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This week, Eve is continuing her discussion on fashion law by teaching us more about the advantages of trademarks and patents. Find the full blog post below!
Last week, we discussed the various legal tools fashion designers and brands have at their disposal to protect their designs. This week, we will be taking an in-depth look at the role trademarks and copyrights in fashion law.
Trademarks have become the most common tool designers use to protect their brands. Given the option for immediate protection, common law protection, long term of protection, and lower costs, trademark protection is a popular tool used by both established fashion houses and new fashion designers.
However, please keep in mind that trademarks protect only the name, logo, or symbol – and not actually the design itself.
This is why we need a stronger form of protection as readily available to the fashion industry, and copyright is perfectly positioned to do just that.
Copyright is gearing up to be a strong form of protection for the fashion industry but still needs to take a few more steps. Copyright protection is based on the belief that copyright is a natural right and creators are therefore entitled to the same protections anyone would be in regard to tangible and real property.
Copyrights are the cheapest form of protection, and even an entire fashion line can be copyrighted with a single application if part of the same collection.
The advantages of copyright, including the immediate protection, low registration cost, ease of registration, and long protection life, have made copyright one of the best tools fashion designers have to protect their artistic fashion designs.
Until 2017, copyright law did not protect clothing and accessories because of their useful properties. Courts had held time and time again that fashion garments were not copyrightable, because of the inherent usefulness of clothing.
In Star Athletica v. Varsity Brands (2017), the Supreme Court of the United States ruled that aesthetic fashion designs can be protected via copyright if they can be separated from the usefulness of an article of clothing either physically or mentally (the “separability concept”).
Despite the existence of fashion trademarks, copyrights, and patents, the current laws of the United States still leave fashion designs vulnerable to copying, imitating, and reproducing. Ultimately, fashion law requires a more inclusive legislature to protect the innovation behind this growing industry.
Okay, I see. You think this has nothing to do with you. You go to your closet and select, I don’t know, that lumpy blue sweater, for instance, because you’re trying to tell the world that you take yourself too seriously to care about what you put on your back. But what you don’t know is that that sweater is not just blue, it’s not turquoise, it’s not lapis, it’s actually cerulean. And you’re also blithely unaware of the fact that in 2002 Oscar de la Renta did a collection of cerulean gowns. And then I think it was Yves Saint Laurent who showed cerulean military jackets, and cerulean quickly showed up in the collections of 8 different designers. And then it filtered down to the department store, and then trickled on down into some tragic Casual Corner where you – no doubt – fished it out of some clearance bin. However, that blue represents millions of dollars and countless jobs and its sort of comical how you think that you’ve made a choice that exempts you from the fashion industry, when in fact, you’re wearing a sweater that was selected for you by the people in this room, from a pile of… stuff.
New York City is one of the fashion capitals of the world and is the headquarters for more than 900 fashion companies.Fashion shows and showrooms “attract more than half a million visitors annually” to New York.The total annual economic impact from New York Fashion Week is close to $900 million and “surpasses events such as the New York City Marathon ($340 million in 2010), the 2014 Super Bowl in New Jersey (about $550 million) and the U.S. Open (about $800 million).
In addition to the revenue the fashion industry generates for the U.S., it also generates jobs and promotes creativity.The fashion industry employs “more than 1.8 million workers across the country,” and the “number of people working as fashion designers in the U.S. has grown by nearly 50 percent in the past 10 years.”Beyond New York City and Los Angeles – the two highest concentrations of fashion designers in the U.S. – San Francisco, Oakland, San Diego, Dallas, Kansas City, Columbus, and Nashville are starting to produce more and more fashion designers.Further, as the industry has evolved and become larger, there have been a wider range of jobs that have developed specific to the fashion industry including research and development, design, and marketing.The fashion industry has grown so much that “more than 200 postsecondary schools across the U.S. offer fashion-related programs.”Many of those schools also include opportunities for students to work together to design and showcase with students from other schools in other states,allowing for an innovative collaboration that would not otherwise take place.
