North America

In Andy Warhol Foundation for the Visual Arts Inc. v Goldsmith et al. No. 17-CV-2532, 2019 (S.D.N.Y. July 1 2019), the US District Court for the Southern District of New York addressed the question of whether Andy Warhol's (Warhol) use of a photograph of Prince Rogers Nelson, best known as Prince, constituted violations of the Copyright Act. Granting the Andy Warhol Foundation's (AWF) motion for summary judgment, the court found that although the at-issue photograph was protected by copyright, AWF had a viable fair use defence.

The reform of August 10 2018 to the Mexican Industrial Property Law substantially changed the Mexican trademark landscape. Among the most relevant changes brought by this legislative reform, particularly the acceptance on behalf of the Mexican Institute of Industrial Property (IMPI) of non-conventional trademark applications – such as smell and sound trademarks – positions Mexico today at the forefront of innovation.

In In re TracFone Wireless, Inc., the Trademark Trial and Appeal Board (TTAB) issued yet another decision finding that a particular designation fails to function as a mark – the subject of over 21% of precedential rulings this year. These decisions highlight the importance of brand owners, marketing teams, advertising departments and legal counsel coordinating effectively.

In Universal Standard Inc. v Target Corp. (S.D.N.Y., No. 18 Civ. 6042), the US District Court for the Southern District of New York addressed the question of whether sharing attorney-client privileged communications with a public relations firm destroys that privilege. The court found that Universal Standard waived the privilege by including its public relations firm, BrandLink, in emails discussing strategy related to the lawsuit.

In In re Hikari Sales USA, Inc., the Trademark Trial and Appeal Board (TTAB) issued a second precedential decision involving genericness, this year, just two days after issuing its first one. In doing so, the TTAB sent a strong message to brand owners hoping to obtain exclusive rights in highly descriptive or otherwise common terms.

A few days ago, a photograph of a bottle of Dutch tequila began circulating on the web. The creators of this product, which has not yet hit the market and probably never will, claim to have improved the taste of original tequila, based on Dutch gin, and now feel ready to enter the European market.