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Does a legendary artist’s creation of 16 artworks known as the “Prince Series” constitute fair use of a 1981 picture taken by renowned photographer Lynn Goldsmith?

On July 1, 2019, Justice John G. Koeltl from the United States District Court for the Southern District of New York issued the Opinion and Order. In the Opinion and Order, the Court finds that Andy Warhol’s “Prince Series” constitutes fair use and does not infringe Lynn Goldsmith’s copyright over the Goldsmith Prince Photograph.

Andy Warhol is one of the most celebrated American artists of the 20th Century. Warhol created works about widely circulated images of celebrities, and everyday items such as Campbell’s soup cans and Brillo pads. Museums and universities across the globe display his works which are viewed by millions of people. In 1984, Warhol created a series of portraits of world famous singer Prince Rogers Nelson, commonly known as “Prince.” The portraits reference Lynn Goldsmith’s, a famous rock and roll photographer, photograph of Prince taken in 1981 (“Goldsmith Prince Photograph”).

On April 7, 2017, the Andy Warhol Foundation for the Visual Arts, Inc. (“Foundation”) filed a complaint against Lynn Goldsmith and Lynn Goldsmith, Ltd. seeking a declaratory judgment that (1) the portraits in Warhol’s “Prince Series” do not infringe upon Goldsmith’s copyright in the photographs, (2) the portraits are transformative or are otherwise protected by fair use, and (3) Goldsmith’s claims are barred by the statute of limitations and the equitable doctrine of laches.

On June 9, 2017, Goldsmith filed a counterclaim for copyright infringement against Warhol’s “Prince Series,” specifically against the portrait appearing on the 1984 Vanity Fair publication which was newly published with color by Condé Nast on the cover of a May 9, 2016, special Prince tribute magazine. Per the counterclaim, in 1984, Vanity Fair’s photo department solicited Goldsmith for submission of one of the Prince images from her 1981 Newsweek photo shoot, which Warhol ultimately illustrated. The agreement between Goldsmith and Vanity Fair included that the Goldsmith Prince Photograph was for a one-time use. The counterclaim provides that Condé Nast created and released the 2016 Publication as a special tribute issue to Prince’s life, using for its cover a different color version of the same image Warhol created for Vanity Fair in 1984, based on Goldsmith’s 1981 photo. Condé Nast licensed the image from the Foundation and not Goldsmith. The counterclaim alleges Warhol commercially used the Goldsmith Prince Photograph without Goldsmith’s permission on several occasions.

Copyright refers to an author’s right to control the use of their work for a limited period of time. Copyright protection arises under federal law and is codified under Title 17 of the United States Code. Copyright law protects literary, musical, dramatic, choreographic, pictoral, graphic and sculptural works, motion pictures and other works. Original works, fixed in a tangible medium of expression, are eligible for copyright protection. Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. A copyright owner may transfer, license, sell, donate, or bequeath their rights. Depending on the work, Copyright protections last anywhere from 70 years after the author’s death to 120 years from the work’s creation. Although original works fixed in a tangible medium of expression receive immediate copyright protection, registration with the federal government allows copyright owners to file copyright infringement claims against infringers.

Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. To prevail, a plaintiff must prove its ownership of a valid copyright and a copying of elements of the work that are original.

Fair use is a codified legal doctrine under Section 107 of the Copyright Act and functions as a statutory exception to copyright infringement. Fair use limits the protections offered by copyright law by ensuring copyright law does not encroach upon the public’s freedom of expression. Fair use limits copyright law by permitting use of copyrighted works by the public under certain circumstances. The Copyright Act lists the following four factors for determining fair use: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The first factor considers whether the secondary work “is of commercial nature or is for nonprofit educational purposes.” The most important consideration under the first factor is the “transformative” nature of the work at issue. Generally, the more transformative the new work, the less will be the significance of other factors. In the Opinion and Order, the Court finds that the first factor favors the Foundation, holding that the works in the “Prince Series” are transformative of the Goldsmith Prince Photograph because the “Prince Series” “have a different character, give the Goldsmith Prince Photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” Specifically, all but one of the works in the “Prince Series” remove Prince’s torso and bring his face and neckline to the forefront. Additionally, the “Prince Series” depicts Prince as two-dimensional and uses loud unnatural colors.

