Cultural Appropriation, an Intellectual Property Perspective

October 19, 2018 · by ·
The Agence France Presse posted a video on Twitter in August, 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).
Cojoc Embroidery

Romanian Embroidery on a Cojoc

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. 

 

 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 37th 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?
This post was first published on The 1709 Blog.

 

Image is courtesy of Flickr user meaduva under a CC BY-ND 2.0 license.
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French and Faux? Balenciaga or JFK Souvenir Shop?

September 28, 2018 · by ·

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”.”

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?

This post first appeared on The 1709 Blog.

 

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Is Adidas too Agressive At Enforcing its Trademarks?

June 30, 2017 · by ·

Adidas owns multiple trademark registrations in the European Union and the U.S. for its famous three stripe design, and it fiercely protects them. It has filed, and won, several trademark infringement suits, and regularly sends cease-and-desist letters asking brands to stop selling shoes or clothes bearing stripes.

In February 2017, Adidas filed a notice of opposition with the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) to the registration of a mark that Tesla Motors was seeking to register for articles of clothing. The mark would have consisted of “three equal length horizontal stylized lines in the manner of a stylized number 3.” The trademark has since been abandoned after an inter-partes decision by the TTAB.

On 17 February 2017, Adidas also filed a trademark infringement and dilution suit against competitor Puma North America Inc. in the district court of Oregon. Adidas claimed that Puma’s new model of soccer cleats, which bear four diagonal stripes on each side, infringes on the Adidas trademark as it is likely to cause consumer confusion as to the source of the footwear. Adidas voluntarily dismissed the case on 28 February  2017, likely following successful negotiations with Puma.

On 14 February 2017, the Barcelona Football Club abandoned its application to register a mark in class 28, for sporting articles, following a notice of opposition filed by Adidas on 31 October 2016, and an inter-partes decision by the TTAB. The abandoned mark consisted of “a square containing seven vertical stripes. The 1st, 3rd, 5th and 7th stripes from the left are blue, and the remaining three stripes are garnet.”

On 17 March 2017, Adidas filed a trademark infringement and dilution suit in the Eastern District of North Carolina, against fashion company Juicy Couture, which came to fame some 15 years ago for creating a velour tracksuit. Adidas claimed that some jackets and pants, bearing stripes on their sleeves and sides, infringe several of its trademarks.

Adidas has won or settled all of the trademark infringement cases it has filed. Will the streak ever end?

The scope of the three-stripe trademark

What exactly do the Adidas trademarks protect? Are all three stripes claimed by Adidas under the trademark? Are all stripes on shoes and clothing, regardless of the number of stripes, claimed by Adidas?

Adidas owns several federal trademark registrations in the U.S. for a mark consisting “of three parallel stripes applied to footwear,  the stripes are positioned on the footwear upper in the area between the laces and the sole,” (see here, here, or here). Adidas also owns trademarks for clothing bearing the three stripes (see here) and even for verbal trademarks using the term “3 stripes,” such as the trademark “THE BRAND WITH THE 3 STRIPES.” Does that mean that Adidas has a monopoly for just about every trademark featuring three stripes, every trademark featuring two or four stripes, or even for clothing featuring any number of stripes?

The February 2017 complaint against Puma stated that Adidas has been using the three-stripe trademark on shoes since 1952 and on apparel since 1967. While easily recognizable, Adidas’s three-stripe trademark is also simple: three stripes, often shown diagonally on the sides of shoes, on the sleeves of a training jacket, or the sides of training pants, shorts, or shirts. The three stripes are all of the same width when seen together, but this width varies from trademark to trademark. The distance between each stripe also varies.

In the USPTO Design Search Code Manual, category 26 is for “geometric figures and solids.” 26.17 is for “lines, bands, bars, chevrons and angles” and 26.17.01 is for “straight line(s), band(s) or bar(s).” 26.17.05 is the code for “horizontal line(s), band(s) or bar(s).”