Bearing in mind the revenue generation, job production, and creativity propeller, it is safe to say the fashion industry is a vital industry to the United States,and such an important industry should be protected by the laws of this country. As fashion growth and economic impact relies on its consumers purchasing new products, fashion designers need to create new designs or pieces to intrigue consumers into purchasing new garments. Therefore, ultimately, fashion relies on innovation, and it is the innovation of new fashion designs that need to be protected.
As the law stands now, fashion designs are not fully protected. This paper will argue that Congress should adopt bills that allow for further copyright protection of fashion designs and garments. To do this, part two of this paper will delve into the different forms of legal protection afforded to fashion designs – patents, trademarks, and copyrights. Part three will discuss why copyright is the most effective means of protection. Part four will discuss some pertinent cases in fashion with copyright infringement claims, their legal analyses of the statutes, and bills currently pending in Congress to address these issues. Part five of this paper will conclude that Congress should adopt the Innovative Design Protection Act of 2012.
Fortunately, fashion law is a very hot niche field of law that is gaining momentum as the fashion industry evolves.The practice of fashion law consists of ntellectual property and commercial matters to various fashion-related agencies.“It covers everything from branding, protection, and enforcement of intellectual property rights to the non-contentious commercial side of the business, such as licensing, manufacturing, and distribution contracts and agency and franchising agreements.”This paper will consider solely the intellectual property rights, rather than the commercial matters.
Fashion’s innovation lies in its designs. The law protects these innovative designs through intellectual property, which can be broken down into three facets: copyright law, trademark law, and patent law.Copyright protects original works of authorship, with the caveat that the work cannot have a physical useful function.Trademark typically protects the logo, name, label, or short phrase used on goods or services.It can also protect distinctive smells,and trade dress, like the packaging, shape, and overall characteristics of a product.
The last form of intellectual property protection available is through a patent. There are two main types of patents: utility patents and design patents.Utility patents are the majority of patents and protect useful, novel, and non-obvious inventions.While inventions like Spanx and the Wonderbra have utility patents,the majority of fashion designs are better qualified for design patents. Design patents protect the new, non-obvious, and ornamental design aspect of functional items,and the United States has held over and over again that clothing is, in and of itself, a functional item.
While on the surface, this may seem like a comprehensive system to protect fashion, there are many pitfalls. Although producing and selling counterfeits are illegal,counterfeit clothes and accessories are rampant, amounting to a $450 billion global industry.However, counterfeits are not the only problem, goods that copy the design, shape, and cut of a garment, but just exclude the original brand’s logo, may be completely legal in the United States.As these don’t copy the brand’s trademark, they are not counterfeits.
Though it seems design patents are perfectly catered to protect things like fashion designs, they are the most under-utilized tool. In 2016, the United States Patent and Trademark Office (USPTO) and U.S. Copyright Office filed 1,611,311 trademark applications,533,606 copyright claims,and 320,395 design patent applications.This is due to the differences in the lawmakers practical thinking and the actual process fashion designers have to undergo to receive patent protection.
Unlike trademarks and copyrights, which receive rights through common law protection as soon as a mark or design is created,and does not need to be granted by the state, patents only receive rights after registered and upon issuance by the USPTO.A design patent application must be filed within the first twelve months of the product’s introduction into the marketplace,and can cost anywhere from $4,000 to $10,000, including research, legal fees, filing fees, etc.A design patent can take twelve to eighteen months to obtainand only lasts fifteen years, without a renewal option.This is still the shortest term of protection offered.
