Looking Further Under the Airbrushed Hoodie

You may have read on this blog a few weeks ago that Balenciaga America is being sued in the Southern District of New York for having allegedly copied the designs of a New York souvenir manufacturer.

Defendant, Balenciaga USA, had allegedly featured Plaintiff’s designs, a stylized New York City skyline, on a hoodie, a tote bag, pouches and skirts. These luxury models had been designed and produced in France by Balenciaga for its 2017 ‘Balenciaga NYC Tourist Collection,’ whereas Plaintiff’s goods are sold in souvenir shops and airports around New York. 

The case is following its course, and Balenciaga America moved last month to oppose Plaintiff’s motion for a preliminary injunction and an order of seizure. Plaintiff claims that Balenciaga America will be transferring the allegedly infringing merchandise out of the United States and has requested an injunction from the court.

The French fashion house detailed its arguments in a memorandum filed on October 18. It claims that it is holding the 36 products at stake in inventory in the U.S., with no intention to export them, and that the preliminary motion is thus unnecessary. It then goes on presenting its defense to the copyright infringement claim.

The legal standard for preliminary injunction

Section 502 of the Copyright Act gives courts the power to grant temporary and final injunctions in copyright infringement suits.

Before the eBay v. MercExchange Supreme Court patent case in 2006, plaintiffs did not have to show irreparable harm to be awarded injunctive relief, but only needed to establish the likelihood of success of the lawsuit. That changed after eBay v. MercExchange, as the Supreme Court held that a Plaintiff seeking a permanent injunction must show he has suffered an irreparable injury. The Supreme Court further explained in Winter v. Natural Resources Defense Council, Inc. that a plaintiff seeking a preliminary injunction must establish: (1) that he is likely to succeed on the merits; (2) that he is likely to suffer irreparable harm in the absence of preliminary relief; (3) that the balance of equities tip in his favors, and (4) that an injunction is in the public interest.

Plaintiff claims that transferring the products at stake outside of the country would make it more difficult to recover damages for illegal overseas sales. Defendant claims Plaintiff has not showed irreparable harm, and it was merely the importer of the goods in the U.S.  

Defendant quotes Music Sales Ltd. V. Charles Dumont & Son, a 2009 case from the District Court of New Jersey to posit that exporting goods to the U.S. is not infringement under the Copyright Act, unless a predicate act has occurred in the U.S. that is itself infringement under the Copyright Act. Defendant also cited a Second Circuit case, Update Art Inc. v. Modiin Publ’g Ltd., where the court noted that it is “well established that copyright laws generally do not have extraterritorial application.”

Plaintiff does not quote the next phrase in Update Art, which states the exception to the rule, ”when the type of infringement permits further reproduction abroad — such as the unauthorized manufacture of copyrighted material in the United States.” This does not appear, however, to be the case here, as the allegedly infringing designs have been originally designed and produced in France. Selling them in the U.S. does facilitate further reproduction abroad, especially since Defendant wisely pulled these products from the stores.

The copyright infringement defenses

Balenciaga America claims that Plaintiff’s original design is a mere “collage of some of the most well-known landmarks in the New York City skyline” and are not protected by copyright.

These “unprotectible elements” are arranged in a different way than the way they have been arranged by Plaintiff. Balenciaga admits that there may be some similarity in the “look and feel “of both works, but that is because they are both done “in a style that has long been associated with hot rods, graffiti art, and hip hop, a style that is decidedly not original to Plaintiff.” Indeed, hot rod cars are often airbrushed, and both designs mimic this technique. 

As the works at stake contain both protectable and non-protectable elements, Defendant argue that the court must not use the “ordinary observer test,”used by the Second Circuit courts to assess copyright infringement, which asks “whether the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal the same,” but the “discerning ordinary observer test.” This test dos not call for “a piecemeal comparison of each of the protectible elements with its putative imitation, but rather a careful assessment of the "total concept and feel" of the works at issue, after the non-protectible elements have been eliminated from consideration,” Silberstein v. Fox Entertainment Group, Inc.

Defendant argues that both style of the designs are similar only as they “both pay homage to hot rod and graffiti-style airbrushed styles, which belongs to no one (and everyone).” This argument is a bit farfetched, as validating it would mean that no graffiti artists can claim copyright protection for his or her work as the style belongs to no one.

For Defendants, the New York City landmarks must necessarily be used to evoke the city’s skyline and are thus scènes à faire, as “[d]epictions of New York City landmarks and the words “New York City” are stock images and phrases standard in tourist souvenirs.”