The design search codes for the trademark which Tesla sought to register were 26.17.01 and 26.17. A recent search in the TESS database for a mark with a 26.17. 01 code yielded 89,266 records and a search for marks with the 26.17.05 code yielded 81,820 records. Amongst the 26.17.05 results, 14 were filed by Adidas.

The mark which Tesla sought to register was described in the application as consisting of “three equal length horizontal stylized lines in the manner of a stylized number 3.” Yet the stripes were not similar to Adidas stripes, which are cut in a neat angle. Tesla’s stripes were cut on the side in a soft curve, resembling a Japanese wood beam or roof. The Barcelona Football Club was trying to register as a trademark the stripes which are seen on its own logo, which is itself a registered trademark! Indeed, many sports teams around the world sport stripes on their uniforms. A stripe is a stripe is a stripe. Yet Adidas opposed these two trademark registrations.

Is Adidas going too far?

This is not the first time that Adidas sued a company over the use of stripes on shoes or clothing, even if more or less than three stripes are featured. Adidas sued several European retailers in the late nineties over the use of two stripes on the side of sports clothes, which eventually led to the European Court of Justice ruling in 2008, in Adidas AG and Others v. Marca Mode CV and Others, that Adidas’ competitors could not “be authorized to infringe the three-stripe logo registered by Adidas by placing on the sports and leisure garments marketed by them stripe motifs which are so similar to that registered by Adidas that there is a likelihood of confusion in the mind of the public” (at 32).

While there may be a need for signs which do not have a distinctive character, such as stripes, to be available for competitors, this need “cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark” (ruling of the Court). The European Court of Justice thus chose to protect the public against any likelihood of confusion.

U.S. fashion manufacturers also encounter legal difficulties when using stripes on garments, and their frustration is mounting. On 3 March 2017, fashion retailer and manufacturer Forever 21 filed a complaint against Adidas, asking the Central District Court of California for a declaratory judgment of non-infringement of trademark. Forever 21 claims that Adidas is now “essentially asserting that no item of clothing can have any number of stripes in any location without infringing Adidas trademarks.” Forever 21 is “[t]ired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes” and “has decided that enough is enough… This matter is ripe for a declaratory judgment.” However, Forever 21 voluntarily dismissed the case on 13 March 2017.

Stripes are never out of fashion, and fashion designers frequently use them on the side of pants or jackets. Is this infringement? Forever 21 had claimed that “Adidas should not be allowed to claim that Adidas, alone, has a monopoly on striped clothing.” The retailer filed the suit after receiving yet another cease and desist letter sent by Adidas, this time asking Forever 21 to stop selling clothes bearing four stripes, including a sports bra, tee shirts and pants. Forever 21 claimed that “[a]ny use of stripes on clothing sold by Forever 21 is ornamental, decorative, and aesthetically functional.”

Adidas had sent a similar letter to Forever 21 in June 2015, which claimed that a sweat shirt featuring Snoopy, with stripes on its cuffs, bottom and collar, was infringing. However, varsity jackets, or letterman jackets, traditionally sport stripes in similar places, and Forever 21 indeed described its Snoopy shirt as featuring “generic varsity-style stripe pattern.” Is Adidas too aggressive in enforcing its mark?

A need to police the mark

These cease and desist letters illustrate what trademark owner must do to avoid losing their rights through failure to control use. Section 45 of the Trademark Act states that a mark is abandoned when “any course of conduct of the owner, including acts of omission as well as commission, causes the mark to… lose its significance as a mark.” This includes failing to adequately police the mark against third-party use. Also, the three-stripe mark is famous, thus making trademark dilution another concern for Adidas. In fact, even just the appearance of dilution is a concern, since trademark owners only need to prove a likelihood of dilution, not actual dilution, after the enactment of the Trademark Dilution Revision Act of 2006. Adidas does not want its three stripes to strike out. But is it the general public which ends up losing?

