It is an oft repeated truth that copyright exists automatically from the moment a work is fixed in tangible form and that no formalities are required to preserve the copyright. In the United States, registration with the Copyright Office is only necessary to sue for infringement, but it is not uncommon for owners to defer registration until litigation is contemplated. The recent decision in Solid Oak Sketches v. 2K Games, Inc. is a healthy reminder that the timing of the registration can significantly affect the remedies available to the copyright owner in a suit for infringement and that a delay in registration can be costly.
The remedies for copyright infringement include recovery of actual damages and the profits of the infringer, as well as an injunction of continued infringement in appropriate cases. But the law also permits recovery of “statutory damages”, in lieu of proving actual damages or profits. Attorney’s fees, expert witness fees, deposition costs and similar litigation expenses can be recovered by the prevailing party. Given the potential cost of prosecuting a copyright infringement action and proving damages, the plaintiff’s ability to recover its attorney’s fees and litigation expenses, as well as statutory damages, can be important factors in the calculus of the value of the litigation for both the plaintiff and the defendant.
However, the law permits recovery of attorney’s fees and statutory damages from a defendant only if the copyright was registered with the copyright office before the infringement “commenced”.
The plaintiff in Solid Oak was the copyright owner of the artwork for eight designs, tattooed on five different National Basketball Association (NBA) players. (If you did not realize tattoo art is copyrightable, you didn’t read my colleague, Alan Behr’s, recent post.) The defendants created and sold realistic basketball simulation video games, using animated versions of the NBA players as they appeared in real life, complete with their tattoos. The first video game in the series was introduced in 2013 and new versions appeared in 2014 and 2015. The plaintiff registered its tattoo designs in 2015, after the initial versions of the game appeared, but prior to the release of the 2016 game in the series. Unable to convince the defendant to take a license for the tattoo artwork appearing on the players depicted in the game, Solid Oak brought suit for copyright infringement.
The court held that Solid Oak was not entitled to recover attorney’s fees and statutory damages, even with respect to the 2016 version of the game which was released after registration of the copyright, because the infringement had commenced before the registration of the tattoo art in 2015. According to the court, when the first act of infringement in a series of on-going infringements precedes registration, these special remedies are not available, even if the versions released after registration differed from the prior versions.
In the fashion industry, where knock-offs can appear in the market within months of the introduction of an original design, it can be advisable to register print, lace and jewelry designs as “unpublished works” before they reach the market. The fee for registration is only $35 and it can be done on-line without a large investment of time. The benefits, which also include a presumption that the two or three dimension design is an original, copyrightable work, owned by the registrant, are well worth the money and effort.
Credit: Helene M. Freeman
I vaguely recall, from long repressed memory, the time when only sailors and thugs had themselves tattooed. But anyone caught in a crowd, especially on a summer’s day, when long-cloaked skin comes into the fore, can clearly see that having oneself inked has become quite the fashion. Apparently, late in the last century, the movement was begun by, or was at least energized by, Los Angeles celebrities who risked going to less than savory places to have butterflies, arrow-pierced hearts and other traditional artifacts poked into them with commanding permanence. The fad grew quickly to become an international trend. I remember sitting down for dinner at a restaurant in a small Bavarian town in the year 2000 and wondering, as the waitress arrived in a fetching spread-eagle bodice, how far down the tattoo on her left breast extended. The answer, we now know, is that it went as far below the line as nature gave room for its descent. When something becomes as obviously popular as tattooing, it tells us that it is time, of course, to consider the legal implications.
Covering an entire arm with words, phrases and graphic-novel style illustrations (known in the trade as “doing a sleeve”) is now not uncommon. There remain limits. The military has the right to refuse potential enlistees who arrive with what is deemed excessive or “grossly offensive” tattooing. There appears to be no legal impediment to the military in making those distinctions, but we can anticipate that someone may, at some point, raise a First Amendment objection. There has already been a federal appeals court decision striking down a municipality’s ban on tattoo parlors as a violation of the First Amendment.¹
Copyright law presents a more interesting problem: In the absence of a contract stating otherwise, the owner of the copyright in the artwork worn by the tattooed person is the artist. That is, if you go to a tattoo parlor and have it do a sleeve filled with flying dragons, flying skulls and terrestrial motifs, the owner of the copyright in the art you are wearing is not you but the person with the tattoo gun who pummeled it into you—unless (a) the artist is an employee of the salon or (b) the artist and the salon have entered into an assignment of rights contract, in which case the salon is the owner of the art on your arm. The lawful owner can register the art with the Copyright Office and sue to protect its rights against infringers, most notably including copycat rival tattoo artists.
