The Other Shoe Drops

Photo courtesy of Reinhart Julian (Unsplash Photos)

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.


Court Dress: A Sartorial Brief for Lawyers

Gregory Peck Dies at 87

Law has always been among the most sartorially sophisticated professions. Its practitioners must always be representing not only themselves, but their firms, their clients, and even the dignity of the law itself. These imperatives, along with the generous means that are often a lawyer’s prerogative, have produced generations of well-appointed attorneys who appreciate good clothes and understand their power.

The relaxation of dress codes in even the most traditional law firms may have shifted the paradigm toward less imposing and more comfortable attire, but it hasn’t diminished the importance of presenting a professional impression. This can be difficult to pull off in the more subjective context of a casual workplace, and there’s nothing comfortable about finding oneself inappropriately attired. Alan recalls being stunned when one of the real estate lawyers handling the closing of his Fifth Avenue apartment showed up in khakis and a polo shirt — not because of any stylistic offense per se, but because such casual attire called into question the man’s judgment and authority to oversee such a important transaction.

It’s never a bad thing for a lawyer to be the most formally dressed person in a meeting — the grownup in the room, so to speak. While this once may have meant a dark three-piece suit, today it might mean a subtle sportcoat and well-chosen tie. Sartorial standards may shift, but lawyers benefit from maintaining a relative formality that helps them project the following timelessly essential professional qualities:

Trustworthiness – Whether being appraised by a judge, a jury, a client, or a senior partner, a lawyer’s attire should give an open and honest impression. This translates to well-tailored but simple, sober clothes that don’t attract attention to themselves, but rather serve the wearer by focusing attention on his or her face. The bolder patterns or brighter colors that an entrepreneur or an entertainer might favor with will tend to come across as flashy, distracting, and perhaps even suspicious when worn by counsel.

Thoroughness – Tailored clothing presents many opportunities to demonstrate one’s attention to detail. Nuances like a precise trouser break or a properly knotted necktie are subliminally impressive to even the least sartorially inclined among us; their mastery won’t come across as fussy or fogey, but rather refined and authoritative. A discrete pocket square is a polished touch, (especially in the increasingly common absence of a necktie) but it’s generally well-advised to steer clear of more fastidious or anachronistic details like collar pins and braces — at least until you’re more established in your career.

Gravitas – A lawyer’s attire should respect the seriousness of the law he or she practices, and the magnitude of the stakes for clients. A well-cut solid dark suit, a crisp white or light blue shirt, and an elegant tie is an admittedly formal but entirely appropriately ensemble to wear to what is essentially one of the highest ceremonies in secular society: a court of law. Not quite the white wig required in British courts, but the same idea: symbols of continuity that transcend whims of fashion.

There is certainly a long tradition of lawyers who enjoy deploying the full arsenal of menswear finery — e.g. double-breasted suits, waistcoats, watch chains — to make a statement and perhaps even a personal trademark, but such dandification is generally a prerogative of seniority at most firms, where high-style dressing is underwritten by proven professional records. If you’re not quite there yet, remember that more conservative dressing need not be dull. A restrained sartorial aesthetic can be highly elegant, emphasizing quality of material and perfection of cut over ostentatious flair or detail. Indeed, this was the mantra of the original dandy himself — the early 19th century English arbiter elegantiarum Beau Brummell, credited with creating the modern suit as a masculine rejection of the baroque gorgeousness that had characterized fashionable male dress for centuries. “If John Bull turns around to look at you,” he observed, “you are not well-dressed.”

A more relatable inspiration for lawyers — sartorial and otherwise — is of course To Kill a Mockingbird’s Atticus Finch, memorably portrayed by Gregory Peck in the 1962 film adaptation. Finch’s rumpled cotton three-piece suits might be better suited to a courtroom in Depression-era Alabama than one in Manhattan today, but their timeless appeal lies in their enobling effect — the way in which simple, unpretentious, yet dignified clothing can serve a man serving the law. Finch’s personal style is hardly mentioned in the story, but no reader or viewer will ever forget it. It’s an object lesson in how good clothes work.