This post has been first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum

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R.I.P. Conceptual Separability Test

April 7, 2017 · by ·

The US Supreme Court held on March 22, 2017 that a feature incorporated into the design of a useful article is eligible for copyright protection “if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The case is Star Athletica LLC v .Varsity Brands. Justice Thomas wrote the opinion of the Supreme Court.

Conceptual Separability is Much Safer

Readers of this blog may remember that this case is about whether cheerleading uniforms can be protected by copyright. Both parties are creating and selling cheerleading uniforms. Varsity Brands has registered some 200 copyrights for two-dimensional designs appearing on the surface of their uniforms and other garments. It sued Star Athletica for copyright infringement, claiming that its competitor had copied five of its designs protected by copyright. The Western District Court of Tennessee granted summary judgment to Star Athletica, reasoning the designs could not be protectable by copyright, as they could not be separated from the utilitarian function of the uniforms. On appeal, the Sixth Circuit Court of Appeals reversed, finding Varsity’s designs to be copyrightable graphic works. The Supreme Court affirmed.

UniformUseful articles cannot be protected by copyright, but a pictorial, graphic, or sculptural work incorporated in the useful article can be protected if it is separable from the useful article. However, such design must be capable of being “identified separately from, and [must be] capable of existing independently of the utilitarian aspects of the article,” 17 U.S.C. § 101. The design can be physically separable or “conceptually separable” from its utilitarian aspect. Physical separability occurs if the feature seeking copyright protection can “be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact,” Compendium §924.2(B). This is easily understandable, but conceptual separability, which applies if physical separability by ordinary means is not possible, is the stuff [bad] dreams [of IP attorneys] are made of. Or, at least, it was, as today’s opinion signals its demise.

The first part of the new test requires that the design seeking copyright protection must be able to be perceived as a two or three-dimensional work of art separate from the useful article. This was the case here. Justice Breyer dissented from the majority, reasoning that the designs on the cheerleading uniforms are not separable because if one would remove them from the uniforms and place them on another medium of expression, such as a canvas, it would create “pictures of cheerleader uniforms.” But Justice Thomas wrote that this does not prevent these deigns to be protected by copyright, because

“[j]ust as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied.  A fresco painted on a wall, ceiling panel, or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted” (p. 11).

The second part of the new test requires that the design must be able to exist apart from the utilitarian aspect of the article, as its own pictorial, graphic, or sculptural work. If it can’t, then it is one of the useful article’s utilitarian aspects. Thus, the design itselfcannot be itself a useful article (p. 7).

This interpretation is consistent with Mazer v. Stein, a 1954 Supreme Court case studied by all U.S. copyright students. Justice Thomas noted that two of its holdings are relevant in our case (p. 9).  The Court held in 1954 that a work of art which serves a useful purpose can be protected by copyright. In the case of Mazer v. Stein, it as was statue which served as a lamp base. The Court also held in 1954 that a work of art is copyrightable even if it was first created as a useful article. Justice Thomas specified that, in our case, the Court interpreted the Copyright Act in a way which is consistent with Mazer v. Stein as today’s opinion “would afford copyright protection to the statuette in Mazer regardless of whether it was first created as a standalone sculptural work or as the base of the lamp.”

R.I.P. conceptual separability test. Justice Thomas explains it is no longer needed, as “[c]onceptual separability applies if the feature physically could not be removed from the useful article… Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary” (p.15).

Justice Thomas clarified the scope of the opinion as such:

“To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. Even if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear” (p. 12).

But what makes a particular uniform feature of stripes and chevrons particular, is it because they are applied on the uniform, or because the uniform is cut in such a way and uses such contrasting colors  on which the designs are appearing?

Justice Ginsburg concurred, but she took the view that “[c]onsideration of [the separability] test is unwarranted because the designs at issue are not designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles… [and may thus] gain copyright protection as such” (p. 23 and p. 24).

Should we cheer? Time will tell.

This post was first published on The 1709 Blog.

