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October / November 2021 IP Newsletter

October 1, 2021

Copyright’s fair use defense
Court clarifies “transformative use” analysis
In a colorful copyright case involving iconic artists Prince and Andy Warhol, the U.S. Court of Appeals for the Second Circuit agreed with a photographer’s objection to Warhol’s use of her photo of Prince. According to the court, the fair use defense to copyright infringement wasn’t available because Warhol’s series based on the photographer’s photo retains the essential elements of the photo without significantly adding to or altering them. This article summarizes the case, while a short sidebar highlights the proposal by two judges of the U.S. Court of Appeals for the Second Circuit for a different approach to the fair use analysis.
The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420-cv (2d Cir. March 26, 2021).

Alice strikes again
Targeted advertising is patent-ineligible
The U.S. Court of Appeals for the Federal Circuit Court has dispatched yet another patented invention to the wasteland of patent-ineligible abstract ideas under the Alice test. This article summarizes the court’s ruling reaffirming that targeted advertising can’t be patented.
Free Stream Media Corp. v. Alphonso Inc., Nos. 19-1506, -2133 (Fed. Cir. May 11, 2021).

When is initial-interest confusion trademark infringement actionable?
A trademark battle between sellers of adjustable air mattresses led the U.S. Court of Appeals for the Eighth Circuit to put to bed the question of whether it recognizes a trademark infringement theory already accepted by most federal courts of appeal. More than a decade after sidestepping the question, the court confirmed that it views initial-interest confusion as a valid basis for liability. This article examines initial-interest confusion, but notes that the Eighth Circuit made no comment on how such confusion might affect the analysis of remedies and damages.
Select Comfort Corp. v. Baxter, No. 19-1113 (8th Cir. May 11, 2021).

Establishing “actual use” standard in service mark infringement cases
The U.S. Court of Appeals for the Tenth Circuit recently faulted a lower court for applying the wrong legal standard when determining whether a service mark infringement plaintiff had actually used the mark. This short article reviews the actual use standard in service mark infringement cases.
Underwood v. Bank of America Corp., Nos. 19-1349, -1087 (10th Cir. April 30, 2021).

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