Seventh Circuit De-Emphasizes “Transformativeness” in Fair Use Analysis

By David Collins

In Kienitz v. Sconnie Nation LLC, the Seventh Circuit held that transformativeness is not the determinative factor in a fair use analysis. In so holding, the Seventh Circuit set up a conflict with the Second Circuit’s controversial decision in Cariou v. Prince, which held that art that appropriated another person’s photographs may qualify as fair use if it is sufficiently “transformative,” in that it “adds something new” to the original work. 714 F.3d 694, 705 (2nd Cir. 2013). Despite this circuit split, the Supreme Court denied a petition to review Kienitz. This leaves fair use law unsettled and confusing, forcing practitioners to argue different law in different jurisdictions. [Read more here]

Supreme Court Holds that Tacking is a Question of Fact for the Jury

By David Collins

In Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907, 910 (2015) the Supreme Court of the United States reaffirmed that for the purposes of determining priority in trademark disputes between two marks, tacking, or retaining mark priority despite a small change to the mark, remains a question for the jury. Prior to this decision, there was a circuit split: The Ninth Circuit had previously held that tacking was a factual inquiry that is reserved for the jury, while both the Federal and Sixth Circuits saw tacking as a matter of law. The Supreme Court resolved the issue in holding that tacking is a mixed question of law and fact and, as such, the jury’s decision regarding whether a slightly altered trademark can benefit from the priority date of the original mark will remain authoritative. Therefore, practitioners should alter their trademark litigation strategies. [Read more here]

Ninth Circuit Holds First Sale Doctrine Bars Omega’s Copyright Suit Against Costco for Selling Watches

By Andrew McCoy

On January 20, 2015, in Omega S.A. v. Costco Wholesale Corporation, the Court of Appeals for the Ninth Circuit affirmed a district court’s holding that Omega S.A., a watch company, was barred from bringing a copyright infringement claim against Costco for selling Omega watches. The court held that the first sale doctrine barred Omega’s suit because Omega’s copyright distribution and importation rights expired after it made an authorized first sale of the watches in a foreign jurisdiction. This decision came in the wake of a Supreme Court decision, Kirtsaeng v. John Wiley & Sons, Inc., which held that the first sale doctrine applies to copies of a copyrighted work lawfully made abroad. The application of the first sale doctrine to copyrighted goods that are produced and sold outside of the United States could change the way businesses conduct distribution and licensing deals because secondary sellers now have more freedom to sell copyrighted products they purchased abroad. Copyright owners who sell their goods outside of the U.S. will need to find other avenues outside of copyright law if they want to restrict sales in the U.S. [Read more here]

Supreme Court Holds Factual Basis for Claim Construction in Patent Suits is Reviewable Only for Clear Error

By David Collins

In January 2015, the Supreme Court decided Teva Pharmaceuticals, et al. v. Sandoz, Inc., clarifying the standard for appellate court review of patent cases. For nearly 20 years, it has been a settled principle in patent law that claim construction is a question for the judge, not the jury. However, the question remained: what standard of review should appellate courts give claim construction decisions in district courts? Since nearly every patent suit involves a Markman hearing—where a district court judge determines the meaning of the key terms in a patent claim—the Teva decision will affect many appealed patent suits. Teva provides that the Federal Circuit must apply a “clear error,” not a de novo, standard of review to a district court’s resolution of factual matters in claim construction decisions. [Read more here]