Tyler Litwak

Tyler Litwak

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

 

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