The fashion industry has debated the effect of the Supreme Court’s 2017 decision in Star Athletica, LLC v. Varsity Brands, Inc., interpreting the Copyright Act’s rules for registration of two and three dimensional designs incorporated into useful objects, on the availability of copyright protection for fashion designs and accessories. There now appears to be an emerging consensus of finding copyright protection in circumstances where it might not have been previously expected. This is hardly surprising. What is surprising is that the Court’s decision may be impacting a key question that the Court side-stepped.
While Star Athletica resolved that an otherwise copyrightable design that is a part of a useful object could be the subject of copyright so long as it could be conceived independently of the object in which it was incorporated, the Court pointedly refused to decide whether the cheerleading uniform surface patterns were copyrightable under the rules applicable to all two and three dimensional designs. Chief among those rules is the requirement of “originality”.
The breadth of the potential impact of Star Athletica is reflected in the recent decision of the Copyright Office to issue copyright registrations to adidas for the Kanye West Yeezy Boost 350 and Yeezy Boost 350 Version 2 sneakers. The application for registration as a two dimensional design and a three dimensional sculpture had originally been refused on the ground that it was a useful article. A request for reconsideration of the refusal was filed and registration was again refused on the ground that the “simple shapes arranged into common and expected pattern in very simple color schemes” did not meet the originality requirement.
But on a second request for reconsideration, the Copyright Office reversed itself, concluding that under the test of Star Athletica the two and three dimensional aspects of the designs could be “perceived” as separate from the sneaker, the useful object on which the designs appear.
It also decided that given the very low standard for copyrightability, the designs’ lines, stripes and swirls, although individually not copyrightable, had been combined in a sufficiently distinctive manner so that the designs, when viewed as a whole, merited registration. The copyrightable combinations, as described by the Copyright Office, consisted of “irregular black lines of various lengths and shapes on a grey fabric with a black semi-circle in the arch and an orange dotted stripe on an off-white heel loop” in the case of version 1 and “several grey lines in a wave pattern with a thick orange stripe on the outsole that fades toward the heel” with an inner orange layer that adds “intermittent orange coloring” in the case of version 2.
In light of the Copyright Office’s decision to register the Yeezy 350 sneaker patterns, at least in their contrasting color ways, fashion brands should now consider seeking copyright registration for their important designs containing any variation beyond the most basic, unvaried stripes.
Credit: Helene M. Freeman
Read other blog posts related to Star Athletica, LLC v. Varsity Brands, Inc. here.
Two cappuccinos worthy of a caffè in Milano started my last visit, with a fashionable friend, to the Brooks Brothers store on Madison Avenue, here in New York. The chain’s mother ship had recently opened a bright and hospitable Red Fleece Café, and so my friend and I met right on the ground floor, within handshake distance of displays of shirts and ties, had a refreshment and then, coupons in hand, went shopping, women’s first, men’s second. On our way, we passed a golf simulator, where a pro patiently guided a customer on improving his swing—with a real club toward a virtual green. Retailers have always offered something besides what are now universally called “items.” From lunch counters to hairdressing and beyond, stores have been attracting generations of visitors with more than just merchandise.
What has changed, however, is both the breadth and the layered complexity of it all. Even the décor matters as it never has before. The luminescent, open-plan renovation of the Saks Fifth Avenue store is a veritable invitation to come on in and have a look. As for services: soon after our visit to Brooks Brothers, this note arrived by email: “Your trousers are ready… We can pull nice coordinating pieces for you.” Personal shopping used to be a benefit given to the best customers of a retailer, but with physical (“bricks-and-mortar”) retailing challenged so completely now by online competition, all shopping has become personal, and stores must engage and entertain customers as they never have done before.
When a business expands, however tangentially and however much in pursuit of the raison d’ê·tre for a store—selling goods—the store should be aware of the likely importance of protecting its brand for the other activities. That means reexamining the retailer’s portfolio of registered trademarks. There should already be a registration for retail store services and there is likely one for online sales, but if a café or coffee bar has just been added, the next application should be for restaurant services (if not already there as a legacy from the days when even modest-sized retailers had soda fountains). But that virtual driving range? Entertainment services. I was recently invited to a delightful event at Saks, hosted by Switzerland Tourism. Two of my favorite things converged within a roped-off area of the sales floor: great retailing and Swiss chocolate. From a trademark point of view, however, that would be providing catering services and event location services. And so on.