Defendant claimed that it arranged these unprotectible elements in a different way than Plaintiff did in its own works, and that when these elements are filtered out the only copyrightable element left is the arrangement of the building, which is different in Plaintiff’s works and Defendant’s works.  

Plaintiff argued in its reply that Balenciaga “had offered no evidence of unoriginality,” quoting Yurman Design Inc. v. PAJ Inc., where the Second Circuit wrote that "[c]opyright law may protect a combination of elements that are unoriginal in themselves.”

Indeed, as explained by the Supreme Court in Feist, “[f]actual compilations… may possess the requisite originality [to be protected by copyright]. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original [to be protected by copyright].”

 Fair use

The first of the four fair use factors of Section 107 of the Copyright Act, the purpose and the character of the use, focuses on whether the use is transformative.

Balenciaga America claims that the designs are transformative, as they offer “as subversive, tongue-in-cheek commentary on fusty notions of propriety in fashion, and emphasizing the beauty in the ordinary.” It explains that the design were inspired by ordinary objects, comparing the process to Marcel Duchamp using an urinal to create Fountain and Andy Warhol painting cans of Campbell soup (he even declared tomato to be his favorite flavor, although this has been debunked).

Defendant argues that the second factor, whether the protected work is factual or expressive, also plays in its favor as Plaintiff’s work merely depicts New York’s trademark. The third factor should be in its favor as well as it only tool, if indeed it took anything, unprotectible elements. As for the fourth factor, the effect on the potential market, Defendant notes that “it is not unreasonable to think that Plaintiff’s sales have increased from the publicity around this case.”

I must admit that Plaintiff’s products must be on every fashionable copyright attorney or scholar’s wish list now. See you at JFK’s gift shop!

Image of the Empire State Building, U.S. Government Work.

Poster from the Hot Rod Girl movie (1956).

What is rarer than the unicorn? A dress protected by copyright?

Roy Halston, the creator of the Halston brand, is remembered by fashion historians for his use of ultrasuede fabric, a soft manmade fabric imitating suede which could be machine-washed, and for his simple, yet sophisticated designs. While his main line was designed and priced to attract high-income customers, he also designed a line for mass-retailer J.C. Penney. Roy Halston lost control of his brand before dying in 1990, but the Halston Heritage brand has made a comeback in recent years and still sells clothes and accessories, some of which are somewhat reminiscent of the original designs. 

On October 15, the Halston company filed a copyright infringement suit in the central district of California against G-III, which is the exclusive licensor for Calvin Klein. Defendant produces and sells women’s clothes and accessories under the Calvin Klein trademark.

At issue are three Halston dresses which were allegedly copied by Defendant. 

Plaintiff's Design A

First there is “Subject Design A” dress. The top of the dress is a simple sleeveless shift, with a round neckline, flaring asymmetrically below the waist, and revealing a bottom dress in contrasting color. The company has applied to register its copyright (good luck).

Defendant sold a dress which Plaintiff found to be a copy of Subject Design A, arguing in the complaint that “it is apparent that the elements, materials, place, movement, centering, composition, colors, arrangement, overlay, appearance and structure of the design [sic] are substantially and confusingly similar, if not identical.”

Plaintiff manufactured and sold another dress, ‘Subject Design B’, a belted sleeveless dress, with a round neckline, gently flaring out asymmetrically, revealing the lower part of the left thigh of the wearer and its contrasting lining. Defendant also manufactured and sold a belted sleeveless, with a round neckline gently flaring out asymmetrically, revealing the lower part of the left thigh of the wearer and its contrasting lining. Plaintiff does not indicate in the complaint that it is in the process of registering the copyright for Subject Design B, but repeats the substantially and confusingly similar claim.

Defendant's dress

There is also ‘Subject Design C,’a full length sleeveless dress with a deep V neck and double straps which opens high on the right thigh of the wearer. Defendant also manufactured and sold a full length dress with a deep V neck and double straps. However, Defendant’s dress does not have a slit, but a mermaid shape. However, Plaintiff also claims the two designs are “substantially similar, if not identical.”