If your artist has tattooed onto your arm something to which the copyright is owned by another—say Mickey Mouse or the Batmobile—you, as the bearer of the arm, could theoretically be caught in the middle of a legal fight with the copyright owner. In copyright cases, impoundment and destruction are possible remedies, but we likely will not see the day when the wearer of a tattoo would be required to visit a local tattoo-removal center to resolve copyright litigation. What could happen in theory in copyright matters is, fortunately, often removed from what typically does occur.
What is the takeaway from all this? Your arm is lovely the way it arrived along with you. Strictly as a question of taste, perhaps it is better just to let that be enough for you.
¹ Anderson v. City of Hermosa Beach, 621, F.3d 1051 (9th Cir. 2010)
Credit: Alan Behr
“100% Grated Parmesan Cheese.” Several consumers claim this seemingly straight forward product description is misleading, so misleading in fact that crafty lawyers have dragged Kraft and other cheese manufacturers into court on false marketing claims. So many parmesan cheese class action lawsuits have been filed (sixteen and counting) that the U.S. Judicial Panel on Multidistrict Litigation has lumped these actions into a single massive case.
What’s wrong with saying “100% Grated Parmesan Cheese” when referring to my favorite pasta primavera topping? According to the class action plaintiffs, this grated parmesan cheese contains substantial amounts of cellulose (wood pulp) which acts as an anti-clumping agent (so the grated cheese stays grated). This, the plaintiffs say, means that the grated parmesan cheese sold by the defendants is not “100%” grated parmesan cheese.
Since I am not involved in any of the parmesan cheese class action lawsuits, there is at least entertainment value in the cases. But for consumer products manufacturers, there are lessons to be learned. Some marketing claims may land you in court!
Consider one goal of the Federal Trade Commission. Its website (https://www.ftc.gov/about-ftc) says its mission is:
To prevent business practices that are anticompetitive or deceptive or unfair to consumers; to enhance informed consumer choice and public understanding of the competitive process; and to accomplish this without unduly burdening legitimate business activity.
Let me paraphrase here, the FTC wants to keep manufacturers and retailers honest with the consuming public about the products they sell. Word choice is important because some words can be interpreted differently by different consumers and thus misleading because of an ambiguity.
An amazing fashion company I work with uses GOTS certified organic cotton for one of its product lines. Is it okay for that company to say that the product is 100% organic? Unless every component of these garments is organic (dyes, trims, buttons, etc.), the answer is no. The correct advertising claim should say that the products are made from GOTS certified organic cotton without implying that product as a whole is organic.
“All Natural” is another potentially problematic claim, even where the product is intended to be made from all-natural components. Consumer product companies that don’t carefully control their supply chains are at the mercy of suppliers who may (knowingly or not) substitute synthetic ingredients for natural ingredients. I am told by people who know about these things that many synthetically derived ingredients act the same as the natural ones. But some consumers are willing to swear under oath that their purchasing decisions are guided by whether a product is “all-natural” and are willing to join class action lawsuits when a purchased product does not live up to the “all-natural” claim.
Let me mention another recent case. Trader Joe’s, which markets certain oatmeal and cereals as containing “maple” (TJ’s Frosted Maple and Brown Sugar Shredded Bite-Sized Wheats and TJ’s Oatmeal Complete Maple and Brown Sugar) is being sued in federal court. Can you guess what’s not on the ingredient list?
Credit: Jeremy D. Richardson
A young lawyer walked by while working late, waving the striped tie he had just removed, announcing that, after 9:00 p.m., business casual was mandatory. European-born, my colleague’s tie had blue, white and green stripes angled downward from left to right (as seen by the wearer), in the classic British (and predominantly European) tradition. In Britain, the convention developed that, just as each clan in Scotland has its own tartan, each regiment, club and school would likely have its own, distinctive, diagonally striped tie.
On not quite as classic but by now traditional American ties, however, diagonal stripes run in the opposite direction, from right to left. There are various stories about why that is so. As with anything you can find on the Internet, you can discover much that is of interest, some of which might even prove to be true. You may learn, for instance, that the reason the ties slant in different directions is that European infantrymen shouldered their weapons differently from Americans and that their rifles ejected spent casings in an opposite direction. Those explanations are not only fogged by inaccuracy but bear little evidence of good fashion sense.
