Category Archives:Copyright Law

United States Supreme Court to hear copyright lawsuit regarding cheerleader uniforms

This entry is a follow up to a previous blog article[1] regarding the case of Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015), in which the Sixth Circuit Court of Appeals ruled that designs on cheerleading uniforms are eligible for copyright protection, namely stripes, chevrons, and color blocks incorporated into a uniform. Star Athletica, LLC then filed a petition for a writ of certiorari to the Supreme Court, which recently agreed to hear the case.[2] The Supreme Court agreed to hear only one issue from Star Athletica, LLC’s petition, namely the question: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?[3]

Copyright protection can exist for “pictorial, graphic, and sculptural works” (“PGS works”).[4] PGS works “include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”[5] Generally, copyright protection will not inure to something that merely serves a utilitarian purpose, such as a chair. This dispute resolves around how to separate copyrightable designs from utilitarian objects that are not subject to copyright protection, within a cheerleading uniform. Star Athletica, LLC claims in its petition that this case will resolve important issues in the fashion industry and warns that if the Sixth Circuit’s decision is not overturned then “industrial designers can claim copyright protections . . . for pleats on tennis skirts, button patterns on golf shirts, and colored patches on rugby uniforms.”[6]

The Supreme Court’s decision is also likely to be significant in that it has the potential to provide a clear test for determining the extent of copyright protection in PGS Works. As stated in more detail in our previous blog entry, the case law is unsettled regarding the proper test to determine whether creative designs are separate from utilitarian functions. The Supreme Court’s decision can also have significant impact on the 3D printing industry. A clear test would provide clarity on the extent to which certain 3D printed objects that combine creative designs and utilitarian functions are subject to copyright protection.[7] An Amicus Brief filed by 3D printing companies warns that “[t]he current state of the law increases barriers to entry for market participants who stand to take greatest advantages of 3D printing. . . . [and that] [t]he confusion surrounding the conceptual separability doctrine will likely lead to elevated levels of litigation.”[8] Although a decision by the Supreme Court is not likely for several months, when it is entered, it is likely to have significant impact on the scope of copyright protection, especially in the fashion industry.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] This blog was entitled “Sixth Circuit finds that designs on Cheerleader Uniforms can by copyrighted.”
[2] See, Star Athletica, LLC v. Varsity Brands, Inc., 2016 WL 98761 (May 2, 2016).
[3] Id.
[4] See, 17 U.S.C. § 102(a)(5)
[5] See, 17 U.S.C. § 101.
[6] See, http://www.scotusblog.com/wp-content/uploads/2016/05/SACP.pdf, at pg. 6.
[7] See, http://www.scotusblog.com/wp-content/uploads/2016/03/Star-Athletica-v-Varsity-Brands-Amicus-of-Shapeways-FILED.pdf, at pg. 2-5.
[8] Id. at pg. 4.

Tattoo artist files copyright lawsuit over use of Lebron James’ Tattoos in Video Game

Recently, a lawsuit was filed by Solid Oak Sketches, LLC (“Plaintiff”) against various companies responsible for creating the “NBA 2K” video game.[1] The Complaint alleges that the Defendants are liable for copyright infringement over the use of tattoos of professional basketball players in Defendants’ “NBA 2K16” video game.[2] The dispute is over tattoos done by artists on various professional basketball players, such as LeBron James, Kobe Bryant, and DeAndre Jordan.[3]  Plaintiff alleges that it is the owner of the copyrights in such tattoo designs as a result of license agreements with the individual artists.[4]

The Complaint alleges that the tattoo designs are subject to copyright protection, specifically as a “pictorial, graphic, and sculptural work.”[5] The Complaint also notes that whether tattoo designs are subject to copyright protection is a novel issue, yet to be determined by the courts.[6] As discussed in previous blog articles, whether copyright protection exists in “pictorial, graphic, and sculptural works” can be a complicated determination.[7] The Complaint seeks injunctive relief and damages, alleging that the use of the tattoos enhanced the value of Defendants’ video games.[8]

This lawsuit raises interesting questions such as whether tattoo designs are subject to copyright protection, and if so, who owns the copyright. A decision in favor of the Plaintiff could significantly alter the scope of obtaining licensing rights and the use of the name and likeness of professional athletes in video games and other media.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Solid Oak Sketches, LLC v. Visual Concepts, LLC, et. al., Case No. 16-CV-00724 (S.D.N.Y. Feb. 1, 2016).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] See, “Sixth Circuit finds that designs on Cheerleader Uniforms can be copyrighted.”
[8] See, Solid Oak Sketches, LLC v. Visual Concepts, LLC, et. al., Case No. 16-CV-00724 (S.D.N.Y. Feb. 1, 2016).

Supreme Court to review standard for awarding attorneys’ fees in copyright cases

On January 15, 2016, the Supreme Court agreed to hear a case which requests that the Supreme Court determine the proper standard for attorneys’ fees awards in copyright cases.[1] The party requesting review by the Supreme Court, Kirstsaneg (“Petitioner”) prevailed against Respondent, John Wiley & Sons, Inc. (“Respondent”), who had sued the Petitioner for copyright infringement as a result of allegations that the Petitioner had purchased Respondent’s textbooks and then resold them without authorization.[2] Petitioner prevailed under the “first sale” doctrine which was found to be a complete defense to Respondent’s claims.[3] Having prevailed, Petitioner sought attorneys’ fees in the United States Court of Appeals for the Second Circuit, but his request was denied.[4] Generally, the Copyright Act provides a court with discretion to award a prevailing party its reasonable attorneys’ fees.[5]

In Petitioner’s petition for writ of certiorari requesting for the Supreme Court to hear his case, Petitioner alleges there is a split in the different Federal Circuit Courts regarding the standard for awarding attorneys’ fees in copyright cases.[6] Specifically, Petitioner alleges that had his request for attorneys’ fees been heard in a different circuit, such as the Ninth or Eleventh Circuits he would have definitely prevailed.[7] Petitioner also claims that he likely would have prevailed in the Third, Fourth, Fifth, Sixth or Seventh Circuits as well.[8] The difference between the Second Circuit and the other Circuits mentioned above, according to Petitioner, is that the Second Circuit “places ‘substantial weight’ on whether the losing party’s claim or defense was objectively unreasonable.”[9]

The Supreme Court recently addressed the standard for awarding attorneys’ fees under the Patent Act in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). However, as the Petitioner points out, the standards under the Patent and Copyright Acts are different.[10] A decision by the Supreme Court determining the proper standard for attorneys’ fees would have a significant impact. As evidenced by the Supreme Court’s recent decision regarding attorneys’ fee award under the Patent Act, it does not appear that the Supreme Court is hesitant to make such a definitive ruling. We will be monitoring the status of this case over the next several months.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Kirtsaeng v. John Wiley & Sons, Inc., 2016 WL 205944 (Jan. 15, 2016).
[2] See, http://www.scotusblog.com/wp-content/uploads/2016/01/Kirtsaeng-Cert-Petition.pdf
[3] Id.
[4] Id.
[5] See, 17 U.S.C. § 505.
[6] See, http://www.scotusblog.com/wp-content/uploads/2016/01/Kirtsaeng-Cert-Petition.pdf
[7] Id.
[8] Id.
[9] Id.
[10] Id.