Further, the USPTO allows users to peruse pending patent applications online, which discloses the design of the pending garment. From a paper application, a utility patent would be more difficult to recreate, but as fashion designs are majorly for aesthetic purposes, this is a major drawback. The design patents can easily be visually copied while pending application.Although a patent pending design does have some rights,litigation for a patent pending infringement can only happen after the patent is issued,defeating the purpose of exclusive design rights. Coupled with the short lifespan that fashion items typically have (a season), design patents simply take too much time and cost too much for the benefit brands would receive from them.To top this all off, a design patent has to be submitted for each different piece; a whole line cannot be protected from one design patent.
The shortcomings of design patents are exemplified in the 1929 Federal Appellate Court case, Cheney Brothers v. Doris Silk Corp. At the time, the Copyright Office did not accept “patterns” as something copyrightable, so the only form of protection offered for Cheney Brothers’ annual silk fabric pattern creations were design patents. However, their patterns were not sufficiently unique from another enough to satisfy the new, non-obvious, and ornamental design threshold for design patents,and it would also be cost prohibitive because they had lots of designs that were each popular for only a short period of time.Doris would wait and see which of Cheney’s patterns became popular, and then reproduced them at a lower price.Cheney sued Doris, but the Trial Court found for Doris,and the Appellate Court affirmed.
The Appellate Court found that Cheney’s designs were not entitled under law for relief, stating “in the absence of some recognized right at the common law or under Statute, a man’s property is limited to the chattels with embody his invention. Others may imitate these at their pleasure.”The Appellate Court felt that the 1918 Supreme Court decision in International News Service v. Associated Press(although news is not protected through the Copyright Act, there is an economic value in news, and therefore, a company can have a quasi-property right, a limited proprietary interest, in it against a competitor who takes advantage of the information)should not be interpreted broadly to apply to fashion designs.The Appellate Court agreed that Cheney suffered harm, but there was no current remedy at common law.The Copyright Act was eventually changed to account for fabric designs.
Trademarks, on the other hand, have become the most common tool designers use to protect their brands. Trademark rights are automatically obtained through common law if it is the first use of the mark or if the mark garners secondary meaning.Owners can use the trademark symbol with little capital letters (™) without registration,to alert others of their rights over the mark. If registered, owners can use the trademark symbol in a circle (®).Registration does offer a stronger protection of rights, including nation-wide exclusivity, rather than the local or state wide rights obtained through common law protection.Registration is also preferred if a problem arises and proceeds to litigation. The registration can conveniently happen right before the complaint is filed with the court.
Trademark registration is cheaper than patents, though more expensive than copyrights.State registration can cost $100-$200 for each categoryand $275-$375 for federal registration.Working with an attorney may cost $1,500 to $2,500, depending on how complicated it is to register your mark. Word marks tend to be easier; symbols tends to be a little bit more complicated in terms of searching and so on.A trademark typically takes about four to six months to obtain,but can be protected through common law for an infinite amount of time, as long as the protected mark stays in use.A registered trademark can obtain federal protection for 10 years, with 10 renewal terms.Given the option for immediate protection, common law protection, long term of protection, and lower costs, trademark protection is a popular tool used by both established fashion houses and new fashion designers. However, please keep in mind that trademarks protect only the name, logo, or symbol – and not actually the design itself. This is why we need a stronger form of protection as readily available to the fashion industry, and copyright is perfectly positioned to do just that.
Not to be overlooked, encompassed in trademarks, is trade dress, another strong form of protection well suited for fashion designs. Trade dresses protect the packaging or appearance of products.It was initially for product packaging, like Tiffany’s little blue boxes,but has come to be a strong form of protection for iconic fashion items. Christian Louboutin’s iconic red sole, Hermès Birkin or Kelly’s bag shape, Céline luggage, and even Bottega Veneta’s woven pattern are protected forms of trademark through trade dress protection.These all gained secondary meaning in the market through common law protection, meaning that that particular garment becomes so well-known to consumers that they can link the appearance of the garment with the brand,and then were after registered as trademarks. Please note that trade dresses are a form of common law protection only, and once registered, becomes a part of the brand’s trademark protection.