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We all root for a single conceptual separability test

September 22, 2016 · by ·

On 2 May 2016, the U.S. Supreme Court agreed to answer this question: “[w]hat is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act”? The answer is likely to impact the U.S. fashion industry, as it may make copyright protection of designs easier or more difficult.

Clothes cannot be protected by copyright in the U.S. because they are un-copyrightable useful works, but some of their features or elements may be protected if they can be identified separately and exist independently of the utilitarian aspect of the garment. However, the circuit courts are using different tests to decide whether a particular feature can be conceptually separated from the useful article and thus protected by copyright.

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Now, an ongoing dispute between two cheerleader uniform companies over whether the designs adorning uniforms can be protected by copyright will allow the Supreme Court to unify the conceptual separability test and provide clearer guidelines to designers seeking to protect at least some features of the clothes they create.

Varsity Brands (Varsity) designs, manufactures and sells cheerleading uniforms. It registered its copyright in five two-dimensional designs featuring various combinations of color blocks and stripes, some forming chevrons. In 2010, competitor Star Athletica (Star) published a catalog of cheerleading uniforms which Varsity believed to be infringing of its designs. Varsity filed a copyright infringement suit in the Western District Court of Tennessee against Star, which moved for summary judgment, claiming that the pictorial, graphical or sculptural elements of Varsity’s designs were not physically or conceptually separable from the utilitarian functions of the cheerleading uniforms.

Indeed, while §102(a)(5) of the Copyright Act expressively protects pictorial, graphic and sculptural works, useful articles are not protected by copyright. §101 of the Copyright Act defines a useful article as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” However, §101 of the Copyright Act also states that 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.”

On 1 March 2014, the Western District Court of Tennessee entered summary judgment in favor of Star, finding that the aesthetic features of the uniforms had merged with their functional features and were thus not conceptually separated from the utilitarian uniforms. Varsity appealed to the Sixth Circuit, which reversed the judgment. Star then filed a petition for certiorari to the Supreme Court, which was granted.

Physical separability

In order to find out whether a particular design which is part of a useful article can nevertheless be protected by copyright, courts determine if the design is separable, whether physically or conceptually, from the utilitarian aspects of the article or sculptural work.
§ 924.2(A) of the Copyright Office Compendium defines physical-separability as meaning “that the useful article contains pictorial, graphic, or sculptural features that can be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” This stems from the 1954 Mazer v. Stein Supreme Court case, where a statuette which served as a lamp base was held to be copyrightable.

Conceptual separability

However, it is often not possible to physically separate a design from the utilitarian article, and thus courts also use a conceptual separability test. However, there is not just one separability test. Petitioner’s brief to the Supreme Court notes that there are nine conceptual separability tests, and that the Ninth Circuit rejected all of them in our case to create a tenth one.

For instance, the Second Circuit uses the Kieselstein-Cord test and checks whether the artistic features are “primary” and the utilitarian features “subsidiary.” The Seventh Circuit uses the aesthetic influence test, first applied in Pivot Point v. Charlene Products, Inc., where conceptual separability exists if the elements at stake “reflect the independent, artistic judgment of the designer.”
Law professors weighted in on the issue as well. For instance, Professor Paul Goldstein proposed a test to find out whether “a pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it.” Professor David Nimmer proposed the marketability test, where “conceptual severability exists when there is any substantial likelihood that even if the article had no utilitarian use, it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.”

Varsity had unsuccessfully argued in front of the federal district court that because it sketches uniform designs independently of functional influences, the designs are conceptually separable from the utilitarian features of the uniforms, and thus protected by copyright under the Seventh Circuit’s aesthetic influence test. Instead, the district court found the Second Circuit Jovani Fashion Inc. v. Fiesta Fashions case persuasive, where the court had found the designs of prom dresses not protectable by copyright, because the decorative choices made to create the dresses had merged with their function of covering the body in an attractive way. The Second Circuit noted that the “design elements are used precisely to enhance the functionality of the dress as clothing for a special occasion.” Similarly, the District Court found in Varsity, citing Jovani, that a cheerleading uniform, just like a prom dress, is “a garment specifically meant to cover the body in an attractive way for a special occasion” and concluded that “a cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas.”