Plaintiff is of course aware that a dress is a useful article and, as such, is not protected by copyright. In order to be able to claim copyright protection for Design A, Plaintiff argues that:

“[Design A] [w]ould qualify as a protectable pictorial, graphic, or sculptural works- either on its own or fixed in some other tangible medium of expression, despite having some utilitarian function, which is to facilitate conduct associated with the 70’s an area which Roy Halston Frowick is strongly identified [sic], and as described by Erica Jong as “the purest thing there is. And it is rarer than the unicorn.” Erica Jong, Fear of Flying (1973). See Star Athletica, L.L.C. v. Varsity Brands., 580 U.S.___, 137 S. Ct. 1002 (2017).”

The Supreme Court held that In Star Athletica that a feature incorporated into the design of a useful article can be protected by copyright if (1) it can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) if it would qualify as a protectable pictorial, graphic, or sculptural work, either on its own or fixed in some other tangible medium of expression, if it were imagined separately from the useful article.

The feature incorporated in the design of the useful dress is “an overlay to express movement, affixing fabric in a manner to affect the appearance, weight and asymmetrical flow of the design, including but not limited to incorporation of a gusset and tack in the flounce, and increasing the downward visual consistency and depth of the two colors used.”

Plaintiff seems to argue that the function of this feature, which can be protected as a work of art, is “to facilitate conduct associated with the 70’s an area which Roy Halston Frowick is strongly identified [sic], and as described by Erica Jong as “the purest thing there is. And it is rarer than the unicorn.”

I was puzzled by the Erica Jong reference and wondered if Erica Jong was referring in this quote to the 70’s or to Halston. Actually, she was referring to …well… Here is the quote: “The zipless fuck is the purest thing there is. And it is rarer than the unicorn.” I was still puzzled after finding the quote and I am looking forward to reading Defendant’s motion or answer to the complaint to find out what its attorneys made out of it.

Traditions, Traditions, an Intellectual Property Perspective

The Agence France Presse posted a video on Twitter this month, which shows that the French fashion house Christian Dior had used traditional embroidery motifs in its pre-Fall 2017 collection  (see here too). The embroideries are originally from the Bihor area in Romania and adorn a traditional garment, the “cojoc binşenesc” (more about it here and here).

In this particular instance, the community reacted by taking advantage of this publicity and launched a website, Bihor Couture, which sells traditional Bihor garments and accessories.  As the 1709 Blog is a copyright blog, I will not comment much on the trademark issues which the choice of ‘Bihor Couture’ could raise, but here are my quick two cents. In the U.S., parody is a defense in a trademark infringement case. If you are interested in this topic, you can read about the recent My Other Bag Second Circuit case here and here. French trademark law does not have a parody exception, but courts have recognized such a defense, albeit sparingly, when parody was used as a social/political comment (see for instance this case, where the French Supreme Court held in 2008 that article 10 of the European Convention of Human Rights protects the right of non-profit Greenpeace to parody the Areva brand).

Can embroideries be protected by copyright?

Well yes they can, on both sides of the Atlantic, if they are original enough. Embroidery motifs may, however, be in the public domain, or not original enough to be protected by copyright.

In the U.S., embroideries can be considered fabric designs which are copyrightable. The mere fact that embroideries may adorn a piece of garment does not prevent them to be protected by U.S. copyright, even though a garment is an uncopyrightable useful article.

Since Star Athletica [see our comment on the case here], an artistic work applied on or incorporated into a garment  may be eligible for copyright protection if it: "(1) can be perceived as a two or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work-either on its own or fixed in some other tangible medium of expression-if it were imagined separately from the useful article into which it is incorporated."

In France, the concept of “Unité de l’Art” prevents French copyright law (droit d’auteur) to differentiate art from mere applied art (art appliqué) such as embroideries.

However, traditional embroideries may be in the public domain. The embroideries which inspired Dior may be in the public domain, or they could have been created recently enough to be protected by Romanian law. However, even traditional works in the public domain may soon be protected by intellectual property.

Protection of traditional works by moral rights

WIPO considers that traditional cultural expressions (TCEs), or "expressions of folklore," may include handicrafts, and may be protected by copyright if recently created. It also noted that “[i]n many countries and for many indigenous and local communities, the handicraft sector plays a vital social and cultural function and contributes significantly to communal, local and national economies.”

WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore will hold its 37^th session from August 27 to 31. The Committee published last month draft articles on the protection of traditional cultural expressions, which are part of the session’s agenda and which are aimed to become an international instrument directing member States to better protect TCEs.

One of the policy objectives of the instrument would be to “prevent the misappropriation and misuse/offensive and derogatory use/unauthorized use of their traditional cultural expressions.” This is of particular interest for communities which have created designs attracting the attention of fashion companies eager to satisfy the want of their customers for authenticity.  One may remember, for instance, that a U.K. fashion company used a traditional Inuit motif on a sweater.