The second factor calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied. Courts consider whether the copyrighted work is (1) creative or factual and (2) unpublished versus published. Here, the Court finds that the second factor favored neither the Foundation nor Goldsmith stating that although unpublished works enjoy additional protection against fair use, this bears little weight on the case because Goldsmith licensed her photograph to Vanity Fair.

The third factor considers whether the quantity and value of the materials used are reasonable in relation to the purpose of the copying. The Court finds that although Warhol initially used Prince’s head and neckline as they appear in the Goldsmith Prince Photograph, Warhol removed nearly all protectable elements from the Goldsmith Prince Photograph, such as Prince’s crude and creative facial features which evoked the desired expression. Thus, the Court finds that the third factor favors Warhol.

The fourth factor considers the effect of the use upon the potential market for or value of the copyrighted work. This factor focuses on whether the alleged infringing work “usurps” the market or derivative markets for the original work. The Court finds that the fourth factor favors Warhol because the “Prince Series” works and the Goldsmith Prince Photograph are not market substitutes and do not harm Goldsmith.

The Opinion and Order concludes the action.

Can a popular yoga-inspired apparel company enforce its intellectual property rights against a discount retail chain store?

On June 20, 2019, upscale Canadian yoga-inspired apparel company, Lululemon Athletica, filed a lawsuit in the United States District Court for the Northern District of California alleging federal trademark infringement, federal trademark counterfeiting, and both federal and state unfair completion claims against discount retailer Ross Stores, Inc. and its athletic apparel supplier, Impulse Off Price Apparel (“IOPA”), for importing and selling cheap counterfeit copies of Lululemon’s high-end leggings.

As known by many fans and consumers, Lululemon is a leading designer and retailer of high-quality, yoga-inspired athletic apparel.  The Canadian athletic apparel company founded in 1998 develops, manufactures, and sells premium apparel including shirts, shorts, pants, and leggings along with other products such as yoga mats, bags, and accessories.  Per the complaint, Lululemon’s products are designed to offer performance, fit, and comfort while incorporating both function and style, which allow Lululemon to address the needs of athletes and consumers. Lululemon’s products all bear its distinctive trademarks.

The complaint provides that Lululemon owns and widely promotes several trademarks which have earned substantial fame and considerable goodwill among the public.  Lululemon’s registered trademarks include registration nos. 4391115, 4367598, 2607811, 2460180, 4345516, 5393854, which include marks for “LULULEMON” and the “Upside-Down U Seam.”  The complaint provides that Lululemon’s Trademarks attributed to its high level of brand recognition and that as a result of Lululemon’s longstanding and widespread use and promotion of the Lululemon trademarks, Lululemon’s customers worldwide have come to rely upon Lululemon’s trademarks to identify its high-quality goods and services.  

In March 2019, Lululemon representatives bought 20 counterfeit leggings from Ross Stores, Inc. operated dd’s DISCOUNTS stores in San Leandro and Hawthorne for $7.99 each.  Lululemon’s All the Right Places Plant II and Fast & Free Tight usually retail for $128 each.  Per the complaint, Lululemon representatives analyzed the counterfeit leggings and determined that the counterfeit leggings were among the lowest-quality counterfeit leggings.  Lululemon makes their famous All the Right Places Pant II and Fast & Free Tights using smooth, four-way stretch Full-On Luxtreme fabric and Lululemon’s Nulux quick-drying, seat-wicking fabric.  Unlike the four-way stretch Full-On Luxtreme fabric and the Nulux quick-drying fabric which compose Lululemon’s products, thin inexpensive polyester blends compose the counterfeit leggings. 