The Sixth Circuit conceptual separability test

The Sixth Circuit created a five-part test to find whether a particular design is copyrightable. First, the court must find out whether a design is a pictorial, graphic or sculptural work. Such was the case here. Then then court must find out if the design is the design of a useful article. Such was the case here as well. Thirdly, the court must find out “[w]hat are the utilitarian aspects of the useful article.” The Sixth Circuit found that the function of the designs was to decorate the uniforms, noting that it is “well established” that fabric designs are protected by copyright. The fourth part of the test asks whether the viewer of a design can identify the pictorial, graphic or sculptural features separately from the utilitarian aspects of the useful article. The Sixth Circuit answered affirmatively, noting that “[t]he top and skirt are still easily identified as cheerleading uniforms without any stripes, chevrons, zigzags or color-blocking.” Finally, the fifth part of the test asks whether the design features exist independently of the utilitarian aspects of the useful article. The Sixth Circuit answered affirmatively, as 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.”

The Sixth Circuit concluded that because the graphic features of Varsity’s designs can be identified separately and are capable of existing independently of the utilitarian asserts of the uniforms, they can be protected by copyright. It gave as an example the famous Mondrian dress created by Yves Saint Laurent, and noted that “the graphic features of Varsity’ cheerleading-uniforms designs are more like fabric design than dress design.”

Toward a single conceptual separability test

It is likely that the Supreme Court will coin its own conceptual separability test, which will then have to be used by all the courts. The fashion industry has much at stake in this case, as such a test may help designers to claim copyright protection for clothes and other useful works, such as handbags or shoes, or could make claiming copyright protection even more difficult.

This article was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

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French Highest Court “Casse” in Foldable Bag Copyright Infringement Case

July 1, 2015 · by ·

This post is about a recent French case which shows that, while French copyright law protects original handbags, explaining what exactly makes a bag original has to be carefully worded, by the parties of course, but for the courts as well. The Cour de cassation, France highest civil court, “broke” (‘casser’) a holding of the Paris Court of appeals which, after having listed the various elements which made a bag original, found no copyright infringement of this bag evenwhile referring to other original elements of the bag.

Longchamp is a French bag and accessories company. Its most famous model is the Pliage bag, a nylon bag which can be folded to fit in a smaller bag (pliage means ‘folding’ in French). Its success led to the creation of a whole range of Pliage bags, which are now available in nylon and leather, may or may not be foldable, and can even be personalized.

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Longchamp discovered in 2010 that bags similar to its Pliage bag were sold online. The company and the original designer of the bag sued the seller and the manufacturer of the bags sold online for copyright infringement. The court of first instance, the Tribunal de Grande Instance de Paris (TGI) rejected their claims. For the TGI, the Pliage bag was indeed protectable, but the defendants had not infringed on any of the plaintiff’s rights. Plaintiffs appealed, but the Paris Court of Appeals confirmed the judgment on September 13, 2013. Longchamp and the Pliage bag designer then took their case to the Cour de cassation.

The Pliage bag is indeed famous. Plaintiffs even claimed on appeal that it is the most copied bag in the world. Appellees did not dispute the originality of the Pliage bag, but argued instead that, because the bag was an original combination of several mundane elements, only this original combination could be protected by copyright, not the separate elements. They further argue that the Pliage bag was a combination of elements ordinarily used by every bag designer, and specific, original characteristics, “namely the specific form of the flap highlighted by the thick stitched sewing, the gold button [closing the snap], highly visible seams on all sides of the leather elements, the combination of brown leather stitched with other materials, and specific proportions.”

