The United States Supreme Court, in the case Star Athletica, LLC v. Varsity Brands, Inc., et al., Case No. 15-866, ruled in a 6-2 opinion that two-dimensional designs applied to three-dimensional useful articles, in this case cheerleading uniforms, are entitled to copyright protection. The majority opinion by Justice Clarence Thomas held that a feature of the design of a useful article is eligible for copyright if “the feature (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.”

Under Section 101 of the Copyright Act, a “useful article” is an item or object “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Such utilitarian objects, including the three-dimensional designs of cheerleading uniforms, are not protected under U.S. Copyright Law.

Justice Thomas wrote for the Court that its test for separability starts with Section 101, in which “‘pictorial, graphic, or sculptural features’ of the ‘design of a useful article’ are eligible for copyright protection as artistic works if those features ‘can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.'” The Court explained that its decision is “not a free-ranging search [f]or the best copyright policy, but rather ‘depends solely on statutory interpretation,'” citing the last Supreme Court opinion to address the issue of separability – the 1952 case of Mazer v. Stein.

The Court described its task in the Varsity case as “to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of [Varsity’s] cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms.” The Court, applying this test, held that “one can identify the [designs] as features having pictorial, graphic, or sculptural qualities” and can separate the designs from the cheerleading uniforms on which the designs appear. The majority opinion and the concurrence of Justice Ginsburg gave substantial credence to the fact that Varsity had “applied the designs in this case to other media of expression – different types of clothing – without replicating the uniform.”

By affirming the Sixth Circuit’s reversal of the district court, the Supreme Court rejected two of Star’s arguments: (1) Varsity’s designs are not protectable because they are “necessary to two of the uniforms’ ‘inherent, essential, or natural functions’ – identifying the wearer as a cheerleader and enhancing the wearer’s physical appearance;” and (2) that the separability analysis should include objective components asking whether the design elements reflect the designer’s artistic judgment exercised independently of functional influence or are marketable to a “significant segment of the community” if separated from the underlying useful article.

The Court opined that “asking whether some segment of the market would be interested in a given work threatens to prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”

PRO TIP: The Varsity ruling will impact the fashion industry and its approach to copyright protection, but the ruling also supports other businesses that apply artistic elements on useful articles and may want to consider seeking copyright protection by registering copyright protectable designs at the U.S. Copyright Office.

Baker Donelson represented Varsity from the filing of the complaint through oral argument before the Sixth Circuit and briefing of the case before the Supreme Court. Goodwin Procter and Cowan Liebowitz were also involved with the Supreme Court briefing, while Goodwin Procter handled oral argument before the Supreme Court.

Duff Goldman of Charm City Cakes, one of our hometown heroes in Baltimore, a.k.a. the Ace of Cakes, created a striking cake for President Obama’s 2013 inauguration. The cake design caught the eye of the incoming presidential administration that ordered a different pastry chef, Buttercream Bake Shop, to create a replica of the Ace’s creation.

Can the pastry chef that produced the replica cake be held liable for stealing the Ace’s cake design?

In theory, a three-dimensional design may be protected under copyright or patent law. Patent law generally protects utilitarian inventions but a designer may obtain a design patent that protects the ornamentation of the design for 15 years. To obtain such patent protection, the designer must successfully ‘prosecute’ a design patent application until the Patent Office is satisfied – a costly several yearlong process.

Copyright law intends to be more user-friendly and less costly. Copyright protection ‘attaches’ to the design upon fixation in a tangible medium. Copyright does not require the designer to first register the copyright, or meet other formalities, so protection is immediate and free. The cake design is fixed upon the drying of its icing and copyright protection attaches. Easy, right?

Not so fast. Bringing a lawsuit for copyright infringement requires a valid copyright registration. Yes – I did say copyright attaches without formalities, but copyright law requires registration of copyrights prior to litigation for three reasons. A copyright registration provides (1) proof of ownership of the copyright; (2) a presumption the copyright is valid; and (3) the option to elect to recover statutory damages if the registration date precedes the infringement. Opting to request statutory damages as a remedy allows the court to decide the amount and calculation of damages without proof of the owner’s losses or the infringer’s profits from the design. However, if a copyright registration was not filed prior to infringement, the owner may request expedited registration from the Copyright Office and seek actual damages and any additional profits of the infringer in federal court.

So if the Ace filed an application for copyright registration in 2013, the allegedly infringing cake design created in 2017 could immediately be called into court for copyright infringement, and if the Ace proves that there is copyright infringement, statutory damages would be available. Great fact, the second pastry chef admitted she was commissioned to reproduce the original design on the cake that the President and Vice President would cut with a ceremonial sword. Slam-dunk!