However, as perfect as trade dress protection sounds, there are major drawbacks. Because this protection relies on the piece of garment or packaging to first acquire a secondary meaning in the marketplace, this form of protection is essentially only available for established fashion houses. A new brand would not be able to establish sufficient secondary meaning to gain protection by the time a better known brand picks up on the trend and utilizes it. In fact, the latter well-known brand may be able to establish secondary meaning and receive the protection, while the small new brand is left cheated of their ingenuity. This was what happened in Wal-Mart v. Samara Brothers, when Samara Brothers, an emerging designer at the time, sued Wal-Mart for trade dress infringement of the entire line that Samara Brothers came out with.
During trial, Wal-Mart admitted to buying the Samara Brothers’ line, taking pictures, and intentionally recreating them.The U.S. Southern District Court of New York found for Samara Brothers, and entered judgement against Wal-Mart for millions of dollars.Wal-Mart then appealed to the Second Circuit, which once again affirmed the district court’s judgement.Then, the Supreme Court of the United States granted certiorari and reversed it,holding under § 43(a) of the Lanham Act, that designs could never be inherently distinctive,and therefore must first achieve secondary meaning to receive trade dress protection against an infringement.Secondary meaning occurred when, in the minds of the public, the design had the primary significance of identifying the source of the product rather than the product itself.In doing so, the Supreme Court barred unknown companies and independent designers from receiving trade dress protection, while already distinctive brands can receive protection, and then will be able to register the design elements as trademarks.Essentially, trade dress is afforded to only famous marks.
We therefore, are left with copyright, which is gearing up to be a strong form of protection for the fashion industry, but still needs to take a few more steps. Copyright protection is based on the belief that copyright is a natural right and creators are therefore entitled to the same protections anyone would be in regard to tangible and real property.Therefore, like trademarks, copyright protection can be obtained immediately through common law, which include statewide rights.It begins at the point of creation – the moment a work is fixed in tangible form.It does not require the work to first be published (into the marketplace).Also similar to trademarks, registering the work does offer stronger protection, especially in the face of litigation. A work can be filed for copyright protection just prior to filing a complaint with a court, and only an application is sufficient to withstand the complaint. An approved registration can be later added in to strengthen the complaint.
Copyrights are the cheapest form of protection. The cost of registering a work with the Copyright Office is $35-$50or $250-$500 including legal fees.Further, an entire fashion line can be copyrighted with a single application, if part of the same collection.If created by an individual, copyright protection lasts for the life of the author plus 70 years.If the work is owned by a corporation, the work lasts for either 95 years after publication (the work is introduced in the marketplace) or 120 years after creation, whichever comes first.Registration typically takes five months to one year to complete.With all of these advantages of copyright, including the immediate protection, low registration cost, ease of registration, and long protection life, copyright is one of the best tools fashion designers have to protect their artistic fashion designs. The law itself is coming closer to protect more and more fashion designs, it just needs to evolve a bit more for sufficient protection.
In order for a work to be protected by copyright law, the thing must be an original work of authorshipfixed in a tangible medium.According to the Copyright Act of 1976, codified in Title 17 of the United States Code, copyright protection is afforded for the following types of works: literary, musical, dramatic, pantomimes and choreographic works, pictorial, graphic, and sculptural works, audio-visual works, sounds recordings, derivative works, compilations, and architectural works.Fashion protection through copyright is classified in the pictorial, graphic, and sculptural work category.
However, courts have struggled with including fashion designs as pictorial, graphic, and sculptural works. Courts have held time and time again that fashion garments were not copyrightable, because of the inherent usefulness of clothing, but differ when there are some features that may be copyrighted at different times and in different scenarios. In 1934, the U.S. District Court for the Southern District of New York (SDNY) held a drawing of a dress was copyrightable, yet the dress itself was not, so there was no infringement when defendant created the dress that was showcased in plaintiff’s dress drawing.Then in 1959, after other cases expanded the definition of “art” and the congressional intent of the copyright statute, the same court held that a design printed upon dress fabric is copyrightable.
