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
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
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