due to accusations of “cultural insensitivity”). ClipBandits states that 818 Spirits can “shoot itself in the foot with its own positioning and marketing,” but “cannot be allowed to drag [Tequila 512] down with them.”
Kobe Bryant’s Estate Files Trademark Applications Signaling Bryant’s Expansion Into the Metaverse
Hall of Famer and NBA legend Kobe Bryant obtained numerous trademarks during the course of his career. Through is company Kobe, Inc., Bryant registered trademarks spanning from footwear, wine, and apparel. Signaling the NBA legend’s expansion into the metaverse and digital experiences, Kobe Bryant’s estate (through Kobe, Inc.) recently filed trademark applications for KOBE BRYANT, MAMBACITA, and MAMBA FOREVER. The applications seek to protect the Los Angeles Laker’s image and likeness as it relates to virtual and digital goods, including art, avatars, and collectible coins.