One of the principles stated in the WIPO draft articles acknowledges that “traditional cultures and folklore constitute frameworks of innovation and creativity that benefit Indigenous [Peoples], [local communities] [and nations] / beneficiaries, as well as all humanity.”

It also notes “the value of a vibrant public domain and the body of knowledge that is available for all to use, and which is essential for creativity and innovation, and the need to protect, preserve and enhance the public domain.” It would “secure/recognize rights already acquired by third parties and secure/provide for legal certainty and a rich and accessible public domain.”

The instrument would direct “Member States [to] the economic and moral rights and interests of beneficiaries in secret and/or sacred traditional cultural expressions….as appropriate and in accordance with national law, and where applicable, customary laws.  In particular, beneficiaries shall enjoy the exclusive rights of authorizing the use of such traditional cultural expressions.” (my emphasis).

Therefore, even traditional cultural expressions which are in the public domain may be protected by moral rights, which are perpetual. This would be an interesting development for communities wishing to prevent the use of designs, which are in the public domain, but which they consider sacred.

This is certainly worthy of interest at a time when “cultural appropriation” is a hot topic, in many domains. Madonna has been recently criticized for wearing Berber clothes and a choreographer has been criticized for using in one of his works a traditional dance, with dancers in costumes looking like traditional costumes.

Could traditional works be one day perpetually protected by moral rights?

Image is courtesy of Flickr user storebukkebruse under a CC BY 2.0 license.

French and Faux? Balenciaga or JFK Souvenir Shop?

You may have heard of high and low fashion styling, where we are urged to wear our diamond tiara with a Zara top.  This story is a twist on the theme, as Balenciaga offers you a way to spend some serious money on a leather bag somewhat similar to plastic bags sold in New York City souvenir shops and airport stores. Copyright infringement suit ensued. The case is City Merchandise, Inc., v. Balenciaga America, Inc., 1:18-cv-06748 (SDNY).

City Merchandise, a New York City company designing souvenirs goods had created a plastic bag featuring the New York skyline over a pink sky, and the words NEW YORK CITY towering above the image. This how Plaintiff’s attorney describes it in the complaint, in legal yet poetic prose:

“Design encompasses a collage of portions of recognized NYC landmarks prominently featured in the forefront with several other buildings interspersed therein. The Design also features an airbrushed hot pink sky, accented with clouds. In addition, large, purple, fanciful cursive letters, unevenly bordered in white, float above the skyline. The letters opulently glisten and fittingly read, "New York City".”

Source: Balenciaga

The design was used by Plaintiff on several models, a tote, a coin purse, which Plaintiff started selling in late 2014, early 2015. This season, Balenciaga sold a bag and a hoodie, featuring a New York skyline over a pink sky, and the words NEW YORK CITY in a font in large cursive letters. City Merchandise deemed these goods to be infringing and filed a copyright infringement suit in the Southern District of New York against Balenciaga. 

Is it copyright infringement?

City Merchandise’s design is registered with the Copyright Office. It is certainly original enough to be protected by copyright (remember, one only needs a “modicum” of originality for a work to be protected by copyright).

Featuring landmark buildings on a design, such as the Empire State Building, the Flatiron Building and the Freedom Tower, along with the Statue of Liberty (technically in New Jersey harbor, but still a New York symbol) is not original per se, but the way the buildings are placed, the use of a bright pink sky, the fanciful font used for NEW YORK CITY, all make the design original enough to be protected by copyright.

Balenciaga’s design features the same buildings, but shown from different angles, and arranged in a somewhat different way: for instance, the Statue of Liberty is at the left in Balenciaga’s design, whereas it is featured at the right of Plaintiff’s design.

Plaintiffs claim that the “total concept and feel” between its original design and Balenciaga’s are identical. Courts in the Second Circuit apply an "ordinary observer test to determine if two works are substantially similar, but apply a “more discerning test” if works have both protectible and unprotectible elements or if, as in our case, copying is not exact. Judges then mustn’t dissect the works into separate components and compare only copyrightable or similar elements, but must instead compare the allegedly infringing design’s “total concept and overall feel'” with that of the original design.

Could Balenciaga assert fair use as a defense? Interestingly, the fourth fair use factor, the effect on the market, would likely be in Defendant’s favor, as using the protected design on goods sold in the luxury category would indeed have effect on the market, but a positive one (I will look for the original bag next time I am at JFK!).