Again, not so fast. A valid copyright must be protectable copyright subject matter and meet minimum standards of creativity. Copyright law does not protect functional features, geometric shapes, including cylinders, stripes, color, or lines. Layer cakes as food are functional.

Unlike some of the Ace’s fanciful sculptural cakes, this inaugural cake design is unlikely to comprise copyrightable subject matter. The cake deploys stacked cylindrical layers, solid color layers, striping, narrow bands of color, stars, and coin-shapes that are not protectable. This leaves the bunting, presidential seal, and the seals of the army, navy, marines, air force, and coast guard. The government seals belong to the federal government and are forbidden for non-official use; and bunting is unprotectable as ‘scene au faire‘ in connection with government galas.

Moral rights (rights protecting the integrity of an artist’s name and designs, depending on applicable law) might protect the Ace’s cake design but not in the United States. U.S. Copyright law provides limited moral rights to protect certain eligible artworks by visual artists. Cake design is not an eligible artwork.

1/24/2017 Correction: The original cake was created in 2013 and the replica cake was created in 2017. Also, if a copyright registration was not filed prior to infringement, the copyright owner may obtain copyright registration, file in federal court, and request actual damages. H/t Kevin Madigan for pointing this out.

The U.S. Copyright Office announced yesterday its new online registration system for designated agents. Online service providers designate agents to receive notifications of claimed copyright infringement. As of December 1, 2016, the Copyright Office no longer accepts paper applications for agent designation. Service providers who previously designated agents in the existing directory have until December 31, 2017 to register in the new online directory.

Online service providers, including websites and online platforms that allow users to store material on their systems, risk liability for direct or contributory copyright infringement from third party materials posted by users without permission.  Since users often do not understand or care about copyright law, an unwary service provider (who often appears to have deeper pockets) may have a rude awakening when it finds itself the sole defendant in a copyright litigation over unauthorized photos or other user generated content posted on its website by a user.

Congress passed the Digital Millennium Copyright Act (“DMCA”) to balance the rights of copyright owners with the needs of online service providers in the face of rapidly developing technology. The DMCA provides a safe harbor from copyright infringement liability in 17 U.S.C. 512 for qualifying service providers who agree to remove copyright infringing content and eject infringing users from their platforms. The DMCA safe harbor protects burgeoning technology such as streaming music platforms.  In order to qualify for DMCA safe harbor protection, a service provider must have an appropriate copyright policy in its terms of use, designate an agent to receive notifications of claimed copyright infringement, register the designated agent with the Copyright Office, and understand and comply with the DMCA notice and take down procedures.

Superheros donning black robes save website operators from liability for users’ copyright infringement of sound recordings fixed prior to 1972.

The Second Circuit Court of Appeals ruled today that the safe harbors provided by the Digital Millennium Copyright Act (DMCA) protect qualifying website operators from liability from such pre-1972 recordings, even though they are not covered by federal copyright law. This decision overrules a finding by the District Court for the Southern District of New York that section 501(a) of the Copyright Act “defines” the term “infringement of copyright” used in section 512(c) to define the scope of the DMCA safe harbor provision for qualifying website operators as limiting the safe harbor to materials infringed under federal copyright laws.

The Second Circuit disagrees, saying Section 501(a) does not provide an exclusive definition of “infringement of copyright” and given that the purpose of the DMCA  “was to make economically feasible the provision of valuable Internet services while expanding protections of the interests of copyright owners through the new notice-and-takedown provision. To construe § 512(c) as leaving [website operators] subject to liability under state copyright laws for postings by users of infringements of which the [website operators] were unaware would defeat the very purpose Congress sought to achieve in passing the statute.” Capital Records, LLC, et al., v. Vimeo, LLC, Docket No. 14-1048/1049/1067/1068S, page 29, (CA 2 Argued Nov. 6, 2015, Decided June 16, 2016).

TIP: Like the idea of having the protection of the DMCA Safe Harbor? Review section 17 USC 512 to learn about the requirements needed to qualify for the safe harbor, including a copyright policy that informs users who infringe copyrights that they will be blocked, a designated agent and understanding the notice and takedown procedure for allegedly infringing material.

 

 

Keep on truckin' (creative commons with attribution to frankieleon)

Keep on truckin' (creative commons with attribution to frankieleon)
Keep on Truckin’ (creative commons with attribution to frankieleon)

Do music streaming services need to pay royalties to play classic rock? It’s actually an open question. Some services have refused to pay performance royalties for all pre-1972 recordings. For many years, a false rumor persisted that because pre-1972 recordings are not protected by federal copyright law, they are not protected at all, and one need not pay royalties to use such recordings. To understand why that rumor is false, one needs to understand something about the history of legal protection for sound recordings in the U.S.

