Designer Parody Pet Products: Navigating Trademark Law

Navigating Trademark Law | Jack Daniel's

A bottle of Jack Daniel’s whiskey, left, displayed next to a Bad Spaniels dog toy.Jessica Gresko/Associated Press

In the world of parody products, creativity could be challenged by trademark law. As pet owners seek to indulge their pets with toys and accessories that mimic high-end brands, companies producing these items must navigate the complex realm of trademark regulations. This post will discuss an overview of trademark law and its significance in protecting brand identity and consumer trust. Through examining notable legal battles such as the 2007 case of Louis Vuitton v. Haute Diggity Dog and Jack Daniel’s v. VIP Products, this article will also highlight the delicate balance that courts must maintain between upholding trademark rights and allowing creative expression through parody.

I. BRIEF OVERVIEW OF TRADEMARKS

Trademarks serve as vital tools in distinguishing goods or services, identifying their source, and ensuring a consistent symbol of goodwill.¹ Unlike patents and copyrights, trademarks have no existence and value separate from the goodwill² of the product or service it symbolizes. This goodwill fosters customer loyalty and benefits both the business and the consumer. Trademarks help consumers identify the source of goods or services, allowing them to make informed purchasing decisions based on their experiences with a brand.³ When consumers recognize a trademark, they can expect the same level of quality and reliability they have experienced before. For businesses, trademarks are essential in building and maintaining value, providing a justified expectation that customers will continue to buy their trademarked goods and services.⁴

a. Trademark Protection

Trademark protection in the United States is primarily governed by federal law, specifically the Lanham Act, providing the strongest safeguard for trademarks.⁵ Federal trademark protection requires a rigorous application and approval process through the U.S. Patent and Trademark Office (USPTO), requiring proof that: (1) the mark is distinct, (2) the trademark is or will be used in commerce, and (3) the trademark does not conflict with existing registered marks.⁶

A trademark must be distinctive to differentiate a company’s goods from others in the market. Trademarks are categorized based on their level of distinctiveness and ability to identify the source of goods or services. The strength of a trademark varies, influencing its level of protection. Generic marks, which are common names for products or services, are not protectable or registrable.⁷ Merely descriptive marks, which describe the quality of the goods or services, are generally not protectable unless they acquire a secondary meaning that associates them with a particular source.⁸ Suggestive marks, which hint at the nature or quality of the goods, are registrable without needing to show secondary meaning.⁹ Arbitrary marks, which use ordinary words in a non-descriptive manner, are also registrable without secondary meaning.¹⁰ Fanciful marks, composed of completely made-up words, offer the greatest protection due to their inherent distinctiveness.¹¹ Inherently distinctive trademarks include terms that are meaningless, coined, fanciful, or novel designs, which naturally stand out and are immediately recognizable.¹²

Selecting a strong trademark (arbitrary or fanciful) can help steer clear of costly and lengthy legal processes.¹³ However, this means the trademark itself does not convey information about the product or service, as it lacks any immediate association.¹⁴ In this case, a trademark’s distinctiveness can also be acquired through effective marketing and promotion, whereby consumers come to associate it with a particular owner over time.¹⁵ This acquired

distinctiveness helps solidify the trademark’s role in identifying and differentiating a company’s products or services in the marketplace.

II. TRADEMARK LAWSUITS

a. Trademark Infringement

In trademark infringement cases, the plaintiff must prove three key elements to succeed. First, the plaintiff must demonstrate that they have a valid and legally protectable mark. Second, they must show ownership of the mark. Third, they need to establish that the defendant’s use of the mark in identifying goods or services is likely to cause confusion among consumers.¹⁶ This confusion could lead consumers to mistakenly believe that the trademark owner sponsors or endorses the defendant’s product. While the First Amendment provides a defense in trademark infringement cases, allowing creators to reference another work as long as the reference is relevant and not misleading, courts use a balancing test.¹⁷ This test ensures that trademark protection is applied to artistic works only when the need for such protection outweighs the need for First Amendment protections. In essence, the balance between trademark rights and free expression is crucial in determining the outcome of trademark infringement disputes.¹⁸