The complaint alleges that Ross Stores, Inc. and IOPA imported, advertised, distributed, and sold at least 1,000 counterfeit leggings to consumers and retailers, and that Ross Stores, Inc. and IOPA were aware of or willfully blind to the fact the leggings were counterfeit.  Lululemon supports its allegation that Ross Stores, Inc. and IOPA were aware of or willfully blind to the fact that the leggings were counterfeit due to the difference in quality between the counterfeit and original Lululemon leggings.  Lululemon claims that Ross Stores, Inc. and IOPA know that Lululemon only sells its products through its website, outlet stores, and strategic partners such as premium yoga studios, gyms, and wellness centers.  

The complaint further alleges that IOPA imported counterfeit leggings bearing marks identical or substantially indistinguishable from Lululemon’s trademarks.  Lululemon claims Ross Stores, Inc. and IOPA confused consumers through selling counterfeit leggings branded with identical or substantially indistinguishable trademarks from Lululemon’s trademarks.  In support of its allegation, Lululemon identifies social media posts indicating consumers actually believed they purchased authentic Lululemon leggings from dd’s DISCOUNTS.

The lawsuit includes federal trademark infringement, federal trademark counterfeiting, and federal and state unfair completion claims against Ross Stores, Inc. and IOPA.  

To succeed on its trademark infringement claim, Lululemon needs to demonstrate that it has valid and subsisting trademark rights in its “LULULEMON ATHLETICA” (U.S. reg. no. 2607811), Lululemon logo (U.S. reg. no. 2460180), and “LULULEMON” (U.S. reg. no. 4391115) trademarks and that the counterfeit leggings use a mark that is confusingly similar thereto. In other words, Lululemon needs to demonstrate that the use is likely to confuse a consumer regarding the source and origin of the leggings sold in the discount retailers, and is likely to cause confusion or mistake and to deceive purchasers as to Lululemon’s affiliation, connection, or association with, or approval or sponsorship of the counterfeit leggings.

To succeed on its trademark counterfeiting claim, Lululemon needs to demonstrate that Ross Stores, Inc. and IOPA intentionally used the counterfeit marks in commerce while knowing the marks were counterfeit.  Lululemon also needs to demonstrate that Ross Stores, Inc. and IOPA used the counterfeit marks in connection with the sale, offering for sale, or distribution of the alleged counterfeit leggings, and that this use was like to confuse or deceive consumers regarding the source and origin of the leggings sold in the discount retailers.

To succeed on both the federal and state unfair competition claims, Lululemon must establish that it holds valid and subsisting trademark rights in its trademarks.  Additionally, Lululemon must establish that the use of the marks on the counterfeit leggings is likely to cause consumer confusion with respect to the source and origin of the leggings, and with respect to Lululemon’s affiliation with the counterfeit leggings.

Lululemon seeks a court order prohibiting Ross Stores, Inc. and IOPA and their agents, servants, employees, and any related persons or entities acting in concert with them from unlawfully using and/or counterfeiting the Lululemon trademarks or any marks confusingly similar to the Lululemon trademarks.  Lululemon also seeks an order requiring Ross Stores, Inc. and IOPA to destroy the remaining counterfeit leggings.  Naturally, Lululemon seeks damages to the fullest extent available under the law.

Can trademark law protect “instantly identifiable” fragrances such as Le Labo’s Santal 33?

Unfortunately for fragrance connoisseurs and veterans such as Eddie Roschi and Fabrice Penot, founders of the world-famous Le Labo’s Santal 33 fragrance, trademark law does not offer protections against copycats.  Although consumers often “instantly” link the scent to a brand as they would “instantly” link a brand name to a brand, trademark law does not protect scents in the same way as it protects name brands.

In 2006, Eddie Roschi and Fabrice Penot, fragrance connoisseurs and veterans, founded Le Labo in New York.  The founders met while working together for Giorgio Armani’s perfume division.  Since its inception in 2006, the world-famous fragrance maker expanded to more than 50 locations across the globe.  As of November 3, 2014, Le Labo operates as a subsidiary of The Estée Lauder Companies Inc.  Le Labo separates itself from prestige brands that often spend in excess of tens of millions of dollars in marketing efforts, by focusing its marketing efforts into niche markets.