The economic purpose of copyright

You may remember Balenciaga offering for sale its own version of the blue Ikea bag, and Ikea’s humorous response. One of Plaintiff’s exhibits, an article about this episode explains that Balenciaga also reproduced in leather a colorful Thai laundry bag originally made out of plastic. 

Plaintiff’s bags retail from $19.99 to $5.99, while buying Balenciaga’s versions will set you backfrom $500 to $2,000. Does Plaintiff lose its economic incentive to create a design if a third party use it to make a more expensive version? Copyright law does not care about the price of the object, and a Van Gogh is protected as well as a pattern used for airplane interiors.

Balenciaga saved costs by not having to create the design. It probably did not copy the design to save money, to “free ride”, but more likely to comment on “what makes fashion fashion”: is it the design, or is fashion and style in the eye of the beholder?  After all, Balenciaga head designer is Demna Gvasalia, who became famous thanks to his Vetement brand, which once famously sold once a DHL tee-shirt.

Balenciaga seems to use now tourist goods to comment on fashion: it currently sells a Paris sweatshirt, resembling those found at Parisian tourist shops and showed in its Fall 2018 a model wearing a World Food Program sweat shirt and fanny pack. Reverse snobbism?  Copyright infringement? Or both?

No wallflower: Paper Goods Company Sues Wal-Mart Over Spanish Rose Design

A paper goods company from Florida, Rifle Paper, filed a copyright infringement suit against Walmart in the U.S. Middle District of Florida Court. Hat Tip to Sarah Burstein who posted the complaint online. The case is Rifle Holdings, LLC v. Wal-Mart Stores, 6:17-cv-02105.

Plaintiff creates and sells all kind of paper goods such as cards, calendars, and stationary. It sells them in its Florida store, online and in several department and retail stores as well. The products have been featured in several magazines, and Plaintiff actively promotes them on social media.

Plaintiff owns by assignment the copyright of a design created by Anna Bond, the “Spanish Rose Design”, which is registered with the U.S. Copyright Office. The pattern features small and big roses, some in red, others in pink, with a black center, surrounded by leaves and baby’s breath. The background of the print is dark blue.

The protected work, the Spanish Rose design  

This design has been used on several of Plaintiff’s products, including a phone case, a greeting card, a notebook, and other cards sold throughout the U.S. since 2013. The design has also ben licensed to fashion company Paper Crown, owned by former television actress Lauren Conrad.

The complaint alleges that Beco, a company designing and manufacturing home-textiles goods sold at Wal-Mart under Wal-Mart’s brand “Mainstays”, copied the Spanish Rose Design in several products which were then sold at Wal-Mart. Plaintiff claims that the designs at stake are similar, but for a change of color for the roses, and leaving out details from the original design, such as the baby’s breath. The allegedly infringing pattern was then used on sheets, covers, boxes, plates, shower curtains, even furniture. The pattern is sold with a dark blue background and with a white background.

Plaintiff first noticed this use in October 2017 and sent Beco a cease-and-desist letter to Wal-Mart, which informed its manufacturer of the matter (the letter is reproduced in the complaint as one of the exhibits). The allegedly infringing products continued to be sold at Wal-Mart stores and Plaintiff filed this copyright infringement suit.

Fabric and paper designs are protected by U.S. copyright, unlike fashion designs, and the Spanish Rose has been dully registered. It is undoubtedly original enough to be protected by copyright. Therefore, the crux of the case will be whether the Spanish Rose design has indeed been copied. Also, not all acts of copying are actionable, as some elements of the designs may not be protected by copyright, whereas they are mere ideas or concepts, or are using elements which are the public domain.

How much copying is infringing?

In a 1960 fabric design case, Peter Pan Fabrics, Inc. v. Martin Weiner Corp, famous judge Learned Hand wrote that “[t]he test for infringement of a copyright is of necessity vague,” adding that “[i]n the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible.”

In our case, Plaintiff will be easily able to prove that defendant had access to the designs, which are sold in stores around the U.S. and thus will not have to demonstrate that the original work and the alleged infringing work are “strikingly similar.”

Instead, it will have to prove that there are “substantial similarities” between the work protected by copyright and the allegedly infringing work.

Courts use different substantial similarities tests, depending on their circuit. Florida is in the 11^th Circuit, which finds substantial similarity "where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work."