In 1980, SDNY held that a belt buckle design can be copyrighted as jewelry because its design can be conceptually separated from the functionality, because some people would wear the buckles as jewelry pieces.SDNY also focused on the fact that these buckles were made from silver, which the court viewed as inherently artistic,as opposed to inherently functional. Although these latter two cases do find copyrights to be valid, the courts seem to be treading on a fine line and justifying their decisions in ways to limit the protection.It is almost as if courts see the immoral aspect behind copying fashion but do not yet know how or if they should legally protect fashion, and if so to what extent.These copyrights were valid when the design could physically be lifted from the garmentand when the registration was for jewelry– not clothing.
Until just last year in 2017, copyright law did not protect clothing and accessories because of their useful properties.In Star Athletica v. Varsity Brands, the Supreme Court of the United States ruled that aesthetic fashion designs can be protected via copyright if they can be separated from the usefulness of an article of clothing either physically or mentally(the “separability concept”). The U.S. Copyright Office notes that although copyright does not protect useful articles, it may protect “any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object. Thus, a useful article [like clothing] may have both copyrightable and uncopyrightable features.”Brands may be able to claim a bit more protection under copyright law, but it is still largely unclear where exactly the courts will draw the line for protection.In late March 2017, Puma SE filed a lawsuit against Forever 21, alleging many claims including copyright infringement.To substantiate Puma’s copyright infringement claim, they cited the separability concept from Star Athletica,and was the first case to do so.However, the U.S. District Judge ruled against Puma SE,keeping the state of copyright protection in limbo.
Regardless, copyright has been the form of intellectual property that has been expanded many times to extend protection to encompass more works, exemplified in Star Athletica, and for longer periods of time.Copyright is the one that legislators and courts seem most willing to expand. For example, as a result of design patents failing to protect Cheney Brothers, copyright was extended to include designs,rather than the costs and standards for design patent protection to be lowered. In another instance, in Wal-Mart, when the Supreme Court ruled that trade dress only applies to designs that had acquired a secondary meaning, the Court mentioned that these designs could be protected through copyright.Judges have noted that this lack of protection of fashion designs may be a matter for legislators to adopt, rather than trying to expand the current laws through case law.
There have been seven bills in the past that unsuccessfully attempted to extend legislation to better protect fashion designs. The first bill was introduced to the House on March 30, 2006 titled “To amend title 17, United States Code, to provide protection for fashion design.”Imaginatively, the bill wanted to extend copyright protection to fashion designs.Additionally, this extension was to be only applicable to those fashion designs on useful articles,like clothing, if registered within three months after being made public,and give these fashion designs a copyright protection of three years.Among other propositions, the bill stated that an infringement must have been intentional or if the re-creator reasonably should have known the good was protected by copyright,and extended the definition of infringing articles to “include any article the design of which had been copied from an image of a protected design without the consent of the owner.”It also increased allowable damages for infringement of original designs.
Since this first bill in 2006, to the last one in 2012, the bills progressively became less restricted and gave up protection as they progressed, as each one had been unsuccessful. Of these seven, two recent ones made it further than others. In August 5, 2010, the Innovative Design Protection and Piracy Prevention Act (ID3PA) was introduced to the Senateand expanded upon the demands the first bill proposed. IDP3A defined apparel as clothing, handbags, belts, and eyeglass frames.It also extended the term of protection to 3 years for a fashion design,and excluded those designs in an useful article (like clothing) that were registered for copyright three years before the date of a copyright infringement case.It revised the pervious provisions about when an infringement is made to say those “without knowledge, either actual or reasonably inferred from circumstances,” does not constitute an infringement.It also included a higher standard, stating that a fashion design is not deemed to be copied from a protected design “if it (1) is not substantially identical in overall visual appearance to and as to the original elements of a protected design; or (2) is the result of independent creation.”The Senate Committee unanimously voted for ID3PA to proceed to the Senate floor,the furthest any of the design bills had gotten.Although the bill was very popular among the fashion community,the bill was placed on the Senate Legislative Calendar in December 2010,and did not proceed forward.