Insurance policies need to be examined to be sure that the new range of activities is covered. The cappuccino is foaming, the Champagne is popping and the golf clubs are swinging—check with your carrier to be sure your coverage is current and sufficiently comprehensive.
Finally, be sure your employment policies are up to date. A dress code that applies to salesmen in men’s suits doesn’t necessarily apply to a golf pro, after all, to say nothing of a barista.
Credit: Alan Behr
See posts: “Brooks Brothers at 200“
On March 4, 2019, the U.S. Supreme Court resolved an intriguing circuit split in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. Justice Ginsburg authored the unanimous decision, holding: “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.” The Court rejected the argument by Fourth Estate that the registration requirement of the Copyright Act was accomplished by filing an application for registration. In its rationale, the Court leaned heavily on the language of the statute.
The Copyright Act (17 U.S.C. §411(a)) reads: “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”
Simply put, the Court stated that, “if application alone sufficed to ‘make’ registration, §411(a)’s second sentence –allowing suit upon refusal of registration –would be superfluous.”
The Court examined other provisions of the statute to interpret the meaning of §411. The Court found that the phrase “after examination” in §401 meant that “registration,” as used in the statute, follows action taken by the Register. The statute provides an exception to the registration requirement before suit through preregistration of a work that may be “vulnerable to predistribution infringement –notably a movie or musical composition,” and permits the start of an infringement action prior to registration for some live broadcasts.
How will the fashion business be affected by the ruling? This being an industry that spans the world, many creators argued in amicus briefs that requiring pre-suit registration for U.S. authors and domestic works placed them at a disadvantage since such a requirement conflicted with the Berne Convention’s de-emphasis on copyright formalities. However, the Court’s decision noted that the U.S. Congress had the opportunity to amend the copyright statute in 1988, 1993, and 2005, but declined to remove the registration formality in each instance.
The Court also pushed back against Fourth Estate’s argument that the Copyright Office’s processing time for applications was too slow, and instead pointed out that expedited processing was available, albeit for an additional $800 fee. The Court also indicated that the Copyright Office’s slow processing times could be improved should Congress address budgetary and staffing shortages.
In practice, the amount of time the Copyright Office takes to process an application is less relevant once the registration issues.
Since copyright subsists from creation in tangible form, requiring registration prior to commencing a suit for infringement does not preclude copyright owners from recovering compensatory damages from infringement that occurred prior to registration. A registration within three months of first publication will relate back to the publication date for purposes of recovery of statutory damages and attorneys’ fees; and the effective date of the registration is the date on which the copyright application is submitted and completed with the submission of the deposit copy and payment of the registration fee.
The Court’s decision is understandable as it is compelled by the statutory language. But what does this mean for creators, practitioners, and other stakeholders? Only the future will tell the long term effects in the fashion industry, but the message remains clear: if a design that is protectable by copyright is important, register it as soon as you can, preferably before it is distributed or displayed to the public, if you want to obtain the best protection and the broadest remedies in the United States.
Credit: Candace R. Arrington
Salary Thresholds Under New York State Law For White Collar Overtime Exemptions
In Part One of this article, we discussed tests for allowing exemption from overtime pay for “white collar” professional, executive and administrative employees under federal and New York State law.