In order to decide whether the protected elements of two works are substantially similar, courts in the 11^th Circuit  “compare the various components of the two works, but are mindful that lists of similarities are inherently subjective and unreliable, particularly where the lists contain random similarities, and many such similarities could be found in very dissimilar works”,  Baby Buddies, Inc. v. Toys" R" UsBaby Buddies, Inc. v. Toys" R" Us, Inc.

Proving or denying copying is no bed of roses. Will Wal-Mart try to settle? Stay tuned…

The CopyKat: A possible point for legal divergence of the UK and EU in light of Brexit? (and much more)

This post was written by Tibbie McIntyre.

Much is spoken of the music ‘value gap’.

It stems from a limitation of liability for hosting providers which host third party content (in the US this is known as ‘safe harbor’). (European legislation can be viewed here, American here.) Essentially, when hosting providers are notified by rights holders of infringing content on their sites, they are required to take down the infringing content. But before such notifications are issued the hosting providers are not liable for the infringing actions of third parties.

YouTube is one of these hosting providers, benefiting from the limitation of liability. It is legally obliged to take down infringing content upon notification from the rights holder.

Meantime, let’s take a look at the music played on YouTube. In 2015, it was estimated that YouTube is responsible for 40% of consumption yet constitutes only 4% of the revenue. Some within the music industry feel that this glaring discrepancy in the numbers is thanks to YouTube’s limited liability. YouTube benefits from a position of strength compared to other streaming firms because in YouTube’s case, the music is already posted online. Spotify et al. must licence and then play.

What does this have to do with Brexit?

Draft Article 13 of the draft Directive on copyright in the digital single market (and Recital 39) is aimed at addressing this value gap by requiring hosting providers to “take appropriate and proportionate measures to ensure the functioning of agreements concluded with rightholders and to prevent the availability on their services of works or other subject-matter not covered by such agreements, including through the use of effective content identification technologies". This basically means that providers – such as YouTube – need to get licenced and implement filtering technologies.

Image in Public Domain

This move has been praised by a group of prominent US musicians, who have lobbied the US government to take similar steps.

It seems positive that the EU is trailblazing in this light.

BUT ….

As pointed out on the IPKat here, Article 13 cannot be implemented without also reforming Article 3 of the InfoSoc Directive and Articles 14 and 15 of the Ecommerce Directive. No one is quite sure yet how this issue will be resolved.

Brexit potentially comes in to play here. No one knows what will happen eventually, but there is always the possibility that the UK government might happen upon this issue and decide to tackle it – it has already been raised by one minister in relation to the Digital Economy Bill 2016-17.

If the UK government presses this issue (with a growing music industry there is no reason why it shouldn’t), the results could be very interesting indeed.

Dancing baby case

The ten year old saga (the baby in the video above should almost be a teenager by now) is rolling on, with the Supreme Court signalling its potential willingness to take the case further. The court has asked the US Solicitor General for his opinion on the matter, suggesting it might proceed with the case.

The district court opinion can be found here, the appeal at the 9^th Circuit can be found here and this issue. The case has also been commented on this blog previously here, and over at the IPKat here and here.

The case centres around whether rightsholders should consider whether a fair use defence applies to content posted online before take-down notices are issued.

Cases where the Solicitor General is asked to offer an opinion are accepted for review more often by the Court. This writer hopes that the justices will look at this case, as it could have a massive impact on how we conduct our lives online.

Follow the yellow brick road

The death knell rang this month for a decade long litigation saga in relation to merchandise relating to The Wizard of Oz, Gone with the Wind and the cat and mouse duo, Tom and Jerry. The 8^th Circuit Court of Appeals again reviewed the dispute, affirming both the $2.57 million judgment and permanent injunction in favour of studio giant Warner Bros.

As background, the defendants (X One X Productions, A.V.E.L.A., Inc., Art-Nostalgia.com, Inc., and Leo Valencia, collectively known as “AVELA”) obtained restored versions of advertising posters and lobby cards for Gone with the Wind, The Wizard of Oz and Tom and Jerry. Images of the famous characters from these films included Dorothy, Scarecrow, Tin Man and the Cowardly Lion from the Wizard of Oz, Scarlett O’Hara and Rhett Butler from Gone with the Wind and the cat and mouse duo Tom and Jerry.

AVELA extracted images from the restored advertising posters and lobby cards and licenced the images they extracted for use on a range of consumer products, including t-shirts, action figures, lunch boxes and playing cards.

The litigation saga began in 2006 when Warner promptly filed suit against the defendant, arguing copyright and trade mark infringement claims under the Copyright Act, Lanham Act and Missouri state law.

