Art Akiane, LLC v. Art & SoulWorks LLC et al., No. 1:19-CV-02952, Slip Op. (N.D. Ill. Mar. 31, 2026) (Chang, J.).
Judge Chang resolved numerous claims and defenses arising from the breakdown of a nearly two-decade-long licensing relationship between artist Akiane Kramarik’s licensing entity (Art Akiane) and her former retailer (Art & Soulworks). The Court granted Fed. R. Civ. P. 56 partial summary judgment to both sides on various issues while sending most disputed claims to trial, and denied Art Akiane’s motion to hold Defendants in contempt of a prior preliminary injunction (PI).
Under a licensing agreement first executed in 2008 and renewed through January 2019, Art & Soulworks reproduced Akiane’s artwork on products like greeting cards, journals, and bookmarks in exchange for royalties. After Art Akiane elected not to renew, Art & Soulworks continued displaying montages of Akiane’s artwork on social media, offering free downloads of her Prince of Peace painting, and using the phrase “Art by Akiane” on its products. Art Akiane brought claims under the Copyright Act, DMCA, Lanham Act, Illinois Deceptive Trade Practices Act, Illinois Right of Publicity Act, and common law claims.
Copyright Infringement: The Court drew a clear line between pre- and post-License conduct. For post-License display of promotional montages incorporating Akiane’s artwork, Art Akiane was entitled to summary judgment. Even if Art & Soulworks could create limited-use derivative works during the License, there was no such authority after expiration. Citing Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983), the Court held that the License contained no explicit authorization for Art & Soulworks to produce derivative works, nor could Art & Soulworks claim ownership of any derivatives. But for conduct during the License period, genuine issues of material fact remained as to whether Art Akiane implicitly consented to promotional montages.
Lanham Act false designation of origin claim: The Court granted summary judgment to Art Akiane. Analyzing the unregistered mark “Akiane” as a personal name with strong secondary meaning given its uniqueness and 20 years of use in commerce the Court held that Art & Soulworks’ use of “Art by Akiane” on products created a likelihood of confusion as to authorization and affiliation. A former licensee “cannot create its own mark by simply adding the words ‘Art by’ to its licensor’s existing mark.” For post-License conduct, Art & Soulworks was also liable for any usage of “Art by Akiane” or “Official Source” in connection with product sales.
Among other significant rulings, the Court held:
- that Art Akiane’s common law unfair competition and Illinois Deceptive Trade Practices Act claims survived copyright preemption because they require consumer confusion beyond mere copying;
- dismissed the unjust enrichment claim as preempted;
- denied the Defendants’ waiver and estoppel defenses due to genuine disputes of material fact;
- granted summary judgment to Art Akiane on breach of contract for $23,413.74 in admitted unpaid royalties;
- dismissed Art Akiane’s Anti-Cybersquatting claim because “Prince of Peace” is a generic biblical reference not protectable as a trademark; and
- granted summary judgment to Art Akiane against all of the Defendants’ counterclaims.
Contempt: The Court declined to hold Defendants in contempt despite admitted violations of the PI, crediting Art & Soulworks’ explanation that inadvertent republication of infringing content was caused by website modifications and was cured within a reasonable timeframe. However, the Court modified the injunction with more specific directives.