The Court of Appeals agreed that the Pliage bag is original, as it combines these elements:

– small flap with snap, located between the two handles and a cap portion of the zipper;

– slightly rounded shape of this little flap, highlighted by a thick stitched sea

  • –  sewing stitches on the front of the bag, in the extension of the flap and evoking the outline of the inner bag;
  • – affixing of the flap on the back of the bag by a double stitched seam;
  • – two handles finishing by rounded edges affixed on each side of the bag opening by affixed tabs;
  • -two small rounded tabs on each end of the zipper which highlight the top corners of the bag, curving upward;
  • – the trapezoidal shape of the body, seen from the front;
  • – the rectangular bottom and
  • –  the triangular profile.

The Court of Appeals then compared the Pliage bag with the allegedly counterfeiting bag and did not find it infringes on Pliage. To come to this conclusion, the Court of Appeals noted that the Appellee’s bag had a wider flap, did not feature stitched seams and did not have a small gold button to snap close the front flap. Also, both flaps had different shapes, and the stitches of Appellee’s bag used the same color than the bag’s overall material, whereas the bag’ s stitches contract in color with the body of the bag. The handles of Appellee’s bag did not feature stitches, and the ending part of the handles had a different shape. Also, both bags had different shape, rectangular for Appellee’s bag and trapezoidal for the Pliage bag.

The Court of Appeals noted that Appellee’s bag would have been counterfeiting the Pliage bag if it had used “the distinguishing characteristics of the combination of Longchamp bag model: the specific form of the flap emphasized by the thick stitched sewing, gold button, highly visible seams on all leather parts, the alliance of brown leather stitched with other materials and colors, the specific proportions, which are the dominant elements of the combination giving the model its originality.”

The Court of Appeals found that Appellee’s bag had “its own physiognomy, a particular aesthetic bias which alter the overall visual impression of this model as compared to the Longchamp bag, which precludes any risk of confusion, especially since the discriminating consumer of the famous Longchamp bag would immediately perceive these differences.” Somehow, the right holders of a famous bag would have to meet an even higher burden of copyright infringement proof because their work is famous.

But the Cour de cassation found that, by this ruling, the Court of Appeals had violated article L. 122-4 of the French IP Code, which makes it illegal to reproduce fully or partially a protected work without authorization of the right holder. For the high court, “the existence of a golden button, the alliance of brown leather stitched with other materials and colors, and the « specific proportions » [of the bag] were not the elements that the Court had chosen to assess the originality of the bag, and also, the existence of a likelihood of confusion is irrelevant to the characterization of the infringement of copyright.”

This last phrase is a welcome addition to the French fashion copyright attorney’s toolbox, especially when defending the rights of famous bags, such as the Pliage, or, say, the Birkin, which would otherwise have to convince courts that the sophisticated clientele would never take a $75 plastic Birkin for the real McCoy. French Copyright does not serve as an indication of the source, but, rather, protects the patrimonial and moral rights of the author of the work.

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

This article was first published on The 1709 Blog

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Adidas Files Trademark Infringement Suit Against Marc Jacobs Over Stripes

April 15, 2015 · by ·

U.S. law does not grant copyright protection to clothes, because they are considered by the Copyright Act to be useful articles which cannot be protected by copyright. Indeed, under Section 101 of the Copyright Act, “the design of a useful article… shall be considered a pictorial, graphic, or sculptural work [and thus protectable by copyright] only if, and only to the extent that, such design 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.” That means that if a part of the design of the garment can be separated from the useful part of the garment, this separate part can be protected by copyright.3963999187_399a43d93d_z

Fashion companies can also protect some of their designs by applying for a patent or by registering them as a trademark. Such is the case for Adidas’ three stripes design, which is also a registered trademark (the Three-Stripes Mark).

Does that mean that no other designer may feature three parallel stripes, or even four parallel stripes, on a particular garment? This will have to be decided by the District Court of Oregon, where adidas America and adidas AG (Plaintiffs) filed suit on April 8 against Marc Jacobs International, LLC (Defendant), claiming that that a Marc by Marc Jacobs’s jacket featuring four parallel stripes on its sleeves infringes adidas’ Three-Stripes Mark.