An interesting point is that the images on the advertising posters and lobby cards were generated before the films were completed and copyrighted. They were not duly registered in compliance with the copyright notice requirements of the 1909 Copyright Act, 17 U.S.C. §§1 et seq.. The Tom and Jerry images were also never registered, therefore not meeting the legislative requirements of that time period to give copyright notice.  (N.B. some of the images in question had been registered, however protection had not been timeously renewed). This fascinating issue – which was dealt with previously in this long-running saga – on drawing the boundaries between copyrighted works and the public domain in this case can be explored more fully here, here and here.

In the judgement handed down earlier this month, a range of issues were dealt with, including the award of statutory damages (with the appeallate judge finding the $2.57 million against AVELA isn’t disproportionate to the offense)

Importantly, AVELA’s attempt to invoke Dastar failed. Dastar is a Supreme Court judgement handed down in 2003 that holds that trade marks cannot act as a surrogate form of protection of works once copyright has expired.

A telling excerpt from page 10 of the judgement comments on how Dastar does not apply:

“Warner’s asserted trademarks in the characters from the films and cartoons do not run afoul of Dastar. The district court found and AVELA did not dispute that Warner holds registered trademarks in iconic phrases and names from the films and has used the character images for trademark purposes on a host of consumer goods for many years. Images of the film actors in character and signature phrases from the films are not communications, concepts, or ideas that the consumer goods embody as Dastar defines these terms. Products marketed under AVELA’s licenses employ iconic film characters’ pictures to associate the products with Warner’s films, not to copy the film itself. Accordingly, these are trademark claims, not disguised copyright claims, and Dastar does not bar them.”

“The clothes on the hanger do nothing; the clothes on the woman do everything,” – Justice Stephen G. Breyer

This remark was expounded at the Supreme Court earlier this month during a hearing in relation to Star Athletica L.L.C v Varsity Brands, Inc., et al.. The District Court stage can be read here, and the Circuit Appeals stage can be read here. This case has been and will be watched by many across the fashion industry.

The issue at stake in this case is whether designs on cheerleaders’ uniforms can be subject to copyright protection. All parties agree that two-dimensional designs may be copyrighted but the cut and shape of three-dimensional garments may not.

Designs that are utilitarian in nature do not attract copyright protection. Star, the smaller rival of Varsity and the defendant in the original proceedings, contends that the types of designs found on cheerleading outfits – stripes and chevrons etc. – are utilitarian in that they are essential to the function of a cheerleading outfit. This utilitarian function apparently – according to Star – is to “cause the cheerleader to be perceived as slimmer and more curvy than they actually are.”

The sportswear Colossus, Varsity, argued that many, many design variants are available in relation to cheerleading uniforms, yet this clothing still clearly remains for the purposes of cheerleading. In fact, “You can have a white cheerleading uniform worn by a cheerleader with the team name and team logo on it,”

A ruling in this case is expected by June 2017. It will surely be a landmark case for the fashion industry.

Cheering for a much-anticipated Supreme Court opinion on conceptual separatibility

The Supreme Court of the United States will hear next month the arguments of both parties in the Star Athletica, LLC v. Varsity Brands, Inc. case, which is closely monitored by copyright attorneys, but also by fashion designers, as its outcome may help, or hinder, their ability to protect their designs.

The case is about cheerleading uniforms, which the two parties, Star Athletica and Varsity both manufacture and sell. Varsity alleged that Star Athletica had copied some of its designs and sued its competitor for copyright infringement. The District Court held in favor of Star Athletica, finding Varsity's designs not copyrightable because their graphic elements were not physically or conceptually separable from the utilitarian function of a cheerleading uniform. For the court, the colors, stripes, and chevrons featured on the designs are usually associated with cheerleading uniforms. Therefore, they are what makes the uniforms recognizable as a cheerleading uniforms.

Hold on… Conceptual separatibility? What is it?

A “useful article” is not protected by U.S. copyright, 17 U.S.C. § 101. Clothes are useful articles, and therefore, are not protected by copyright. However, a useful article may be protected if it “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article,” 17 U.S.C. § 101. If a particular feature of a useful article is physically separatable, or “conceptually separable” from its utilitarian aspect, then it is protected by copyright.

While physical separatability is easily understandable (see Copyright Office Compendium 924.2[A]), conceptual separability is not easily defined. Federal courts have each their own “conceptual separatibility” test.