The second bill that gained a lot of traction was the last bill entitled the Innovative Design Protection Act of 2012 (IDPA), introduced to the Senate Committee on September 10, 2012 with ten co-sponsors.It contained everything that ID3PA did, but modified the infringement criteria so that telecommunications services cannot infringe.It also raised the standard of finding a design to infringe on a protected design to be “substantially identical in overall visual appearance to and as to the original elements of a protected design,”allowed a twenty-one day grace period for an alleged violator before the original creator filed a lawsuit,and lowered the amount of damages that can be recovered.All of these changes are better for those that are not in favor of the protection extending to fashion designs. This was also a popular bill among the fashion community,as it was compromising and seen as something critics of the previous bills may be willing to agree to.However, IDPA ultimately failed as well, with no action after it was placed on the Senate Legislative Calendar on December 20, 2012.
The previous bills to protect fashion designs would have strengthened the integrity of the fashion industry, if enacted. Some version of the IDPA would provide a period of protection for original fashion designs whether on a useful item or not,and would span over everything from underwear to accessories (including but not limited to purses, shoes, glass frames, hair accessories, gloves, scarves) to clothing.This is similar to the current fashion and design protection in effect in the European Union.
Additionally, Directive 6/2002 allowed for designs to receive protection for registered rights for five years with a possible renewal for twenty-five years, and for unregistered rights for three years.Registered and unregistered refer similarly to registered and common law rights, respectively, to the United States. Directive 2004/48/EC requires Member States to adopt “measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights”and provides specific rights to parties who reasonably show infringement of their intellectual property rights to prevent such goods from “entry into or movement within the channels of commerce.”Council Regulation 1383/2003 provides a legal mechanism for custom authorities to take action on goods that may infringe IP rights.In addition to EU protection, European national IP laws, particularly in the United Kingdom,France,Italy,Germany,and the Netherlandsprovide additional rigorous protection.
Fashion is one of the largest industries responsible for a chunk of the United States’ economy.However, the current laws of the United States leave fashion designs vulnerable to copying, imitating, and reproducing. Trademark law is the most popular form of protection, encompassing trade dress. However, though trade dress protects the appearance of a garment, the garment must first acquire a “secondary meaning” in the market, meaning that that particular garment becomes distinctive such that consumers can link the appearance of the garment with the brand.This form of protection is only truly afforded to famous marks. And so, emerging designers can only use trademark to protect the name or logo of brands,allowing the design of the garment or accessory to be duplicated.Design patents seem to be the answer to save fashion designs, but due to the cost and time it takes to patent a design in comparison to a clothing piece’s longevity, they are not as useful to fashion brands.
Copyright is the best form of protection that fashion designs have, and it has slowly been expanding overtime.It currently protects fashion designs on useful articles, like clothing, if the design itself can be visually or physically separated from the useful article. There have been multiple bills that have attempted to extend the protection of fashion designs but have all failed. If expanded further to encompass more terms, such as the EU, the level of protection afforded to fashion designs in the U.S. would match other parts of the world, where fashion plays a similarly large role in the economy. If legislative efforts continue to be ignored, the EU will continue to be the wheelhouse for fashion design creation, and the United States will continue to follow in its shadows, with more fashion designers leaving the United States to pursue careers in Europe.
Miranda Priestly, Devil Wears Prada(Fox 2000 Pictures 2006).
Fashion, Statistica, https://www.statista.com/outlook/244/109/fashion/united-states. (last visited Dec. 9, 2018).
