Wilt Toikka Kraft LLP

Artistic Freedom: Fair Use Defense Highlights Infringement Conflict

In a recent ruling, the US Court of Appeals for the Fifth Circuit affirmed the application of the fair use defense in a copyright infringement case, stating that a district court’s sua sponte (on its own accord) invocation of this defense for related trademark claims constituted harmless error. The Court also confirmed that the district court did not abuse its discretion in awarding attorneys’ fees based on the prevailing party standard in copyright cases. This decision stems from *Keck v. Mix Creative Learning Center, L.L.C.*, Case No. 23-20188 (5th Cir. Sept. 18, 2024) (Judges Jones, Smith, Ho).

Multimedia artist Michel Keck initiated legal action against Mix Creative Learning Center, a Texas-based art studio, for copyright and trademark infringement. The studio had sold art kits featuring Keck’s dog-themed artwork and a brief biography, aimed at facilitating at-home learning during the pandemic. Keck had registered her Dog Art series as decorative works with the US Copyright Office and her name as a trademark with the US Patent & Trademark Office, claiming that Mix Creative’s kits infringed her rights. After being informed of the lawsuit, Mix Creative promptly halted the sale of the kits.

After discovery, both parties filed cross-motions for summary judgment. The district court ruled in favor of Mix Creative, granting summary judgment on Keck’s copyright claim based on fair use, and also granted summary judgment on the trademark claim sua sponte, as both parties agreed that fair use applied to both issues. The court awarded Mix Creative over $100,000 in attorneys’ fees and costs but did not hold Keck’s attorneys jointly and severally liable.

Keck appealed, contesting the copyright fair use ruling and the sua sponte application of fair use to the trademark claim. Meanwhile, Mix Creative challenged the district court’s decision not to hold Keck’s attorneys jointly liable for fees.

The Fifth Circuit upheld the district court’s finding regarding the fair use defense in Keck’s copyright claims, focusing on the first and fourth factors (the purpose and character of the use and the impact on the potential market for the original work). The Court noted that these factors typically receive special attention in fair use analyses.

On the first factor, the Fifth Circuit concluded that Mix Creative’s use was transformative. While Mix Creative operated as a commercial entity, the educational intent of the art kits differentiated them from Keck’s original decorative works, leading to a low likelihood of the kits substituting for Keck’s works in the market.

The fourth factor also favored Mix Creative, as the Court found no evidence that the kits would diminish the market value of Keck’s original pieces. In fact, the Court suggested that the kits could enhance Keck’s visibility and sales, acting as free advertising. Additionally, Mix Creative operated in a distinct market (educational rather than decorative), and Keck had not shown any precedent of selling derivative works for children’s art lessons. The inclusion of publicly available images in the kits was deemed unlikely to affect the market for Keck’s professional reproductions.

The Fifth Circuit further supported the district court’s sua sponte application of fair use to the trademark claim, noting the mutual agreement on this point. Finally, the Court affirmed the award of over $100,000 in attorneys’ fees to Mix Creative, stating that awarding fees to the prevailing party in copyright cases is typically standard practice. The Court found no abuse of discretion regarding the decision not to hold Keck’s attorneys jointly and severally liable for the awarded fees.

Our DC IP attorneys note: Ultimately, the fair use defense effectively shielded Mix Creative from both copyright and trademark infringement claims. The Fifth Circuit’s ruling highlights the significance of considering the fair use defense in cases that involve educational or transformative purposes.

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