In our case, the Sixth Circuit reversed and created its own five-part conceptual separability test to reach the conclusion that the designs created by Varsity to adorn the uniforms were conceptually separable from its utilitarian function. The Sixth Circuit test asks five questions: (1) is the design is a pictorial, graphic or sculptural work, (2) is the design a useful article, (3) what are the utilitarian aspects of the useful article, (4) can the viewer of the design identify the pictorial, graphic or sculptural features separately from the utilitarian aspects of the useful article, and (5) whether the design features exist independently of the utilitarian aspects of the useful article. The Sixth Circuit concluded that the designs of the uniform are “wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement and wick moisture” and thus the graphic features of Varsity's cheerleading-uniform designs exists independently from this utilitarian aspect.

Judge McKeague dissented. While agreeing with the Sixth Circuit’s general approach of first defining what is the function of the work, then finding out whether the elements claimed as being copyrightable can be identified separately from that function, or can exist independently of it, Judge McKeague disagreed on in what is the function of the cheearleading uniforms. For Judge McKeague, the function of a cheerleading uniform is to identify its wearer as a member of a group, and thus its design is indeed functional.

Star Athletica filed a petition for a writ of certiorari in January 2016, which was granted by the Supreme Court. The Court will now answer this question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?” (This page of the SCOTUS blog lists all the briefs filed in this case, including amicus curiae briefs.)  

Respondent Varsity has filed its brief on September 14. It argues that two-dimensional artwork on useful articles “easily satisfy” the separability test (p.26). For Varsity, the functions of two-dimensional artwork are “purely decorative or communicative, not utilitarian, which makes such artwork inherently separatable from [the utilitarian aspects of a useful article]” (p.26).

The Supreme Court now has the opportunity to unify the conceptual-separability test. It will probably specify the instances when a particular garment can indeed be protected by copyright. We will keep you posted.

Graffiti Artist Rime Sues Moschino For Copyright Infringement

The Wall Street Journal Law blog reported this week that graffiti artist Rime is suing Italian fashion house Moschino and its designer, Jeremy Scott, for copyright infringement, in the Central District of California. The article provided a link to the complaint. The case is Joseph Tierney v. Moschino S.P.A., 2:15-cv-05900.

Plaintiff is a graffiti artist and is known as Rime. His work has been shown in several museums and galleries around the world. He claims that Moschino incorporated a reproduction of one of his works, Vandal Eyes, in a dress which was worn by singer Katy Perry at the latest Metropolitan Museum of Art gala, and on a men’s suit worn by Jeremy Scott at the same gala. The complaint takes care to note that Ms. Perry “made a number of “worst dressed” lists as a result” [Ouch!].

Plaintiff also claims that his name and fake signature were reproduced on clothes and accessories, and that “Moschino” was included in the print, making it appear that the print was created by the fashion house.

He is claiming copyright infringement, trademark infringement, unfair competition, and infringement of his right of publicity.

Copyright Infringement

Plaintiff created Vandal Eyes in 2012, when he was invited by a property owner to create a giant mural on a wall of a building in Detroit. There is no doubt that it is protected by copyright, as it has been fixed and is certainly original. Plaintiff has applied to register his copyright in this work. Plaintiff claims that Jeremy Scott attended the 2011 Arts in the Streets exhibition at the Museum of Contemporary Art in Los Angeles which featured Rime’s work, among other graffiti artists. If this access is indeed shown, a lower standard of proof of substantial similarity would be required by the court under Ninth Circuit case law, see for instance Three Boys Music Corp. v. Bolton at 485.

Just as graffiti artists Revok, Reyes and Steel did in their copyright infringement suit against Roberto Cavalli, Rime claims that by intentionally removing and altering his signature, Defendant intentionally concealed copyright infringement and thus violated § 1202 (b) of the Copyright Act. This section protects the integrity of copyright information, and makes it illegal to intentionally remove or alter any copyright management information without authorization of the copyright owner or the law.

Right of Publicity

As this blog concentrates on copyright, I will not comment on the trademark and unfair competition claims. Plaintiff also claims that Defendants infringed his right of publicity, as provided by California civil Code §3344, as they “us[ed] his name in connection with the marketing and sale of Moschino apparel and goods, and for the purpose of advertising, marketing and soliciting purchases of Moschino apparel and goods” and that he sustained damages because of these actions. Indeed, 3344 (a) prevents knowingly using a person’s name “in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent.”

This case is the last of a series of graffiti artists suing fashion companies for copyright infringement (see here and here).