b. Trademark Dilution

Trademark dilution involves protecting a famous mark from uses that would weaken its distinctiveness or harm its reputation. To prove trademark dilution, the plaintiff must

demonstrate that their mark is widely recognized and famous.¹⁹ There are two main types of dilution: blurring and tarnishment.²⁰ Blurring occurs when the distinctiveness of the famous mark is impaired, causing it to lose its ability to uniquely identify the plaintiff’s products.²¹ Tarnishing happens when the similarity between the infringing mark and the famous mark causes consumers to associate the famous mark with an inferior or offensive product, damaging the mark’s reputation.²² Defenses against dilution claims include i) fair use, which allows for the legitimate use of a mark under certain conditions; ii) parody, which protects satirical or humorous uses; and, iii) unclean hands, which argues that the plaintiff has acted unethically or in bad faith.²³ These defenses are critical in balancing the protection of trademark rights with the need for free expression and fair competition.

III. DESIGNER DOG TOY CASES

Louis Vuitton v. Haute Diggity Dog: A Case of Trademark Parody

The legal battle between Louis Vuitton, the luxury fashion brand, and Haute Diggity Dog, a company specializing in parody pet products, stands as a significant case in trademark law. This case examines the boundaries between trademark protection and parody, offering insights into how courts balance these competing interests.

In this case, the defendant Haute Diggity Dog created a line of dog toys called “Chewy Vuiton,” which mimicked the design of plaintiff Louis Vuitton’s iconic handbags but with a

humorous twist. Louis Vuitton filed a lawsuit, claiming trademark infringement and dilution, arguing that the dog toys could confuse consumers and tarnish the luxury brand’s reputation.²⁴

The court ruled in favor of Haute Diggity Dog, finding that the “Chewy Vuiton” toys were an obvious parody, unlikely to confuse consumers, and constituted fair use of Louis Vuitton’s trademarks.²⁵ The court concluded that the parody provided commentary on luxury brands and consumer culture without diluting the brand’s distinctiveness or tarnishing its image. Consumers would not mistake the dog toys for actual Louis Vuitton products.²⁶

The case highlighted several key takeaways in trademark law. First, the strength of the parody defense was underscored, particularly when the parody clearly differentiates itself from the original brand. Second, the courts emphasized that obvious parodies are less likely to cause consumer confusion, which is a crucial factor in trademark infringement cases.²⁷ Finally, the ruling clarified that parody can be a legitimate defense against claims of trademark dilution, especially when the parody does not diminish the brand’s distinctiveness or reputation.²⁸

The United States Supreme Court Kenny Holston/The New York Times

However, the 2023 U.S. Supreme Court case Jack Daniel’s vs. VIP Products decided differently, with a ruling that redefines the boundaries of trademark infringement and parody. In this case, respondent VIP Products produced a dog toy resembling a Jack Daniel’s whiskey bottle, humorously altered with phrases like “Bad Spaniels” and “The Old No. 2 On Your Tennessee Carpet.” Petitioner Jack Daniel’s filed a lawsuit, claiming that the toy infringed on its trademarks and diluted its brand.²⁹ The key issues revolved around whether VIP Products’ parody toy confused consumers and damaged Jack Daniel’s brand reputation.

The Supreme Court ruled in favor of petitioner Jack Daniel’s, emphasizing that the use of a trademark for parody purposes in a commercial product is subject to a likelihood-of-confusion

analysis.³⁰ The ruling clarified that parody does not automatically exempt a product from trademark infringement claims. The case was sent back to the lower courts to apply the correct legal standards.

The Supreme Court’s decision underscores that trademark law generally prevails over the First Amendment when a trademark is used to identify the source of goods.³¹ The ruling highlights the importance of considering consumer confusion in trademark disputes, even when parody is involved.

This case serves as a critical reminder of the complexities in balancing trademark protection with free expression. While parody remains a valid form of expression, it does not grant blanket immunity from trademark infringement claims, particularly when it involves the commercial use of trademarks. This case sets a significant precedent for how courts will handle similar disputes in the future, ensuring that the integrity of trademarks is maintained while still allowing room for creative expression.

