Trademark and Copyright Cases to Watch in 2023

It’s always good to start off the year with an overview of trademark and copyright cases to watch. This year, we have a couple of cases that we’ve previously discussed on our podcast The Briefing, when they were on appeal with the circuit courts, but now the Supreme Court will bring finality to the issues.

We’ll start with Andy Warhol Foundation v. Goldsmith. In this case, the Supreme Court will decide whether the Andy Warhol Foundation made fair use of a photo of the late artist Prince. In short, the matter at issue will address when a work is sufficiently transformative to qualify for fair use protection under the Copyright Act. In the lower court, the Second Circuit reversed the decision of the District Court and held that the Warhol work was not transformative because it maintained the “essential elements of its source material” and was not “fundamentally different and new.” This will be the first time since 1994 that the Supreme Court has addressed fair use in the context of an artistic work.

Next, we have Abitron Austria GmbH v. Hetronic International. There, U.S.-based remote-control maker Hetronic International sued its former European partner Abitron Austria for trademark infringement. The defendants in that action argued that since 97% of the sales related to the verdict were “purely foreign” and no one affiliated with the companies was based in the United States, Hetronic International needed to pursue the action abroad. Of course, Hetronic disagrees and contends that trademark law under the Lanham Act extends beyond U.S. borders. This case should bring clarity to an issue that is constantly disputed in sizable Lanham Act cases—the materiality of foreign sales.

Next up is my favorite case of the year—Jack Daniel’s v. VIP Products. This is the Ninth Circuit dispute arising out of VIP’s creation of a parodic dog toy styled like a Jack Daniel’s bottle but called Bad Spaniels. The toy is filled with comedic references related to dogs, but it’s no laughing matter to Jack Daniel’s. The case will determine the proper balance between trademark rights and free speech. The District Court and the Ninth Circuit found that VIP’s use was protected by the First Amendment. Now, the Supreme Court will determine whether the Ninth Circuit made the right decision and will provide some guidance and, hopefully, clarity on how these competing interests must be balanced.

Next up, we have Genius v. Google. This action is present before the Supreme Court, but the Court has not yet granted certiorari. Genius sued Google for breach of contract over music transcriptions. In the petition for certiorari, Genius argued that the Second Circuit and the District Court wrongfully found that a preemption clause in the Copyright Act precluded its breach claim against Google and LyricFind for allegedly stealing song lyrics from its site for Google’s search result. The Second Circuit’s decision, affirming the District Court’s decision, held that Genius hadn’t shown that its claims were “qualitatively different” from a copyright claim on lyrics, which notably it didn’t hold the copyright to. The petition states that the Court must clarify whether the Copyright Act’s preemption clause permits a plaintiff to use “state-law contract remedies to enforce a promise not to copy and use its content.” The Supreme Court has requested the Solicitor General’s opinion on whether copyright law preempts the breach of contract claim.

Finally, we have Green v. DOJ. In this case, two computer scientists have challenged the Digital Millennium Copyright Act’s ban on circumventing digital locks on copyrighted works. The engineers filed suit against the federal government, seeking to enjoin enforcement of the DMCA’s anti-trafficking and anti-circumvention provisions. The District Court refused, and the D.C. Circuit affirmed the District Court’s decision. Apparently, the D.C. Circuit also commented that it lacks jurisdiction over claims of facial unconstitutionality on First Amendment grounds because the District Court did not rule on that issue. The case has been remanded to the District Court for further consideration.

Each of these cases could significantly impact IP law. For that reason, we will keep a close eye, and I will likely write about each of these cases as they continue to develop.