More credible is the claim by Brooks Brothers that it invented the American right to left downward slide on what it calls a Repp tie (freely admitting that an early spelling error caused it to get wrong the name of the French Rep ribbed silk fabric it used to make the ties). The idea was to bring American “roguish charm” to British tradition–an act that, as is often the case when Americans reference British traditions–acts as both homage and gentle satire. The British officers and gentlemen men who earned the right to wear regimental colors around their necks sometimes being quite sensitive about having earned the exclusive right to that privilege, Brooks Brothers reversed the direction of the stripe in an effort to soothe warrior sensitivities.
American schools have their Repp variations. My American university’s thick-striped tie, in navy blue and burgundy, is guaranteed to dull down almost any suit that goes with it.
The striped tie having now been commonplace for over a century, uncountable combinations of alternating stripe widths and colors have been used. A designer looking to protect his or her intellectual property rights in the patterns of ties may theoretically create a novel combination of colors and widths running in either direction–just enough to warrant a claim for copyright protection. Given the multiplicity of existing designs, that protection, if granted, would likely be a “thin copyright,” but in theory it could happen. The larger question is: why bother? Individual styles rarely last more than one season, after all. Would you really sue to protect the design, hoping the defendant does not dig into neckwear history to find something similar warn by officers of a British regiment since before it fought in the Battle of the Somme?
Each of those regimental, school and club ties identifies a source of origin–raising the possibility that a particular pattern of stripes can be protected as a trademark. As a practical matter, unless a stripe acquires such distinctiveness that the market accepts that it designates a specific source and so is not merely decorative, it is probably not protectable as a trademark. It is possible, again in theory, that a particular pattern of stripes could gain “secondary meaning.” That is, they now serve, through usage, advertising and the passage of time, as branding and devices not merely as pleasing patterns. If that should happen, is it indeed enough of a difference to prevent a claim of infringement to run the same pattern in the opposite direction, just as Brooks Brothers and other American makers did in order to distinguish their patterns from those British ties from which they freely borrowed both conventions and patterns? Much could depend on survey evidence of consumer habits and consumer awareness of the differences. That is another way of saying: if you did not know about all that before reading this post, the difference in the direction of the stripes probably is of no consequence to you; your response to the survey would therefore likely aid the plaintiff in a claim that simply changing the direction of the stripes did not make the defendant’s pattern less likely to cause infringing confusion.
That would support the generally held view that, when it comes to neckties, diagonal stripes, in whatever direction they run, are, in nearly all situations, open territory for designers. Within the quite narrow sartorial conventions of male business attire, however, there is not really all that much new that can likely be done with diagonal stripes in neckties. So, let us all celebrate an ongoing tradition and try not to worry too much about all this. A good striped tie will not necessarily be the one that a lawyer attempts to protect as intellectual property. It will, however, always be one that will work for him just about anywhere.
We would like to thank Stephen Sidkin of Fox Williams LLP, London, UK, for providing the inspiration and background for this post.
Credit: Alan Behr
Since the announcement of the result of the UK’s referendum about its future with the European Union so far as UK fashion is concerned, there has been no discernible change in the previous pattern of doing business. But the designs of business will change irrespective of what replaces the UK’s existing trade relationship with the EU.
Already there are forecasts of an increase in inflation for fashion and footwear prices. It follows that a supplier which fails to build into its contracts an inflation indexing provision is simply giving its customer an opportunity to make a greater margin on resale!
Correspondingly, UK fashion businesses sourcing clothes, footwear or accessories from overseas which do not include a currency conversion clause in their purchasing contracts are asking for trouble. The immediate fall in GBP on 24 June 2016 has been nowhere reversed.
But on the plus side, buying UK fashion assets – brands or trophy stores – in USD or pretty much any currency (excluding Bank of Toytown) has become a whole lot cheaper.
For those British fashion businesses not falling prey to overseas buyers, uncertainty can be expected to translate itself to an increasing use of pop ups and the taking of concessions in department stores.
And what of legal issues? The UK’s ‘affection’ for lawyers (”The first thing we do, let’s kill all the lawyers,” Henry VI, Part II, act IV, Scene II) is likely to grow. This is because whilst the referendum will not in itself have any immediate implications in legal – terms – it could take years before the UK exits the EU officially – good lawyers who look to try and achieve their clients business objectives will consider what the referendum means.