CONCLUSION

Trademark cases often hinge on balancing various factors. In Louis Vuitton, the court decided there was no infringement because it was clear that the toys were a parody, and consumers were unlikely to be confused. The court’s decision to favor the parody defense underscored the importance of context and clear differentiation in parody products. The ruling established that obvious parodies, which do not confuse consumers or tarnish the original brand’s reputation, can fall under fair use, thereby protecting creative and humorous expressions that reference popular trademarks. Conversely, in Jack Daniel’s, the court ruled against the parody,

emphasizing the potential harm to the trademark and brand due to possible consumer confusion. This decision illustrated the limits of the parody defense, especially when commercial interests are involved. The ruling emphasized that the potential for consumer confusion remains a critical factor in trademark infringement cases, even when the infringing product is a parody.

Together, these landmark decisions illuminate the nuanced criteria that courts consider in trademark disputes involving parody. The interplay between trademark protection and parody remains a complex and evolving area of law, as evidenced by these cases. Overall, there is a delicate balance courts must strike between safeguarding trademark rights and preserving the freedoms of creative expression and free speech. They affirm that while trademarks are shielded against infringement and dilution, there is also a vital space for creative parody, provided it does not mislead consumers or harm the trademark’s distinctiveness and reputation. These rulings serve as guiding principles for future cases, ensuring that the integrity of trademarks is maintained without stifling artistic and humorous expressions. As businesses and creators continue to navigate these legal waters, understanding the fine line between trademark protection and parody will remain essential in fostering both brand identities and creative landscapes.

¹ Tyler T. Ochoa et al., Understanding Intellectual Property Law 467, (Elisabeth Ebben ed., Carolina Academic Press, 4th ed. 2020).

² Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412-13 (1906).

³ Ochoa et al., supra note 1.

⁴ Id.

⁵ 15 U.S.C. §§ 1051 et seq.

⁶ USPTO, What is a Trademark?, https://www.uspto.gov/trademarks/basics/what-trademark (last visited June 19, 2024).

⁷ Ochoa et al., supra note 1, at 479.

⁸ Id. at 479.

⁹ Id. at 479.

¹⁰ Id. at 477.

¹¹ Id. at 477.

¹² Id. at 476.

¹³ International Trademark Association, Trademark Strength, International Trademark Association, Trademark Strength(2023).

¹⁴ Id.

¹⁵ Ochoa et al., supra note 1, at 476.

¹⁶ A&H Sportswear Co. v. Victoria’s Secret Stores, Inc., 166 F.3d 197, 206–07 (3d Cir. 1999) (quoting Richard L. Kirkpatrick, Likelihood of Confusion in Trademark Law § 1.8 (PLI 1997); Dieter v. B&H Indus., Inc., 880 F.2d 322, 326 (11th Cir. 1989)).

¹⁷ Id.

¹⁸ Ochoa et al., supra note 1, at 630.

¹⁹ Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806 (9th Cir. 2002).

²⁰ Id. at 521.

²¹ Id. at 583.

²² Id. at 584.

²³ Precision Instr. Mfg. Co. v. Automotive Maint. Mach. Co., 324 U.S. 806, 815 (1945).

²⁴ Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F. 3d 252, 264 (4th Cir. 2007).

²⁵ Id. at 260.

²⁶ Id. at 270.

²⁷ Id. at 269.

²⁸ Id. at 266.

²⁹ VIP Prod. LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1172 (9th Cir. 2020).

³⁰ Id. at 1174.

³¹ Id. at 1175.

PepsiCo: Serial Trademark Infringer or Coincidence?

On June 15, 2021, a food startup named Rise Brewing filed suit against PepsiCo in the U.S. District Court for the Northern District of Illinois. The startup has begun to make a name for itself by selling canned cold-brew coffee. Rise Brewing has alleged that the well-known company PepsiCo has infringed on their trademark with their recent launch of a Mountain Dew-branded energy drink called Rise.¹

History of Infringement

According to Forbes, the notorious food, snack, and soda company, PepsiCo, is valued at an astounding $18.2 billion.² PepsiCo has had its fair share of trademark infringement cases in the past, where they have been sued by brands such as VitaminWater, Polar seltzer, and Simply Orange Juice.