Author:  Andrew Yamato, Alan Flusser Custom

NOTE: Alan Flusser Custom will be exhibiting at the New York State Bar Association’s (NYSBA( Annual Meeting at the New York Hilton Midtown from January 15th through the 17th (2019).

Reposted with Permission from Alan Flusser Custom | https://alanflusser.com 


Alan Flusser – Part 3: Listen Up, Counsel: This One is for You

Photographed by Rose Callahan

As I have shared in two prior posts, I had the privilege of sitting down with the menswear authority, Alan Flusser, in his comfortable office inside his custom tailor shop in Manhattan, to hear his point of view on the status of men’s style. This being a legal blog, the conversation inevitably came around to what a lawyer should wear, and here again, Mr. Flusser was both precise and definite:

“I went to a closing on an apartment, and counsel for the other party showed up in a polo shirt and khakis. I’d never met him before, and I would hardly recommend that you come in looking like that, trying to show you have the know-how and authority to oversee a transaction well north of a million dollars. But that is the lay of the land today.”

“Is that advice for everyone or are you pointing to the legal profession when you say that?” I asked.

“Everybody could benefit from learning some of the fundamentals that go into putting together the basic elements of style in a way that makes the right impression. That is particularly true for a lawyer, who has to explain important things to people in a convincing manner. The kind of clothes he wears and—just as important—the way he wears those clothes can go a long way in terms of helping him present his case to his opponents, to a judge, and, indeed, to his clients. There’s a certain confidence that can be projected by a person who knows how to wear clothes correctly.”

“Are you arguing for tradition?” I asked. “When I was a boy, we were told that, by the time you and I would be sitting here, everyone would be dressed in something like the outfits on the original Star Trek series.

Mr. Flusser smiled. “I worked for Pierre Cardin in the 70s.” That was a name from my sartorial past. I recalled that the three first suits I bought as an adult, while then in college, bore the Pierre Cardin label. They were made in Latin America and had lapels wide enough to cause me to take flight if the winds were right—but such were the times. “Pierre Cardin was one of these very avant-garde designers,” continued Mr. Flusser, “who said that, by the turn of this century, everyone would be wearing jumpsuits to go to the moon. Since then, people have been attempting to uproot, upend or debunk the necessity for wearing a suit, dress shirt and tie, trying to replace that with something else. Look around. As far I see, that that’s been a complete failure.”

Which is to say, it is a lot harder for you to look inconsequential in a suit, dress shirt and necktie even if not entirely spot on, than in a polo shirt and khakis, even if done not half-bad. Just the same, as Mr. Flusser next observed, once you commit to making the effort, you should commit as well to making sure it succeeds: “Whatever you do, the question is, why go to all the trouble to get gussied up in this if it takes no more effort to put on clothing that fits and is correctly proportioned for you?”

I asked if there is a good role model who shows lawyers how to do it just right. That turned out to be another easy question:

“I have been writing about it for decades, but very few men know how to tie a tie and put it up into a collar and have it come out looking as good as it could—that is, the difference between looking powerful or not—or possibly making you look weaker. Where can you learn that? You either have to see it on another man or you have someone in the public eye espousing this kind of dress. If I had a moment to ask any question of former President Barack Obama, I would probably first ask him, ‘How did you learn to wear shirts that have the exact and perfect collar for someone of your size and height and face shape, and how did you learn to tie the necktie to go up into that and to make that presentation as perfect as it has ever been on any president?’ Clearly, somebody taught him that at some point because you don’t usually pick that up as a community organizer.”

In short, to my colleagues at the bar: your legal knowledge, skills and personality may take you far, but pick up Mr. Flusser’s books, see him personally, or hunt down someone else who knows how and is ready to show you the way. That may not carry the day for you in contract negotiations or in a summation before the jury—but it will almost certainly offer you just a bit more of an advantage than you otherwise have had. And no one who seriously wishes to make it in this difficult profession should lightly pass up such an opportunity.