Perhaps Le Labo’s best know scent is its distinct and popular fragrance, Santal 33.  According to the New York Times, Santal 33 began “as an antipode to mass-market scents.”  The widely popular $180 unisex fragrance is a particular, distinctly musky scent, that combines aromas of leather and sandalwood.  Although Santal 33’s scent creates an instant link to Le Labo in the minds of many consumers, the scent is unable to receive protection under trademark law.

Trademark law protects a wide variety of subject matter.  Very generally, any symbol or device that serves to identify and distinguish both the goods and the source of an entity’s goods from those of another is eligible for trademark protection.  The trademark functionality doctrine limits the extent of trademark law.

The trademark functionality doctrine prevents perfumes, fragrances, and scents such as Santal 33 from being protected by trademark law.  The functionality doctrine prevents trademark law from inhibiting market competition because it allows for control over useful product features.  Under the Lanham Act, a trademark which comprises any matter, that as a whole, is functional, is prohibited from trademark registration.  In other words, trademark law does not protect purely functional trademarks.  Trademark law only protects non-functional and source-identifying trademarks.  Under the functionality test, a product feature is functional, and cannot serve as a trademark, if it essential to the use or purpose of the product or if it affects the cost or quality of the product.  The two general types of functionality are utilitarian functionality and aesthetic functionality.

Utilitarian functionality provides that a product feature is functional if it serves a utilitarian purpose.  In Trafix Devices, Inc. v. Marketing Displays, Inc., the United States Supreme Court held that a product feature is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.”  Accordingly, where a product requires a product feature to optimally function, that product feature may not be protected by trademark law.  

Aesthetic functionality provides that a product feature is functional if it constitutes the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.  For example, a candy box in the shape of a heart may be functional because a consumer may wish to purchase it because of its significance as a gift to a loved one or a significant other.  In contrast, a box without a distinct shape and perhaps only a ribbon surrounding it may not be functional.  In recent years, courts adopted a test for aesthetic functionality which asks whether the allegedly functional design is “necessary to effective competition” between competitors.

Accordingly, this may appear as if trademark law does not protect any scents.  However, this is not the case.  The United States Patent and Trademark Office allows for trademark law protection over scents because scents are not explicitly excluded by the Lanham Act.  In order to be protected by trademark law, a scent must be inherently distinctive or its distinctive nature can be acquired through association of the scent with the scent’s producer.  Practically speaking, this requires those seeking trademark protection for scents to provide substantial proof to prove that a scent is distinctive.  Forms of such proof may include, statements from industry dealers or retailers, advertising evidence, brochures, and advertising expenditures.

Last year, Hasbro the internationally renown toy company and the creator of the iconic Play-Doh, received trademark protection for its distinct Play-Doh smell, which it describes as a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.  Additional scents protected by trademark law include Verizon’s flowery musk scent used in its retailer stores, Grendene’s bubble gum scent used for shoes and flip-flops,  Manhattan Oil’s cherry, grape, and strawberry scents used in connection with lubricants for land and water vehicles, Le Vian’s chocolate scent used in its retail locations, Eddy Finn Ukulele Co.’s piña colada scent used to coat ukuleles, Flip Flop Shop’s coconut suntan oil scent used in its retail locations, Lactona’s strawberry toothbrushes, and Hisamitsu Pharmaceutical Co.’s “minty” pain-relief patches.  

Unfortunately for Le Labo and other fragrance manufacturers, scents that serve a utilitarian purpose cannot be registered as trademarks, even though the scents have acquired distinctiveness.  In other words, these fragrances serve the function of making the consumer smell better, and thus cannot be registered as trademarks and receive protection under trademark law.  Although trademark law may not protect scents such as Santal 33, patent law and trade secret law may do so.

Can an inventor patent a dog-power machine that provides enough power to operate a range of small machinery?

On June 7, 1859, inventor Dexter C. Slater patented a device for using “dog-power” to power a wide-range of small machinery (U.S. Patent No. 24,338).  As silly as such an invention may seem in today’s technologically driven world, Mr. Slater’s invention was not unique in its time.  In the 19th century, a period when dogs were not only “man’s best friend”, but also diligent workers, inventors patented devices and methods for using “dog-power” to operate machinery.  Inventions similar to Mr. Slater’s device include Heinrich Feldt’s dog-powered sewing machine and H.M. Childs’ dog-powered butter churn.