Prior to 1972, the Copyright Act of 1909 protected songwriters, but did not accord copyright to sound recordings on the federal level, and instead permitted each state to maintain its own common law of copyright. In 1972, Congress amended the 1909 Act to create an exclusive right for sound recordings produced after February 15, 1972. 17 U.S.C. Sec. 5(n) (1909 Copyright Act (Rev’d to 1973)). (more…)

Sam Smith says that it’s a coincidence that his song “Stay with me” is similar to Tom Petty’s “Stand my ground” but won’t hang his hat on independent creation, where one author creates an identical or similar work without access to the previous work. Perhaps Mr. Smith is concerned that he may have subconsciously infringed Mr. Petty’s work since he so quickly offered a writer’s credit and royalties to Mr. Petty. With pop music, access to the original work is presumed because no one can avoid hearing pop music in the doctor’s office and shops. If the two works are strikingly similar to the ears of an ordinary listener, it’s copyright infringement. So you be the judge and let us know what you think.

George Harrison ‘stood his ground’ and ‘wouldn’t back down’ when Bright Tunes sued him for copyright infringement of Ronnie Mack’s “He’s So Fine” (made popular by the Chiffons in 1963) with Harrison’s “My Sweet Lord.” The court found him liable of subconscious copyright infringement.

Google and other image search engines are a free and easy way to get visual information. Search engines are not the best way to find an image for your blog. Your copy of an online search image may not cause trouble if used in an off-line collage or physical artwork. Use of that same image online, however, carries enormous risk. Unfortunately, search engine results obscure image ownership information.  Images bounce around the internet as they are screen-captured, downloaded from social media, mixed with other material, and shared by users. The owner of the website where you found the image likely does not own the image or provide permission from subjects appearing in the image.

Nevertheless, the photographer and each party or location depicted in the photo has rights in the image. Obtaining each of their permissions to use the image for your particular personal, commercial, or professional use is required to avoid liability. Although most images online are of unknown provenance, people and businesses continue to use online search images without permission. Several clients this year received demand letters relating to the use of online images without permission. Here are a few reasons to avoid risk by not right-clicking an image:

  1. Photo Trolls are Copyright Owners with Registered Claims to Copyright. While true, certain copyright owners are very aggressive about policing their rights. They use electronic infringement detection tools to identify potential infringement of their copyrights then demand several thousand dollars per image to settle. Ignore their demand letters at your peril. (more…)

Popular author L.J. Smith of the Vampire Diaries series was terminated by her publisher and replaced with a ghostwriter. Some fans are content to continue reading the now ghostwritten series. Other fans are buycotting. What did L.J. Smith do? She is writing new Vampire Diaries stories as “fan fiction”. Fan fiction is understood as meaning stories written by amatuer writers based on their favorite book, television or movie characters.
While some media companies routinely prosecute copyright infringement lawsuits against fan works, others have embraced fan fiction, such as the publisher of Fifty Shades of Grey series. Originally fan fiction (or slash fiction)based on the Twilight series, Random House successfully published the books after the author removed the Twilight characters.
The Wall Street Journal reports that Amazon has been making deals with publishers and fan fiction writers for the rights to use characters and fan writing to identify new blockbusters like Fifty Shades.

Fair use ruling for Richard Prince stands, Supreme Court declines to hear Patrick Cariou's appeal

richard-prince-ile-de-france-canal-zoneThe US Supreme Court has declined to hear Patrick Cariou’s appeal requesting a rehearing of his case against Richard Prince. The decision came one week after district court Judge Deborah Batts* accepted amicus briefs from the Andy Warhol Foundation for the Visual Arts and the Rauschenberg Foundation encouraging consideration of the opinions of art historians and the broader art community when deciding whether Prince’s “Canal Zone” series infringed on Cariou’s copyright.

It’s not over until it’s over. (more…)

Or perhaps the notices are a hoax virus– spread by friends bullying friends to spam others to show respect for the poster’s privacy and copyrights. Posting and re posting the Facebook Privacy Notice will not change Facebook’s policies.  If privacy is a concern, adjust privacy settings or avoid using Facebook for private communications. If controlling content is a concern, avoid posting images or register copyright in important materials before posting. To use Facebook, users give it a limited right to “share” their user content. This right does not place user content in the public domain. (more…)