Tag: copyright litigation

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U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners
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Bring It On!
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Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design
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Southern District of New York Court Parses ‘Fair Use’ in Fox News’ Copyright Infringement Dispute with Media Monitoring Service

U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners

March 4, 2019, marked the first time in over 100 years that the Supreme Court of the United States issued two copyright decisions in the same day[1] – both unanimous and both strict interpretations of statutory language.  In the first of these two decisions, the Supreme Court unanimously held in Fourth Estate Public Benefit Corporation v. Wall-Street.com that copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action.[2]  The Court, in an opinion authored by Justice Ruth Bader Ginsburg, resolved a long-standing circuit split on whether the “application approach” (merely filing a copyright application) or the “registration approach” (obtaining a copyright registration) is sufficient to file a copyright infringement suit under § 411(a) of the Copyright Act of 1976.  In the second decision, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize awarding litigation expenses beyond those specified in the general costs statute.

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Bring It On!

On 31 October 2016, the U.S. Supreme Court heard arguments in the ongoing dispute between Star Athletica LLC and Varsity Brands Inc, two major designers and manufacturers of cheerleading uniforms. In what could be considered a bizarre mash up of early 2000s films “Bring it On!” and “Legally Blonde”, the two companies are involved in a stoush as to whether or not the two-dimensional designs of coloured stripes and zig-zags that are applied to cheerleading uniforms can be protected under US copyright law. My U.S. colleagues John Cotter and Shamus Hyland previously discussed the Sixth Circuit Court of Appeal’s decision in this matter here.

It will come as no surprise to readers that U.S. and Australian laws differ in many respects and this is particularly the case when it comes to copyright and designs laws.

In Australia, fashion designers may have recourse to the Designs Act 2003 (Cth) and/or the Copyright Act 1968 (Cth) depending on whether or not they are looking to protect two-dimensional (prints, images etc.) or three-dimensional (cut, shape, fit etc.) designs and how they intend to exploit the designs.

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Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design

By: John Cotter and Shamus Hyland

Under the U.S. Copyright Act, a “useful article” such as a chair, a dress, or a uniform may obtain copyright protection, but only for elements that “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. For apparel, this generally means that the overall design of a garment is not protected by copyright, but certain ornamental features (such as a pattern woven into the fabric) may be protectable. In practice, the Copyright Act protects fabric designs, not dress designs. Recently, the U.S. Supreme Court decided to tackle this uncertain area, granting certiorari in Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Sixth Circuit Court of Appeals ruled 2 – 1 that the design features of Varsity Brands’ cheerleader uniform (e.g. “stripes, chevrons, color blocks, and zigzags”) were separable from the utilitarian aspects of the uniform, and thus eligible for copyright protection. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

The majority opinion identified nine specific approaches plus hybrids that various courts and the Copyright Office have formulated over the years to analyze how copyrightable design features can be separated from utilitarian elements, and the extent to which design features can achieve copyright protection. Id. at 484-87. The majority then employed its own hybrid five-part test grounded in the text of the Copyright Act, finding that the designs at issue played no role in the overall function of the article as a cheerleading uniform. The majority broadly defined the function of a cheerleading uniform: “to cover the body, permit free movement, and wick moisture.” Id. at 492. The dissent, meanwhile, took a more “particularized” view of the function of the uniform. Id. at 496. It pointed out that the design elements at issue do serve a utilitarian function because they identify the wearer as a cheerleader and should therefore be afforded no protection under the Copyright Act. Id.

The dissent in Varsity Brands characterized the law of copyright protection for design elements of useful articles as “a mess.” Id. at 496-97. The consequences of this mess are significant for businesses with stakes in garment design. As the dissent observed, clarity is needed to alleviate the courts’ confusion and protect business interests. Id. The Supreme Court now has an opportunity to spell out a more consistent approach to the “metaphysical quandary” of design-functionality in garment copyright protection. Ideally, the Court will clarify the boundaries of copyright protection, and specify the appropriate factors for courts to weigh when separating expressive elements from utilitarian functions. Star Athletica’s opening brief is due around late June, and we will continue to monitor this case.

Southern District of New York Court Parses ‘Fair Use’ in Fox News’ Copyright Infringement Dispute with Media Monitoring Service

On 25 August 2015, the U.S. District Court for the Southern District of New York (SDNY) ruled that certain functions of the TVEyes media-monitoring service infringe Fox News’ copyrights in its programming content.

TVEyes is a for-profit, media-monitoring service with over 22,000 subscribers that indexes nearly all news-related television and radio content in a searchable database. TVEyes allows users to track the usage of words or phrases of interest and to view the transcripts and video clips of the portions of the television broadcast that use the search term. Subscribers may set ‘watch lists’ for terms to receive real time alerts when certain terms are used and search past broadcasts. TVEyes also provides subscribers with analytic data such as a segment’s Nielsen viewership rating, the frequency with which a term has been mentioned over a specified time period and the geographic markets and channels where a term is used. Additionally, TVEyes users may archive, indefinitely, video clips that appear in response to search queries on TVEyes’ server. Users can also email the video clip links to others, allowing the recipients of the link to view the video clip on TVEyes’ server, as well as download copies of identified digital video clips for offline use and permanent storage.

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