U.S. Patent No. 24,338 describes a device made from an inclined head wheel, shaft, cam, and lever, all arranged and combined in a manner shown by the picture above.  The patent also describes the device as extremely simple that anyone familiar with tools may construct.  It further describes that a dog operates the device by walking on the wheel.  Specifically, a dog rotates the wheel by walking around the wheel.  The wheel’s rotation rotates a cam that creates a vibrating motion, and that is transferred to a lever.  The resulting “dog-power” is harnessed from the lever.

A patent refers to an inventor’s exclusive right granted for an invention.  Specifically, a patent is a property right that allows an inventor to prohibit, or exclude, others from making, using, selling, or offering for sale or importing the patented invention.  An inventor’s patent is protected by the Article 1, Section 8, Clause 8 of the United States Constitution that provides  Congress with the power to, “to prompt the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

In order for an inventor to patent an invention, the invention must be subject matter eligible, new, useful, and non-obvious.  Additionally, the invention may not be an abstract idea, a law of nature, or natural phenomena.  Subject matter eligible inventions include machines, processes, articles of manufacturing, and compositions of matter as provided under Section 101 of the Patent Act.  An invention is new, or novel, if certain public disclosures of the invention have not been made prior to the inventor applying for a patent.  In order for an inventor to patent an invention, the invention must serve a useful purpose.  This requirement is usually easily satisfied.  Finally, an invention is non-obvious if the invention would have been obvious “to a person having ordinary skill in the art to which the claimed invention pertains.”  Practically speaking, a patent examiner determines whether an invention meets this requirement by asking whether the invention would have been obvious to a person having ordinary skill in the type of technology used in the invention.  In 2007, the U.S. Supreme Court increased the difficulty in satisfying the non-obvious requirement holding that the “person having ordinary skill in the art to which the claimed invention pertains” possesses an ordinary level of creativity.  

The United States Patent and Trademark Office (USPTO) grants patent rights to an inventor according to the invention’s subject matter.  The USPTO may issue six different patent types.  The six different types include reissue patents, defensive publications, statutory invention registrations, utility patents, design patents, and plant patents.  The three most common types of patents are utility patents, design patents, and plant patents.

A utility patent protects an invention for a new and useful machine, process or method, article of manufacture, composition of matter, or a new and useful improvement thereof.  A utility patent protects the functional aspects of an invention.  A utility patent is the most common type of patent issued by the USPTO and usually lasts for twenty years from its filing date.  In order for a utility patent to remain valid for the entire twenty-year period, the inventor, or patent holder, is required to pay maintenance fees to the USPTO.

A design patent protects an invention’s aesthetics, or in other words, ornamental features, of an invention.  Design patents differ from utility patents because they only protect the invention’s aesthetic features, and do not protect the functional aspects of an invention.   A design patent lasts for fifteen years from date the design patent is granted.  A design patent holder is not required to pay maintenance fees to the USPTO in order for the design patent to remain valid for the entire fifteen-year period.

A plant patent protects an invention for a new variety of plant, excluding a tuber propagated plant or a plant found in an uncultivated state.  A plant patent protects cultivated sports, mutants, hybrids, new seedlings, algae, and macro fungi.  A plant patent is unique because in addition to discovering the plant, the inventor must also asexually reproduce the plant.  A plant patent lasts for twenty years from its filing date.  Unlike utility patents, plant patents do not require maintenance fees to remain valid for the entire twenty-year period.

Generally, anyone from anywhere can apply for a patent to protect their invention.  In order to receive a patent, an inventor must file a U.S. patent application with the USPTO.  Once an inventor files a patent application, a USPTO patent examiner prosecutes the application.  Prosecution refers to a process during which a patent examiner examines the application to confirm that the patent application conforms with various requirements.  After examining the application, the examiner either accepts the application and issues a patents, issues an objection, or issues a rejection of some or all of the claims.

On June 7, 1859, the USPTO granted Mr. Slater’s application for his “new and Improved DogPower” device.  The patent has since expired.