As such, can it be said that the decision to leave the EU has or will frustrate the purpose of a contract so making it impossible to perform the contract? Possibly. But the English courts have consistently been unimpressed by an argument that a contract is frustrated because it is more expensive to fulfil or more difficult to perform.
But then does the Brexit vote constitute an event of force majeure? Unlikely as it would be necessary either for the contract to expressly state it to be so or for it to be interpreted as falling within a more general force majeure category, such as the act or decision of a government body. However, this has still to be tested in the English courts.
Will English choice of law and English court jurisdiction clauses continue to be upheld in the English courts given that these are currently governed by EU regimes? For the time being – yes. But in the future?
Equally, how will the intellectual property rights of fashion brands fare? The EU trade mark and the EU design, both pan European rights will almost certainly cease to cover the UK and this will result in a need to secure separate rights in the UK. The conversion of existing EU IP rights to national UK rights is likely but on what basis this will be implemented and whether it will involve re-examination of the rights is unclear.
The enforcement of IP rights may also throw up some interesting issues. What happens to a pan European injunction granted in favour of a non-UK company pre-Brexit? Does it automatically cover the UK post-Brexit or will it need to be registered in the UK to continue in place? This has the potential for re-opening a number of hard won disputes by designers and fashion brands alike.
Finally, what about grey imports? The UK could become a haven for parallel imports and worse if any transitional provisions on the protection of EU trade marks leave gaps in protection, the rights could be left unprotected if the fashion brand does not already have a UK trade mark in place.
A few years ago a successful telecoms company – Orange – claimed, “The future’s bright. The future’s Orange.” Today the future is grey as we try and see through an interesting period in the history of the UK.
*The Fashion Law Practice appreciates this guest post from Fox Williams LLP (London, UK).
The term fashion photographer typically brings to mind a specialist who works on assignment for advertisements or editorials and who brings to each shoot enough equipment to light a stadium and enough digital photographic gear to document a war. Bill Cunningham, who died on Saturday at the age of 87, did it all differently and in so doing became the essential visual chronicler of fashion in the USA.
Bill worked for The New York Times, but there is no external evidence that he took direct orders from editors—or that he deferred to the wishes of designers, subjects or anyone else. His method was to go around Manhattan on a bicycle, wearing a purposefully utilitarian and unfashionable outfit: blue French worker’s jacket, khakis and sneakers. At charity benefits and other social goings on—which is where I usually ran into him—he would switch into something black, not to be fashionable, but to blend in, rather like a stalking ninja—which, photographically, is rather the role liked to fill. His camera was typically an obsolescent (to a photojournalist) 35mm film model, and I never saw him trouble himself to carry more than one lens. He was balletic in his movements, turning, twisting, weaving and sometimes seeming to float among chatting socialites, popping off at what interested him. He was all business: if you called out, “Hi, Bill,” you were lucky to get a nod and a smile in response before he seemingly had slipped under the dress of the grandly frocked blonde next to you and emerged unseen to snap one just like her a few paces beyond.
The protocol was to pretend you did not see him even if you did, even as you silently pleaded with the gods of fashion that you had worn something worthy of Bill’s attention. (As a middle-aged man in a Henry Poole dinner jacket, I never held any such illusions.) The payoff was to have your picture in The New York Times, most often in one of the short videos Bill filed, narrated in his typically avuncular style—his high voice effusive with enthusiasm at trends and fads, some of them not known to almost anyone until he announced their ascendance.
Bill was no photographic stylist. As long as the image made his point about what was being worn, it was good enough for him. And because his eye for fashion was so unfailing, it made no matter. As Anna Wintour, the editor-in-chief of Vogue, frequently acknowledged, “We all dressed for Bill.”
If Bill photographed you, by all means, accept the honor and cherish it. Under law, you have no right to compensation for it: if he snapped your image at a benefit or on the street, you had no expectation of privacy, and so he did not need the one thing he never appeared to have concerned himself to get: a model release. Sometimes people claim that, in some published photograph or another, they were made to look bad and so try build a case around that. With Bill Cunningham, sorry: he would only photograph you if he thought you looked fantastically unique or simply fantastic. If you did look bad or (almost as unsettling) commonplace, he just passed you by. Conversely, if you managed to photograph him at work, as I did for my series of photographs of the Upper East Side party scene Naked at the Ball (the picture is above), he did not care—just as long as you did not get in his way when it was his turn.
Bill Cunningham was indeed one of a kind. The fashion world will miss him.
Credit: Alan Behr
Photo Credit: Photograph Copyright © 2015 by Alan Behr