Plaintiffs allege that this constitutes trademark infringement, trademark dilution, and unfair and deceptive trade practices. They are asking the District Court of Oregon to permanently enjoin Defendant from manufacturing and selling these models, or other models which would similarly infringe on the Three-Stripes Mark, to stop using this mark, and to order the destruction of goods and materials using the mark. They are also asking the court to award them monetary and punitive damages and to enjoin Defendant to disgorge all profits from the sale of the allegedly infringing goods.

The case is Adidas America, Inc. v. Marc Jacobs, 3:15-cv-00582.

The Three-Stripes Mark

Plaintiffs own several trademarks for three parallel stripes on garments, as, for instance, the registered trademark No. 2,058,619 for “sports and leisure wear, namely shirts” which consists of “three parallel bands positioned along the length of each sleeve of a shirt.” It also owns several trademarks which use the term “3 stripes,” such as THE BAND WITH THE 3 STRIPES mark, which is registered in class 25 for sport and leisure wear.

Plaintiffs contend that the public recognizes these three-stripes as an indication of origin of adidas  goods, and listed in its complaint several uses by the media of three stripes “when describing adidas and its products.

Adidas Y-3 line

The adidas Y-3 line is designed by Japanese designer Yohji Yamamoto. It was first introduced in 2002 and is sold in department stores and in adidas’ stores. Many of the Y-3 clothes feature three stripes on their shoulders, front or back, or on the sleeves.

Marc Jacob’s Jacket

Plaintiffs allege that a jacket manufactured and sold by Marc Jacobs infringes the Three-Stripes Mark. The complaint provides photographs of the jacket which features four stripes on its sleeves, a design which the complaint states is likely to be confused by the public for an adidas Three-Stripe Mark.

Similarity and Trademark Infringement

As this is not a copyright infringement suit, but a trademark infringement suit, the court will not examine if both designs are substantially similar. Instead, it will examine if the stripes featured on Defendant’s model is recognized by the general public as an indication of origin of goods, and if there is a likelihood of confusion between the stripes as used by defendant on its jackets and the Three-Stripes Mark. The Oregon district court will use the Ninth Circuit Sleekcraft factors to determine a likelihood of confusion. These factors are the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the marketing channels used, the degree of care exercised by customers, the defendant’s intent in selecting the mark, and the likelihood of expansion of the product lines.

It remains to be seen if the court will be convinced that four stripes on a garment infringes the Three Stripes Mark. However, if Plaintiffs are unsuccessful in their trademark infringement claim, they may still be successful in their dilution claim.

Trademark Dilution

The complaint also alleges that the Three-Stripe Mark is famous, and that its unauthorized use by Defendant dilutes its distinctiveness in violation of 15 U.S.C. § 1125(c), which entitles the owner of a famous mark to an injunction against a third party using a mark in commerce “that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”

Since October 2006, when the Trademark Dilution Revision Act was enacted, a Plaintiff only needs to prove a likelihood of dilution, not an actual dilution. The Act defines a famous mark as a mark “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner,” which may be determined by the courts using several factors, such as the duration, extent, and geographic reach of advertising and publicity of the mark, the amount, volume, and geographic extent of sales of goods or services offered under the mark, and the extent of actual recognition of the mark. The Three-Stripes Mark is certainly famous, and is also certainly distinctive.

Dilution by blurring is defined by 15 U.S.C. § 1125(c) as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” The law lists several factors which may be used by the courts to determine whether the junior mark is likely to cause blurring, including the degree of similarity between the mark or trade name and the famous mark, the degree of inherent or acquired distinctiveness of the famous mark, the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark, the degree of recognition of the famous mark, whether the user of the mark or trade name intended to create an association with the famous mark, and any actual association between the mark or trade name and the famous mark.

Therefore, even if the court would find that the stripes on the Marc Jacobs jacket do not infringe Plaintiffs’ trademark, the court may still find that they are so similar as to dilute the Three-Stripes Mark.

Image is Courtesy of Flickr user Kick Photo under a CC BY-ND 2.0 license.

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