Both the state of Georgia and a non-profit corporation, Public.Resource.Org (PRO) have filed writs of certiorari with the United States Supreme Court seeking its decision on whether annotations commissioned and approved by the state may be copyrighted. Stated differently, that is, in the manner in which PRO asserts the issue, these parties seek to figure out whether citizens can have access to the raw materials of our democracy.

This case arises out of the Official Code of Georgia Annotated (OCGA), which was re-codified and annotated in the 1970s. At this time, the Code Revision Commission of the Georgia General Assembly contracted with the Michie Company to prepare and publish the OCGA. The Michie Company proceeded to prepare a manuscript containing an unannotated compilation of Georgia statutes, which was then adopted as Georgia’s official code. Michie, then, added annotations and the OCGA, as it exists today, became effective in 1982.

Currently, Georgia is under contract with Lexis Nexis to maintain, publish and distribute the OCGA. States often strike deals of this type with private publishers. PRO, in its petition to the Supreme Court, claims that publishers subsequently use tools to control who has access to the text of the law, how much they must pay, and under what terms. However, to ensure that Georgia law is readily accessible to the general public, pursuant to agreement, Lexis is required to publish the code’s unannotated statutory text online, free of charge. Moreover, a CD-ROM version of the OCGA, complete with annotations, is available to the general public without charge at over 60 state and county-operated facilities throughout Georgia, such as libraries and universities.

PRO is operated by Carl Malamud and its primary activity is publishing government documents online, including several state codes, and encouraging the public to access them for free. Despite knowledge of Georgia’ registered copyright, PRO purchased printed volumes and supplements of the OCGA, scanned them, and posted them online. After PRO refused to comply with cease and desist letters, Georgia filed an infringement suit in district court and PRO counterclaimed for judgment of non-infringement. PRO continued reproducing the OCGA after Georgia had filed its suit.

Copyright subsists in original works of authorship fixed in a tangible medium of expression and covers both published and unpublished works. Copyright grants owners a bundle of exclusive rights, including the rights of reproduction and distribution. This protection only extends to the original expressions of ideas and not the ideas themselves. Thus, even if certain elements in a work are ineligible for protection, other elements may still be protected.

It is well-settled that judicial opinions cannot be copyrighted. The Supreme Court last addressed this matter in 1888 when it ruled that “the whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all.” The so-called government edicts doctrine is a narrow, judicially created exception to copyright protection for certain works having the force of law. Under this doctrine, the standard that is applied is whether the work sought to be registered has “the force of law.” If it does, it cannot be copyrighted. Some lower courts have applied this principle to statutes but the status of other sorts of legal materials has not been definitively resolved.

No statute directly codifies the government edicts doctrine but instead, the Copyright Act provides that “copyright protection is not available for any work of the United States Government.” That being said, there is no parallel provision for works of state and local governments. Moreover, in a compendium issued by the Copyright Office, it was decreed that a work that does not constitute a government edict may be registered as a copyright “even if it was prepared by an officer or employee of a state, local, territorial, or foreign government while acting within the course of his or her official duties.” The Copyright Office also recognizes that copyright protection is available for annotations that summarize or comment upon legal materials issued by the federal, state, local, or foreign government, unless the annotations themselves have the force of law. If this doctrine extends to works that lack the force of law, such as annotations to a statute, those works would thereby be uncopyrightable

Annotations include descriptions of judicial decisions interpreting the statutes. In particular, in viewing a statute, its meaning is not always necessarily clear. Instead, it is usually necessary to go to the annotations, which lead the court decisions where the judges actually inform as to the meaning of the words of the statute. At times, courts will cite to the annotations as authoritative sources on statutory meaning and legislative intent.

The Georgia General Assembly has repeatedly made clear that only the statutory portion of the OCGA has the force of law and that the annotations constitute mere research aids lacking any legal effect. Due to this, Georgia does not claim copyright protection in the OCGA’s statutory text and numbering but does claim that it holds a registered copyright in the annotations thereof.