Effective December 31, 2018, New York State’s salary basis threshold for exempt executive and administrative (but not professional) employees increased. Employers should periodically review the job duties, functions and salaries of those currently classified as exempt and, if they wish to maintain the exemption for those below the new thresholds, must increase their salaries accordingly. Here are the new minimum salary requirements to maintain exemptions from overtime for employers in New York State:
Employers in New York City
- Large employers (11 or more employees)
- $1,125.00 per week ($58,500 annually) on and after 12/31/18
- Small employers (10 or fewer employees)
- $1,012.50 per week ($52,650 annually) on and after 12/31/18
- $1,125.00 per week ($58,500 annually) on and after 12/31/19
Employers in Nassau, Suffolk, and Westchester Counties
- $900.00 per week ($46,800 annually) on and after 12/31/18
- $975.00 per week ($50,700 annually) on and after 12/31/19
- $1,050.00 per week ($54,600 annually) on and after 12/31/20
- $1,125.00 per week ($58,500 annually) on and after 12/31/21
Employers Outside of New York City and Nassau, Suffolk, and Westchester Counties
- $832.00 per week ($43,264 annually) on and after 12/31/18
- $885.00 per week ($46,020 annually) on and after 12/31/19
- $937.50 per week ($48,750 annually) on and after 12/31/20
New York State has no minimum salary for exempt “professional” employees, although most of those employees would still be subject to the federal salary minimum for exemption ($455 per week, or $23,660 annually). The U.S. Department of Labor (“DOL”) has not raised the federal minimum salary for exemption since 2004, but on March 7, 2019, the DOL published a proposed rule that would increase the salary threshold for managerial, administrative and professional white collar exemptions to $679 per week ($35,308 per year), to take effect on January 1, 2020.
New York Fashion Industry employers should review the job duties, functions and salaries of their employees whom they currently classify as exempt from overtime pay to insure compliance with both the job duties and salary requirements. For an employee whose salary falls below pay requirements, the employer will have to decide whether to increase the salary in order to be able to continue the overtime exemption or to reclassify the currently exempt employee as non-exempt and pay them overtime for hours worked over forty in a week.
For those currently exempt employees whom the employer decides to reclassify as non-exempt, the employer should insure that all their work time is accurately recorded as of the date of change and going forward. Finally, employers should make it a point to conduct regular reviews of the primary duties of those employees it wishes to continue as exempt, since merely paying the higher salaries will not be sufficient. To qualify for the overtime exemption, employers will be required to meet both the salary test and the job duties test.
Federal and state overtime law are quite fact specific. Failure to comply can lead to expensive administrative and court proceedings. The statutes of limitations – that is, the look back periods the agencies and the courts may consider in calculating overtime pay deficiencies – are two years under federal law (three years if a willful violation is found), but are six years under New York State law. And both federal and state laws provide for liquidated (double) damages and for an employer to pay the legal fees of a successful plaintiff’s lawyer. Moreover, class and collective actions abound. In short, stay current on what you need to know and consult with employment counsel as needed and whenever in doubt; or be prepared to endure exceedingly painful, protracted and costly legal consequences.
Credit: Evan J. Spelfogel
One of the most costly mistakes a fashion business can make is to misclassify an employee as overtime exempt regardless of the employee’s duties and functions. That creates the risk of substantial liability under both federal and state law.
The Federal Fair Labor Standards Act provides for several basic overtime exemptions. These include the executive, professional and administrative exemptions and are commonly referred to as “white collar” exemptions.
To be exempt from overtime pay, an employee must be paid a fixed salary regardless of hours worked of at least $455 per week ($23,660 per year) under federal law, and more than twice that amount under New York State Labor Law, and must have duties and functions that fall within the applicable duties test.
Executive Exemption Duties Requirements
To qualify as an exempt executive (high-level manager), an employee’s primary duties must relate to managing a business or a department within a business. The employee must regularly supervise at least two full-time employees or the equivalent in part-time employees, and must have the authority to hire, fire and discipline employees, or effectively to recommend such action. Secondary tests include interviewing and training employees, and assigning and directing their work. Typically, this exemption would attach to store and departmental managers.
Administrative Exemption Duties Requirements
To qualify as an exempt administrative employee, the employee’s primary duties must consist of the performance of office or non-manual work directly related to management policies or general business operations, including customarily and regularly exercising discretion and independent judgment involving the comparison and evaluation of alternative courses of conduct and making decisions, after consideration of the various possibilities, free from immediate direction or supervision.
Duties may relate to taxes, finance, accounting, budgeting, auditing, insurance, quality control, purchasing, procurement, advertising, marketing, research, safety and health, personnel management, human resources, employee benefits, labor relations, public relations, government relations, computer network, internet and database administration, and legal and regulatory compliance.