A more recent lawsuit was filed in the United States District Court for the Southern District of Texas, where a temporary nationwide restraining order had halted PepsiCo’s release of a Gatorade product called Gatorlyte. The order had been issued due to a sports beverage named Electrolit made by a Mexican company.

According to Laboratorios Pisa S.A. de C.V. v. PepsiCo, Inc., PepsiCo allegedly copied the Mexican companies’ product packaging. Before the issuance of the restraining order, PepsiCo shipped roughly $1.7 million worth of Gatorlyte after spending $1.3 million on media and $18 million of product development. ³ The Court considered three facts in determining whether recall of the product, which was already rolled out nationwide, was justified. These three factors were “(1) the willful or intentional infringement by the defendant; (2) whether the risk of confusion to the public and injury to the trademark owner is greater than the burden of the recall to the defendant; and (3) substantial risk of danger to the public due to the defendant’s infringing activity.”⁴

The Court reasoned that “recall is an extreme remedy” and “therefore they did not find sufficient indicia of willful infringement, confusion to the public that outweighs the onerousness of a recall, or a sufficient risk of danger to the public to justify a full recall of GATORLYTE” at the time of the case.⁵

The Court then turned to the balancing of the parties’ hardships. The Court stated that although PepsiCo’s investments were significant, the Court did not find that a temporary restraining order would affect the investments to such a degree that would be problematic. Additionally, PepsiCo decided to release their product line despite the initial issuance of a Temporary Restraining Order and the then-pending hearing on another Temporary Restraining Order. The Court turned to the Mexican companies’ argument that PepsiCo was aware of the rights in the Electrolit trade dress, so PepsiCo, therefore, accepted all risks of infringement. Trade dress is the look or feel of the product, in this case, Electrolit’s trade dress was their companies protected product packaging.

The two companies reached a confidential settlement earlier this spring, ending the case permanently and, therefore, lifting the temporary restraining order.

U.S. District Court for the Northern District of Illinois

On June 15, 2021, Rise Brewing Company (hereinafter “Rise Brewing”) filed a trademark infringement lawsuit against PepsiCo, alleging that PepsiCo has infringed on their trademark with their recent launch of a Mountain Dew-branded energy drink called Rise.⁶ The issue in the complaint arose out of the energy drinks use of the word “Rise,” written horizontally across the top of the can, in a fashion almost identical to Rise Brewing.

Rise Brewing created a canned caffeine drink that lacks the chemicals, dairy, fat, and sugar commonly associated with traditional energy and coffee drinks. The brand features the words RISE horizontally across the can, with Brewing Co. located just underneath. Shortly before the complaint was filed, PepsiCo released its own RISE-branded caffeine drink. Rise Brewing alleged the PepsiCo brand marketed itself as a morning caffeinated beverage to replace ready-to-drink coffee drinks such as RISE.

Rise Brewing alleges that PepsiCo’s actions are causing “reverse confusion” in violation of the Lanham Act. Traditionally, in a trademark infringement case, the defendant is the “junior user” of the mark, and the plaintiff is the “senior user.” This type of trademark infringement causes consumers to believe the defendant or its products are associated with the plaintiff or its products. Here, Rise Brewing alleges that it is the opposite. In a reverse confusion case, the consumer confusion for association goes the other way. Meaning, due to PepsiCo’s size, reputation, and power, consumers are confused into thinking that Rise Brewing’s RISE drinks are associated with PepsiCo.

The concept of reverse confusion was established in Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co.⁷ In that case, the Court stated that it was essential to recognize something other than traditional confusion to prevent “anyone with adequate size and resources [from] adopt[ing] any trademark and develop[ing] a new meaning for that trademark as identification of the second user’s products.”⁸ Rise Brewing alleges this case is a classic case of reverse confusion, demonstrating what the Big O court was trying to prevent.

Rise Brewing owns multiple valid registered trademarks with the United States Patent and Trademark Office (“USPTO”), as shown below.

