On Monday, April 11, 2022, Chris Kopitzke will lead a discussion of the issues before the Supreme Court in the long-running copyright infringement case based on Andy Warhol’s “Prince” series of artworks, and about the CAFC’s recent holding that a party lacked Article III standing to challenge the TTAB’s ruling on likelihood of confusion involving non-competing goods.

In Andy Warhol Foundation For the Visual Arts v. Goldsmith, 11 F.4th 26 (2d Cir. 2021), available here, the Second Circuit amended and affirmed its earlier decision in the same case after a rehearing granted to consider the Supreme Court’s subsequent fair use opinion in Oracle v. Google. The Second Circuit held that a work cannot establish fair use based on a “transformative purpose and character” without “something more that the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material.”

The Warhol Foundation, in its petition for certiorari, available here, presents the question “Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as the Supreme Court, U.S. Court of Appeals for the 9th Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the U.S. Court of Appeals for the 2nd Circuit has held).”

Commentators expect that the Supreme Court will clarify, at least in the context of visual art and particularly appropriation art, the distinction between a derivative work, which requires a license from the copyright owner, and a transformative work, which supports a defense of fair use.,

In Brooklyn Brewery v. Brooklyn Brew Shop, 17 F.4th 129 (CAFC 2021), available here, the Court of Appeals for the Federal Circuit held that although Article III constitutional standing was not required to assert a claim based on likelihood of confusion in an oppotsition or cancellation proceeding before the Trademark Trial and Appeal Board, it is required to appeal a decision on that basis in federal court unless “the challenger and registrant compete in the same line of business,” i.e., that the appellant can demonstrate it would suffer injury from the sale of related goods that the appellant itself does not sell. The Errata issued by the CAFC, available here, on the same day that it denied rehearing en banc, pulls back slightly on the competition requirement by stating that it is “typically” the issue for standing in such an appeal, but leaves undefined what the test for Article III standing would be in a case where the parties are not in direct competition.

This novel requirement of a directly competitive relationship has been criticized by Professor McCarthy as “unprecedented and alarming” and by other commentators as incorrectly interpreting the role of the CAFC in TTAB appeals and departing from the CAFC’s own precedent on standing.

All are welcome to attend the program at noon Pacific Time. To join the discussion, please RSVP via email to elisham @ socalip.com (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. This activity has been approved for one hour of CLE credit.