Credit:  Alan Behr

We would like to thank Alan Flusser for his gracious participation in our three-part series on fashion, style and the industry’s influence on today’s design aesthetic. https://alanflusser.com/

See post…”Alan Flusser – Part 1: A Question of Balance

See post…”Alan Flusser – Part 2: The American Male and His Wardrobe


Bikinis and Copyright

The beaches of summer remind us that it is no disrespect for any of us to confess that most people do not look their best in swimwear and that those who do probably would look great in just about anything. Simply, the more the body is revealed, the more the aesthetic duties that are commonly undertaken by fashion are left to uncovered skin. Call it a triumph of artifice over nature, but for most of us, more clothing, rather than less clothing, even on the beach, is often a good thing. Fashion may make the great-looking come across even greater, but it is often a turning point, in the direction of great, for the rest of us in how we present ourselves to the world.

My colleagues and I have been writing and speaking quite a bit this year about the Star Athletica case—the Supreme Court decision that turned cheerleader uniforms into the biggest issue in fashion law in years. (Law is made by the cases actually brought, and this one just happened to be about uniforms worn by cheerleaders, but by its potential impact, you might well imagine the clothes were couture evening wear.) If nothing else, the case reaffirmed (that is, it did not change) the fact that, in the USA, anything functional in fashion cannot be protected by copyright registration (or with a design patent). When applied to swimwear, which typically represents about the minimum that the law allows any of us to wear in public, whatever precious square inches of cloth are involved almost always serve some kind of function. Finding something protectable in what is there can involve examining decorative clasps, closures and add-ons—but minimalism is the essence of swimsuit design, and such design elaborations are quite rare. That leaves for examination whatever small amount of fabric is actually in use.

As we have noted in these pages before, fabric patterns are protectable, and here, Star Athletica may be helpful in providing guidance. The Supreme Court has now told us that we need only look at a fabric pattern laid flat (in reality or imagination) to view it as we would any two-dimensional artwork to determine if it is original enough to be protectable by copyright. The shape into which it is cut—as swim trunks or a bikini, for example—is irrelevant. That is good news for fabric designers. It confirms that it does not matter how little of the design is there to see: if it is original and visible, it is theoretically protectable.

During the 4th of July weekend, I heard a young man compliment another, his tennis partner, on baggy swim trunks and a matching baseball hat—both made of blue cloth filled with an exaggerated white pattern that looked like multiple slash marks. At a pool the day before, a woman was similarly complimented for a black bikini that had small but intricate white designs only on the cloth that just about covered her right hip and left breast. If any of that is original, it may well be protectable.

Does that mean it is getting harder for a fashion company to know if a fabric being offered to it for use in garments is potentially infringing on the rights of others? Does it mean you have to worry about some design that would not fill the space that could be occupied by a chocolate-chip cookie? Unfortunately, that is likely the case. Where that next takes us is for the courts to decide—but not for now. Summer is here and many of those people you will see on the beach are copyright lawyers and judges, putting much of this behind them until fall.

Credit: Alan Behr


The Curious Case of the Cheerleader Uniforms

Cheerleader-with single focus

One of the hot topics du jour in the fashion press is the copyright battle in the Supreme Court involving cheerleader uniforms. It poses the question of when a two-dimensional design that is part of a useful article is copyrightable—in this case, designs consisting of color blocks, chevrons, and lines in uniforms for cheerleaders. The Copyright Act provides that a “useful article” is not copyrightable, but it allows for copyright in the “pictorial, graphic and sculptural” features of useful objects as long as those features are “separable” from and can exist independently of the object itself.

Under the statutory definition, you can secure a copyright for a fabric or lace design, but you cannot secure a copyright in a dress made with the fabric or lace. An artist who draws a dress can secure a copyright in the drawing and can prevent someone from using it on greeting cards or wastebaskets, but the artist cannot use the copyright to prevent anyone from actually making the dress depicted in the drawing.

Although the concept of separability is easy to state in the abstract, at times it has been hard to apply in practice. Cheerleader uniforms present a particularly difficult problem. The designs here are not printed on the fabrics used in the uniforms. They are part of the garment’s construction. The placement of the design features—color piping around the neckline and arm holes, lines down the sides in color blocks, chevrons in the center, lines marking the boundaries between blocks of color—results from the contours of the garments. The placement also serves the functional purposes of hiding seams that are sewn on the outside (instead of the inside) of the garments to prevent chafing, strengthening parts of the garments so that they hold their shape, and creating optical illusions that lengthen the torso and slim the waist. The designs also help make the garments recognizable as uniforms and not street clothing.