The district court held the OCGA annotations were copyrightable and that PRO’s activities constituted infringement, thereby entitling Georgia to injunctive relief. The federal appeals court reversed this finding, ruling against the state and for PRO. Unsurprisingly, the state filed a petition with the Supreme Court asking them to take up the question. On the other hand, in an unusual move, despite its success at the appellate level, PRO has also urged the court to hear the dispute. Indeed, PRO contends, approximately 20 other states have claimed that parts of similar annotated codes are copyrighted so this is an important and relevant case.

Can the California-based retailer, Patagonia, successfully assert trademark infringement against Anheuser-Busch for its use of “Patagonia” as applied to its new line of beer?

California-based retailer, Patagonia, recently filed a lawsuit against Anheuser-Busch InBev’s new “Patagonia” beer brand alleging it unlawfully obtained rights to that mark and further that the mark infringes its trademark rights. The lawsuit alleges Anheuser-Busch is deliberately attempting to take advantage of Patagonia’s tremendous goodwill cultivated in their brand.

Patagonia has been in business for more than forty years and has been involved in designing, developing, marketing, and retailing outdoor apparel, sportswear, and related products. Indeed, the clothier’s products now include a wide range of apparel products and equipment, including technical products designed for climbing, skiing and snowboarding, surfing, fly fishing, and trail running. Further, the complaint alleges, for many years, the brand has been famous in the United States and around the world for innovative apparel designs, quality products and environmental and corporate responsibility. Since at least 1973, the brand has been using the logo comprising PATAGNOIA and a multi-colored silhouette of the jagged peaks of the Mt. Fitz Roy skyline.

Seven years ago, according to the complaint, Anheuser-Busch unlawfully obtained a trademark for Patagonia as applied to “beer.” Later, the beer company filed what is known as a “Statement of Use” proving use of the trademark in commerce. Such evidence usually includes the mark as displayed on products, packaging, or other marketing tools. This filing is important because the United States Patent and Trademark Office will not publish a trademark until it is being actively used. Anheuser-Busch stated that the mark was being used as early as 2012 and its specimen of use comprised photographs of a beer bottle with a PATAGONIA label applied thereto. Patagonia complains that this specimen does not show the beer in a commercial context but rather, consists of a single bottle on a table in a white-walled room. The retailer further claims that Anheuser-Busch did not begin actually selling the beer until 2018.

The lawsuit further alleges that Patagonia owns numerous registrations for and including the standard-character PATAGONIA trademark and its classic logo and that these registrations are in full force and effect. Moreover, Patagonia claims it has annually spent enormous amounts of time, money, and effort advertising and promoting the products and services on which their trademarks are used. As a result, Patagonia products are sold all over the world and the brand has acquired enormous goodwill.

To the contrary, Anheuser-Busch only began using PATAGONIA as applied to beer in late 2018 and as such, has not accumulated any trademark rights. Anheuser-Busch’s logo, similar to Patagonia’s, features the term “PATAGONIA” appearing beneath the silhouette of a mountain. Instead, Patagonia argues, Anheuser-Busch’s use of this trademark and logo have caused consumer confusion in the marketplace. Additionally, this allegedly infringing use, Patagonia claims, is likely to cause dilution of Patagonia’s word trademark by diminishing its distinctiveness.

To make matters more obvious, Patagonia started a food business in 2012 called Patagonia Provisions, Inc. Under this company, Patagonia developed, marketed, and sole socially and environmentally responsible food items under its PATAGONIA PROVISIONS mark, including buffalo jerky, salmon, fruit and almond bars, and soup mixes. In 2016, the food division launched its own beer called Long Root, which used a perennial grain, called Kernza, instead of barley to formulate the beer. Kernza has long roots that store carbon in the ground and Long Root beer thereby services as a vehicle to introduce customers to carbon sequestration as a means of removing greenhouse gases from our atmosphere.

In its lawsuit, Patagonia seeks an order that Anheuser-Busch’s marks incorporating “PATAGONIA” be cancelled. In addition, the clothier requested that the court find the beer company’s use of the mark to infringe and dilute Patagonia’s prior trademark rights. Finally, Patagonia seeks damages as well as an injunction against Anheuser-Busch.