Chart demonstrating Rise Brewing’s registered trademarks

Rise Brewing’s trademark registrations are valid and in full force and effect. It claims to use its RISE Marks through extensive advertising, marketing, and sale of goods bearing the marks. Because of this, Rise Brewing claims that the RISE Marks have become invaluable assets of the Rise Brewing Company, serving as a symbol of their high-quality product.

Rise Brewing would like the court to enter preliminary and permanent injunctions restraining PepsiCo and all of its affiliates from the continued use of its trademark, to recover its costs and reasonable attorneys’ fees, in an amount to be determined, and various amounts of awards for damages and profits.

Following the guidance of previous cases involving PepsiCo’s trademark infringement, Rise Brewing will likely be granted a preliminary injunction and/or grant damages sought. Rise Brewing has built its company from the ground up, creating and protecting their ideas through the use of registered trademarks. PepsiCo’s power in the market is far greater than Rise Brewing’s. The ability for large companies to prey on the hard work of smaller companies should be carefully monitored and regulated by the courts. This fact pattern is remarkably similar to previous cases filed by smaller companies, like Gatorlyte, against PepsiCo, where the smaller company has almost regularly been granted an injunction. The timing of this case makes it quite difficult for Rise Brewing because of the sheer amount of money that was put into the launch by PepsiCo. Because of this, it is more likely that the court will grant damages from this case, or in the chance PepsiCo would like to settle, Rise Brewing could possibility recover at least a small portion of the money PepsiCo will have made from their product launch. In the event of a settlement, like previous cases, the terms will likely remain confidential. If PepsiCo would like to continue to use the word Rise, Rise Brewing could also offer license to PepsiCo. This case is another example that reverse confusion is still present, despite the Big O court’s precedent.

Conclusion

As the case continues, it is essential to remember how valuable intellectual property (patents, trademarks, copyrights, trade secrets) is. Intellectual property, and its protections, foster growth and discovery, allowing for expanding new technology and resources worldwide.

¹ See RiseandShine Corp. v. PepsiCo Inc., Case No. 1:21-cv-03198.

² FORBES (Jun. 29, 2021), https://www.forbes.com/companies/pepsi/?sh=24c9d6a2bc31.

³ CASETEXT (Jun. 29, 2021), https://casetext.com/case/laboratorios-pisa-sa-de-cv-v-pepsico-inc/?PHONE_NUMBER_GROUP=C.

⁴ Id.

⁵ Id.

⁶ See RiseandShine Corp. v. PepsiCo Inc., Case No. 1:21-cv-03198.

⁷ Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977).

⁸ Id. at 1372.

High Court Fashion: Is there Copyright Protection for Trade Dress?

Copyright Protection of Non-Utilitarian Designs under the Copyright Act of 1976

Designers in the high fashion industry face many obstacles in receiving intellectual property protection for the utilitarian aspects of their clothing. Congress has provided copyright protection only for original works of art, but not for industrial designs that embody utilitarian functions. See 17 U.S.C. 101. Copyright protection does not extend to utilitarian aspects of objects because it would open up a flood of litigation over exclusive monopoly rights that would “burden competition, raise prices, and also harm consumers.” See Star Athletica, L.L.C. v. Varsity Brands, Inc., Brief for United States as Amicus Curiae 5-6. This proves problematic, however, when art and industrial design are intertwined, especially in the fashion industry which combines aesthetic elements with utilitarian garments. Under the separability doctrine, these pictorial, graphic, and sculptural works on the design of a useful article are copyrightable so long as they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” See 17 U.S.C. 101. But what happens when pictorial, graphic, sculptural works are inseparable from the utilitarian aspects of a garment? See Star Athletica, L.L.C. v. Varsity Brands, Inc. provided fashion designers with newfound intellectual property protection for aesthetic aspects that are incorporated into utilitarian aspects of their garments.

Obstacles Designers Faced in the High Fashion Industry Prior to the Star Athletica Decision

It is without a doubt that fashion, namely high fashion, has now become a status symbol that relies heavily on its branding and aesthetic more so than any utilitarian value its designs may serve. So much of the value that these high fashion designs derive is from its rarity and accessibility to only the elite and wealthy. Accordingly, it is not too surprising that fast fashion powerhouses have copied these high fashion runway looks along with several other brand elements available to the more general public.