The challenger, Star Athletica, focuses on those functional considerations and argues that the designs are inherent in the useful objects and do not exist independently. It argues that, if the designs have any function, they are not separable from the uniforms.

The United States and Varsity Brands, the copyright owner, argue that, because the graphic designs can be applied to products other than dresses, they are separable, can exist independently and are therefore copyrightable. The government further argues that the Copyright Office cannot be in the business of determining how any particular two-dimensional design functions in any given context when called upon to determine whether it can indeed exist independently. Under that argument, any two-dimensional design could potentially be deemed independent and separable from the three-dimensional objects to which it is applied.

In a great irony, the case was argued before the Supreme Court on Halloween. Halloween costumes frequently have been the subject of litigation under the particular provisions of the Copyright Act at issue in the case. (In case you are wondering, under current precedent, costumes are generally not copyrightable, but masks generally are.)

Reading the oral argument before the Supreme Court and the briefs, I was struck by the fact that the case is not unlike the famous figure ground optical illusion in which you can simultaneously see either a goblet or the profile of two faces. Star Athletica sees the goblet. If the lines define the goblet, it is the design of a useful object, and Varsity Brands cannot prevent Star from making the goblet. But Varsity Brands and the government see the profile pictures, which are separable, and it would be irrelevant whether they also define a goblet from the perspective of another viewer.

Stanford Law School Professor Mark Lemley, as the lead author of a brief submitted by a number of law professors in support of Star Athletica, attempts to separate the figure from the ground. He argues that copyright could protect the designs, but not the coordination and arrangement (i.e. placement) of the elements of the designs that result from the shape or construction of the garments. In effect, this proposed test would exclude from the protection of copyright those elements of the designs dictated by the needs of making the useful article truly useful.

There are other relevant questions that none of the lower courts in the case considered and which none of the briefs submitted to the Supreme Court addressed: What are the two-dimensional designs that are protected and are those designs copyrightable under more general principles of copyright law? Are they original or are they in the public domain? Is there a merger of the general idea with its expression so that there is nothing that is copyrightable? Are the decorative aspects what copyright law refers to as “scènes à faire” (stock representations implicit in the subject matter, in this case cheerleader uniforms)? Both the trial court and the appellate court expressly said they were not addressing whether the two-dimensional designs were copyrightable and were reserving that question. And the Supreme Court, in accepting the case, refused to consider this question, because it was not ruled on below.

Justice Elena Kagan inquired at argument: What is your design; can someone just add another stripe to avoid infringement? Varsity Brands’ counsel did not address the first part of the question and, in response to the second part, said that merely adding something to a copyrightable design “usually” does not avoid infringement. The response did little to address the Court’s expressed concern for the anti-competitive effect on the market for cheerleader uniforms and markets for other products for which the design has a functional purpose, such as camouflage fabric for military use. Indeed, it is worth noting that Star Athletica made a point of informing the Court that Varsity Brands controls 80% of the U.S. market for cheerleader uniforms.

That may help explain why all of the Supreme Court Justices who asked questions were troubled by the idea of handing Varsity Brands a monopoly over cheerleader uniform designs through the use of its copyright registrations. How they might avoid that result is an open question. Star Athletica offered one alternative that might have a major impact on the fashion industry, particularly on the accessories market, where protection of three-dimensional designs is an on-going concern: Any aspect of the design that is functional in part is not conceptually separable. (Say goodbye to the Kieselstein-Cord belt buckle decision, a ground-breaking case won by this firm and which a number of briefs argued was wrongly decided.) Another alternative, endorsed by the American Intellectual Property Association, is to vacate the decision and instruct the court below to determine first the validity of the copyright in the designs under more general copyright law concepts that would factor into the analysis the use of routine design features in uniforms. Either way, one suspects that Star Athletica’s use of its copyrights to prevent competition in the cheerleader uniform market may be short lived.

Credit: Helene M. Freeman

Here’s a previous post that may be of interest…

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Copyright Registration Still Matters

Procrastination contestIt 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