Music Publishing Rights Dispute Throws Lady Marmalade Songwriter’s Royalties into a Black Box, a Lesson in Music Publishing

My mom gave me an AM radio with an earplug when I was 10. There I discovered summer pop music and the positive girl vibe of Lady Marmalade.  While Patti LaBelle’s 1974 earworm of a performance made Lady Marmalade famous, the lyrics and music were created by co-songwriters Bob Crewe and Kenny Nolan. Nolan wrote numerous famous songs during the 1970s as a singer-songwriter, and co-writer with Crewe and other songwriters. Many of the songs, including Lady Marmalade and My Eyes Adored You, the Frankie Valli chart topper, were huge hits. (more…)

Recovery of Fees and Costs in Copyright Litigation: Supreme Court Sets Limits

Costs recoverable by a prevailing party in a copyright infringement case are limited to the specific categories of costs allowed under the general federal status authorizing the award of costs by federal district courts. So says the U.S. Supreme Court in its unanimous decision in Rimini Street, Inc. v. Oracle USA, Inc. (March 4, 2019).

Oracle successfully sued Rimini Street for infringing Oracle’s copyrights. A jury awarded damages, and the district court awarded fees and costs, including a disputed $12.8 million for litigation expenses, such as expert witnesses, e-discovery, and jury consulting. The Ninth Circuit recognized that this award covered expenses not included within the general statute, but split with other circuit courts of appeal and held that the award was proper because Section 505 of the Copyright Act granted the district court the discretion to award “full costs” to a prevailing party in copyright cases. (more…)

Game, Set, Match – Federer v. Nike and the RF Logo

Roger Federer is one of the most famous athletes of all time. He currently has won more majors than any male tennis player in the “Open Era,” and he is admired all over the world, not only for his excellence on the court but also for his humble attitude and family man persona off the court. Also, his initials are RF. Ordinarily this would be a banal detail if it weren’t for the fact that sportswear giant Nike currently owns the rights to a stylized version of Federer’s initials: the RF logo. In March 2018, Roger Federer and Nike’s 21-year relationship ended, and in June 2018, Federer entered into a $300 million deal with Uniqlo, a Japanese clothing company. Although Nike no longer has a clothing contract with Federer, Nike still owns the trademark registration in the iconic stylized RF logo in various registries across the world in classes of use covering clothing and footwear. (more…)

#Hashtag #Valuable Asset

As the explosion in popularity of various social media outlets continues, new norms are increasingly clear: once-descriptive social media hashtags and Twitter handles are now valuable assets that we associate with specific parties. Businesses, in particular, should have social media account usernames and hashtags cleared before using them in marketing and advertising their goods or services. (more…)

Hip! Hip! Hooray! Varsity Brands Go All the Way! – The Supreme Court Rules Varsity’s Cheerleading Uniform Designs Are Copyrightable

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.

A Tale of Two Cakes: Can Copyright Law Protect this Cake Design?

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.