Tag:copyright litigation

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US Supreme Court Rules No Three-Year Limit for Copyright Damages
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Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe
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Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?
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Copyright Infringement? The Court is “Not Gonna Take It”
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U.S. Spending Bill Includes Sweeping New Copyright and Trademark Measures
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Protection of store layout under copyright law: the KIKO case
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Beware the pitfalls of informal licensing agreements
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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

US Supreme Court Rules No Three-Year Limit for Copyright Damages

On 9 May 2024, the US Supreme Court (the Court) held that there is no three-year limit on monetary damages for timely filed copyright infringement claims. The 6–3 decision resolves a circuit split, opens the doors to larger potential damages awards for plaintiffs, is likely to lead to increased litigation over older infringements, and leaves open the question of whether the “discovery rule” applies to copyright infringement claims. Warner Chappell Music, Inc. v. Nealy, No. 22-1078, 601 U.S. – (2024).

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Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe

In January 2024, UNIQLO CO., LTD. (UNIQLO) announced that it had filed a lawsuit before the Tokyo District Court against Roadget Business Pte. Ltd., Fashion Choice Pte. Ltd., and SHEIN Japan Co., Ltd. (collectively, SHEIN Parties). UNIQLO alleges that the SHEIN Parties have infringed Japan’s Unfair Competition Prevention Act by selling dupes of UNIQLO’s popular round mini shoulder bag, which went viral on TikTok last year due to its minimalistic, water-repellent exterior and ability to hold a surprisingly large volume of products for its size. UNIQLO is demanding that the SHEIN parties cease selling the dupe bags and pay damages incurred as a result of sale of the SHEIN Parties’ dupe products.

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Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?

Many companies and activists toe the line of trade mark and copyright infringement in the name of parody, satire and criticism. In Australia, the fair dealing copyright exception for the purpose of parody or satire had rarely been judicially considered. There have now been two recent cases considering the defence.

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Copyright Infringement? The Court is “Not Gonna Take It”

A clear cut case of copyright infringement involving Twisted Sister’s hit song “We’re Not Gonna Take It” (WNGTI) has demonstrated the Court’s willingness to award significant financial penalties where intellectual property rights have been “flagrantly” infringed.

In Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434, Justice Katzmann of the Federal Court ordered Australian businessman and United Australia Party (UAP) founder Clive Palmer to pay AU$1.5 million in damages after finding that he had infringed copyright in WNGTI. Katzmann J notably awarded AU$1 million in additional damages, two-thirds of the total award, under section 115(4) of the Copyright Act 1968 (Cth) (Act).

The action was brought against Mr Palmer by joint applicants Universal Music Publishing Pty Ltd and Songs of Universal (collectively, Universal), which are the exclusive Australian licensee and copyright assignee respectively.

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U.S. Spending Bill Includes Sweeping New Copyright and Trademark Measures

On Monday, 21 December, U.S. Congressional leaders passed a spending bill that included government funding and folded in several controversial intellectual property provisions that will expand the rights of intellectual property owners. These provisions include the Copyright Alternative in Small-Claims Enforce (CASE) Act, the Trademark Modernization Act (TMA), and a law to make certain illegal streaming a felony. The bill was signed into law by President Trump on 27 December 2020.

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Protection of store layout under copyright law: the KIKO case

The Italian Supreme Court decision on the KIKO case (Cass. 780/2020) is the most recent judgement made in the wake of the Cofemel decision (case C-683/17) and follows the UK IPEC decision in Response Clothing (click here for our previous blog post).

In this latest development, KIKO S.p.a, a well-known make-up store was able to secure copyright protection for its signature store layout, made of its open space entrance with digital screens, the white/black/pink/purple color combination, the disco lighting effects, the size, proportions, materials and position of furniture.

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Beware the pitfalls of informal licensing agreements

The Federal Court of Australia recently handed down its decision in the copyright case of Hardingham v RP Data. This decision serves as a warning about the risks of informal licensing arrangements. The case centres around copyright infringement regarding the use of photographs and floorplans without authority.

The applicants in the case were Real Estate Marketing (REMA) and its sole director, Mr Hardingham. REMA had been operating its business since 2009 and entered into informal agreements with real estate agencies to create and provide photos and floorplans of properties for marketing campaigns. It was understood by REMA that, as part of marketing campaigns, the agents would upload the commissioned photos to platforms such as realestate.com.au. However, the scope of the permitted uses by the agents was not clearly agreed or recorded in writing.

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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.

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