Fast fashion brands, i.e. Zara or Mango, have often tried emulating high fashion ad campaigns by recreating the featured garments for an exponentially lower price. For example, Celine’s ad campaign for the 2011 fall and winter collection consisted of models in a natural setting surrounded by aloe plants. Zara later emulated this in black and white during the Spring and Summer 2014 season and again during the Fall and Winter 2015 season with a minimalist focus on a model in black and white and an aloe plant.

Fashion Industry | copyright protection — High fashion Black & White

A few other examples of this are pictured below where Zara emulated Balenciaga’s Fall and Winter 2016 collection with its red parka and comparable styling to Lotta Volkova or a cream colored trench coat with athletic zip up wear underneath for the Burberry Fall 2016 season, which was a distinctive look for that season featuring model Chris Wu.

copyright protection zara — Balenciaga on the left and Zara on the right

The similarities between the campaigns are not entirely identical, and even if they were, there were not rigidly defined protections under the Copyright Act. Zara and other fast fashion powerhouses such as Mango and Forever 21 have a legally cognizable right to provide their own independent expressions about their fashion ideas. Accordingly, they continue to use these similarities with the intention that consumers create a psychological connection between the high fashion brand and the fast fashion brand. Fast fashion powerhouses strengthen these connections by recreating the styling, colors, and design to produce the same high fashion look elite fashion designers were inspired by without infringing logos, patents, or trademark protected designs. This leaves high fashion designers left fairly powerless and unprotected by copyright laws. This all changed with the holding of Star Athletica, L.L.C. v. Varsity Brands, Inc., which provided high fashion designers with much more expansive intellectual property protection.

Burberry coat on left and Zara coat copyright — Burberry coat on left and Zara coat on right

Fashion Industry intellectual property protection | Law Firm of Dayrel Sewell — Gucci on left and Mango on right

Star Athletica, LLC v. Varsity Brands, Inc.: Progress Toward Copyright Protection of Fashion Design

In March 2017, the Supreme Court established a test for determining the copyright eligibility of design elements in fashion in Star Athletica, L.L.C. v. Varsity Brands, Inc. Respondent Varsity Brands, Inc. obtained more than 200 copyright registrations for two-dimensional designs that appear on their cheerleading uniforms. Respondent employed designers who sketched design concepts of uniforms consisting of “original combinations, positionings, and arrangements of elements which include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s, coloring, and shapes.” 137 S. Ct. 1002, 1007 (2017). Respondent Varsity Brands, Inc. sued Star Athletica, L.L.C., a competitor that also markets cheerleading uniforms, for copyright infringement for using 5 of Respondent’s copyrighted designs. Id. The District Court granted the petitioner summary judgment holding that designs could not be conceptually or physically separated from the uniforms, and therefore were not copyrightable designs. Id. The Sixth Circuit later reversed this and concluded that graphics “could be identified separately and were capable of existing independently” of the uniforms under 17 U.S.C. 101. Id. Specifically, they found that the graphic designs were separately identifiable because “the designs and a blank cheerleading uniform can appear ‘side by side’ and . . . are capable of existing independently.” Id. The Supreme Court found these conflicting perspectives on the separability analysis warranted certiorari to resolve this widespread disagreement over the proper separability test. Id.

Varsity Brands, Supreme Court — Appendix to Opinion of the Supreme Court

The Supreme Court relied solely on a statutory interpretation of 17 U.S.C. 101, rather than a free-ranging interpretation of the best copyright policy for the case at hand. See Mazer v. Stein, 347 U.S. 201 (1954). The Court looked at the “whole provisions of the law” to determine the meaning of 17 U.S.C. 101. See United States v. Heirs of Boisdore, 8 How. 113, 122 (1849). The statute provides that:

A pictorial, graphic, or sculptural feature incorporated into the design of a useful article is eligible for copyright protection if it (1) can be identified separately from, and 2) is capable of existing independently of, the utilitarian aspects of the article. 17 U.S.C. 101.