Factors may include whether the employee formulates, affects, interprets, or implements policies or practices, whether the employee may commit the employer in matters having significant financial impact, and whether the employee has authority to waive or deviate from established company policies and procedures without prior approval.
Professional Exemption Duties Requirements
An exempt professional employee is one who falls under the definition of either a “learned professional” or a “creative professional.” Learned professionals work in professions typically requiring an advanced degree (college or higher) and a prolonged course of specialized intellectual instruction such as law, medicine, accounting, engineering, teaching, or architecture. Primary duties must be intellectual and involve the regular use of discretion and independent judgment.
Creative professionals in the fashion industry include, among others, fashion designers, fashion stylists, textile designers, fashion public relations, fashion writers, fashion illustrators, garment technologists, graphic designers and artists, creative employees who are given only a subject matter or underlying concept of what they will create, and individuals who plan and direct the creative elements of new fashion and their advertising agencies. These individuals’ primary duty is performing work that requires invention, imagination, originality or talent, as distinguishable from work dependent merely on intelligence, diligence, and accuracy. Examples of non-exempt work in fashion include fabric cutters, sizers, copyists, re-touchers of photographs, and rewriters of press releases or advertising copy, and general fashion industry employees whose work is subject to substantial control.
In Part Two, we will review in detail the New York State salary thresholds for overtime exemption.
Evan is a senior counsel in the Employment & Labor Law Practice.
An interview with Simon Crompton, creator of the blog Permanent Style
In my last post, I reported on my conversation in London with Simon Crompton, who runs the website Permanent Style (www.permanentstyle.com), which is devoted to the world of bespoke (custom-made) menswear. We discussed elements of style for men, but when the conversation moved to the topic of how a website proprietor protects his own intellectual property, Mr. Crompton had some decidedly pragmatic ideas.
Permanent Style is authored almost entirely by Mr. Crompton, who, last year, was finally able to devote his full professional time to it. The site features the latest developments in bespoke, from tailoring to shirtmaking to shoemaking, around the world. It is supported by advertising, and it also promotes its own limited line of products, from surprisingly stylish watch caps (ski caps) to Oxford shirting for readers to provide their bespoke shirtmakers. Prominent on the site are reviews of makers of bespoke clothing and shoes, with Mr. Crompton serving as live mannequin and photographer’s model throughout, reporting on each step of the process.
I asked Mr. Crompton what kind of legal protections he employs for his work. Because his writing originates in Britain and not the USA, he is spared the unique (and to those of us who have done it for clients or ourselves, often frustrating) requirement of registering his copyrights. His pragmatic view: “It isn’t as if it is a novel or song lyrics. Anything on the site obviously comes from me, and no one is going to run out and say I’m Simon, I wrote this.”
As for protecting his brand, he holds to an equally pragmatic approach: be first out, keep a solid reputation, and you win. “The site has been up just over ten years, and it is well-known. That’s a very good position in the world relative to others who might be trying to establish themselves.”
Mr. Crompton also noted a key advantage to prose authored in Internet time: “What I write is so fast-changing, and there is such a high volume of it that it’s not that easy to protect, but at the same time, there is not much virtue in somebody copying. I already have the biggest traffic. If someone were to start copying my articles, that would never generate much traffic for him. He would still have to attract readers and then subscribers by offering something different, and unless that should happen, I would always do better on search engine optimization.”
That goes to the heart of a key debate in copyright circles—what utility is legal protection in a world in which almost everyone can read just about anything, and anyone can publish just about whatever he or she chooses to write, on platforms from Twitter on up? Registering the copyright, to say nothing of suing to stop infringement, can look old-fashioned in the context of a business (and social-media) model that values “reach,” often by free access, and loyalty for the generation of revenue more than it does traditional legal protections.
In short, Mr. Compton is conducting a very contemporary business to promote many very traditional crafts. If by so doing he helps craftsmanship flourish, we can only commend him-even if the model depends more on lawyers reading about dressing well (and, we hope, attempting to do so) than on offering legal advice. When it comes to what we do, however, lawyers can only continue to recommend to their clients that they reach out and consult with their counsel whenever making important decisions about their intellectual property. If you do not make these decisions yourself, the marketplace will very likely make them for you.
Credit: Alan Behr