The Court focuses more on the second requirement, stating that the burden of proof for the first requirement is not that difficult to satisfy. See Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. at 1010. The Court states that the trier of fact must determine whether the separately identified feature can exist apart from the utilitarian aspects of the article. Id. This means that it has to be able to exist on its own if its imagined independent from the useful article. Id. If it cannot be imagined separately from the useful article, then it is not a pictorial graphic or sculptural feature of the article itself, but rather as part of one of the utilitarian aspects of the garment. Id.

The Copyright Act provides that the owner of the copyright can reproduce this work copies on any kind of article regardless of whether it embodies a utilitarian property. See 137 S. Ct. at 1005. The Court states that this is a mirror image of 17 U.S.C. 113(a) which protects an authorship fixed on some tangible medium that is non-utilitarian and then later applied to a utilitarian object. Id. On the other hand, 17 U.S.C. 101 protects the art that is first fixed in the medium of a useful article. Id. Accordingly, the Court holds that the copyright protection extends to pictorial, graphical, or sculptural objects regardless of whether they are affixed to utilitarian or non-utilitarian objects. Id.

The Court held that this interpretation of the statute is consistent with a past holding in the Copyright Act’s history. Id. In Mazer, the Court held that the respondents owned copyright protection for a statuette that served as the base of the lamp and it was irrelevant if can be identified as a freestanding sculpture or lamp base. Id. The Copyright Office used the Mazer holding in the modern separability test to copyright law in section 101 of the 1976 Act. Id.

Using statutory interpretation and case law, this Court held that the surface decorations on the cheerleading uniforms can be considered separate under the separability test mandated in Section 101 of the 1976 Act. See 137 S. Ct. at 1006. They reasoned that if the decorations were removed from the uniforms and affixed to another medium, they would not copy the uniform itself. Id. They analogized that just as two-dimensional fine art are aligned with the shape of the canvas on which it is painted, these decorations are aligned with the shape of the uniform itself. See 137 S. Ct. at 1012. Respondents may only prohibit the reproduction of these surface designs; however, the Court holds that they have no right to prevent others from manufacturing a cheerleading uniform identical in shape, cut, or dimensions. See 137 S. Ct. at 1006

Ultimately, the design of the uniforms satisfy the requirements of Section 101 of the 197 Act because they 1) can be perceived as a two- or three- dimensional work of art separate from the useful article; and 2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article. 137 S. Ct. at 1016. Based on this interpretation, the Supreme Court affirmed the Court of Appeal’s judgment. Id.

Now high fashion designers can turn to this holding when any aesthetic design is affixed to a utilitarian design. This holding has revolutionized high fashion designers’ intellectual property interests for their designs in the high fashion industry that is victim to fast fashion’s intellectual property theft.

Non-U.S. (foreign) copyrighted works should be registered with the U.S. Copyright Office

by Henry Park, Esq.
Of Counsel and Registered U.S. Patent Attorney
Copyrights are territorial rights, which means that they are granted by—and limited to—the jurisdiction in which the copyright claimant seeks protection. To avoid this limitation, 171 countries have signed the Berne Convention for the Protection of Literary and Artistic Works.

Under the Berne Convention, signatories recognize that the works from one contracting state must be given the same protection in each of the other contracting states as the latter gives to its own nationals. See Berne Summary at http://www.wipo.int/treaties/en/ip/berne/summary_berne.html (1) Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union […] the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.

See Berne Convention, Article 5(1) at http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P109_16834. Moreover, that protection must not be conditioned upon compliance with any formality. See supra Berne Summary.

(2) The enjoyment and the exercise of these rights shall not be subject to any formality[.]
See Berne Convention, Article 5(2) at http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P109_16834.

Non-U.S. copyrights, Best Law Firm in Brooklyn New York | Law Firm of Dayrel Sewell

When the U.S. became a signatory to the Berne Convention, it amended its copyright laws through the Berne Convention Implementation Act of 1988. Specifically, the U.S. amended Section 411 to require the registration of only domestic works before a copyright lawsuit can be filed. See 17 U.S.C. § 411(a).

Thus, a non-U.S. copyright claimant (i.e., foreign claimant) can initiate a copyright infringement lawsuit in the U.S. based on its foreign copyrights without registering them.

The U.S., however, did not amend Sections 410(c) or 412. Section 410(c) grants a presumption of validity to registered works, which affects the order of proof. See 17 U.S.C. § 410(c). Section 412 makes timely registration a prerequisite for certain remedies: the award of statutory damages and of attorneys’ fees. See 17 U.S.C. § 412.

[The committee] has concluded that the statutory incentives for registration contained in the provisions of sections 410(c), 412, and 205 of the Copyright Act are not preconditions for the ‘enjoyment and exercise’ of copyright. While those provisions substantially enhance the relief available to the proprietor of a registered work, they do not condition the availability of all meaningful relief on registration, and therefore are not inconsistent with Berne.

Elsevier B.V. v. UnitedHealth Group, Inc., 93 U.S.P.Q.2d (S.D.N.Y. Jan. 10, 2010) (quoting from Senate Report No. 100-352).
To avail oneself of the benefits associated with Section 412, the copyright holder must timely register its works.

– for an unpublished work, that the work is registered before any infringement

– for a published work, that the work is registered within three months of its first publication See 17 U.S.C. § 412. Once timely registered, the copyright holder may claim statutory damages instead of having to prove actual damages and the actual infringer’s profits. See 17 U.S.C. § 504(c). Statutory damages are determined by the court and range from between $750 – $30,000 per infringed work, and can go up to $150,000 per work if the infringement was willful. See 17 U.S.C. § 504(c). Additionally, the copyright holder may recover its costs and, if it is the prevailing party, its reasonable attorney’s fees. See 17 U.S.C. § 505; see also Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. ___ (2016) (a court examines a variety of factors when determining whether to award attorney’s fees, but should put substantial weight on the reasonableness of the losing party’s position). Both of these benefits are particularly strong negotiating tools. Thus, foreign copyright claimants should timely register their foreign copyrights with the U.S. Copyright Office to avail themselves of all potential relief under U.S. Copyright Law.

Patent Troll Paying the Toll

In an exemplary ruling, the United States District Court for the Southern District of New York has ordered the so-called patent troll, Lumen View Technology, LLC (“Lumen”), to pay opposing party FindTheBest.com’s legal fees and other expenses under the fee-shifting provision of 35 U.S.C. § 285. See Lumen View Technology, LLC v. FindTheBest.com, Inc., 1:13-cv-3599 (DLC) (SDNY 2014).

Lumen filed suit against FindTheBest in May 2013 alleging FindTheBest infringed on a computer-implemented method patent that facilitated bilateral and multilateral decision-making. Lumen also filed more than twenty other similar patent infringement claims against various other technology companies during 2012 and 2013. FindTheBest quickly noticed the Lumen claim was a sham due to the fact that FindTheBest technology did not use a bilateral or multilateral decision-making process. The Southern District found Lumen’s suit to be without merit and dismissed the case in November 2013.

After the dismissal, FindTheBest petitioned the court to find Lumen’s suit one of an “exceptional case” under Section 285 and the recent Supreme Court ruling in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014).

In the April 2014 unanimous decision penned by Justice Sotomayor, the Supreme Court ruled that an “exceptional case” under § 285 is one that stands out from others with respect to a party’s litigating position, considering the law and the facts of the case, or the unreasonable manner in which the case was litigated. See Octane Fitness, LLC, 134 S. Ct. at 1756.

The Court found the previous standard in Brooks Furniture Manufactuirng, Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (2005), to be overly restrictive and one that hampered the statutory grant of discretion given to the courts under Section 285. Section 285 imposes only one constraint on a district court’s discretion to award fees, one of “exceptional” cases. In Brooks, a case could only be deemed exceptional when there was material inappropriate conduct, or when parties brought cases in subjective bad faith and were objectively baseless. The Court found this framework to be inconsistent with the text of Section 285.

In step with the Supreme Court’s Octane decision, the Southern District found Lumen’s patent infringement suit to fall under the “exceptional case” standard. As such, the Southern District of New York granted FindTheBest’s motion and found the suit to be a “prototypical exceptional case” shifting payment of FindTheBest’s case fees to Lumen.

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