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David Robb, U.S. Film Industry Topped $43 Billion In Revenue Last Year, Study Finds, But It’s Not All Good News, Deadline(Jul. 13, 2018), https://deadline.com/2018/07/film-industry-revenue-2017-ibisworld-report-gloomy-box-office-1202425692.
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Revenue from U.S. motor vehicle and parts retail trade between 2000 and 2017 (in billion U.S. dollars), Statistica,https://www.statista.com/statistics/531522/revenue-of-us-motor-vehicle-and-parts-retail-trade. (last visited Oct. 20, 2018).
Oil and gas revenue in the United States from 2000 to 2017(in million U.S. dollars), Statistica,https://www.statista.com/statistics/294614/revenue-of-the-gas-and-oil-industry-in-the-us. (last visited Oct. 20, 2018).
SeeAlison Doyle, Top 10 Industries That Make America Great, The Balance Careers(Oct. 11, 2018), https://www.thebalancecareers.com/industries-that-make-america-great-4136741.
Staff of Joint Economic Committee, 114th Cong., The Economic Impact of the Fashion Industry3 (Comm. Print 2015).
See generally Staff of Joint Economic Committee, 114th Cong., The Economic Impact of the Fashion Industry(Comm. Print 2015).
Staff of Joint Economic Committee, 114th Cong., The Economic Impact of the Fashion Industry2 (Comm. Print 2015).
SeeStaff of Joint Economic Committee, 114th Cong., The Economic Impact of the Fashion Industry4 (Comm. Print 2015).
SeeStaff of Joint Economic Committee, 114th Cong., The Economic Impact of the Fashion Industry5 (Comm. Print 2015).
Staff of Joint Economic Committee, 114th Cong., The Economic Impact of the Fashion Industry4 (Comm. Print 2015).
Fashion Future Graduate Showcase, CFDA, https://cfda.com/programs/designers/fashion-future-graduate-showcase. (last visited Oct. 20, 2018). (“The invited colleges are Fashion Institute of Technology, Parsons School of Design, Pratt Institute, Academy of Art University, California College of the Arts, Kent State University, Rhode Island School of Design, and Savannah College of Art and Design.”).
See Judith Earley, Law Students With An Additional Interest In Fashion Can Opt For Fashion Law, Law Crossing, https://www.lawcrossing.com/article/1720/Fashion-Law/. (last visited Oct. 20, 2018).
Judith Earley, Law Students With An Additional Interest In Fashion Can Opt For Fashion Law, Law Crossing, https://www.lawcrossing.com/article/1720/Fashion-Law/. (last visited Oct. 20, 2018).
See Tyler McCall, Copyright, Trademark, and Patent Law: Your Go-To Primer for Fashion Intellectual Property Law, Fashionista(Dec. 16, 2016), https://fashionista.com/2016/12/fashion-law-patent-copyright-trademark.
See Protecting Scent Trademarks (1): Practically possible in the US – Rather difficult in the EU, Patent Attorneys & Attorneys at Law Dr. Meyer-Dulheuer & Partners LLP(Jun. 7, 2018), https://info.legal-patent.com/trademark-law/scent-trademark-us-and-eu/.
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Patents: Make Sure Your Idea is Useful, Novel, and Non-Obvious, FindLaw, https://smallbusiness.findlaw.com/intellectual-property/idea-must-be-useful-novel-or-non-obvious.html. (last visited Oct. 20, 2018).
See Megan Garber, ‘What are Clothes?’ Asks Most Delightful Supreme Court Argument in History, The Atlantic(Nov. 5, 2013), https://www.theatlantic.com/technology/archive/2013/11/what-are-clothes-asks-most-delightful-supreme-court-argument-in-history/281155/ (quoting Justices Kagan and Scalia describing the various functions clothing has, particularly protective and sanitary); see also Whimsicality, Inc. v. Rubie’s Costumes Co., 721 F. Supp. 1566, 1572 (E.D.N.Y. 1989) (“First, it is accepted copyright law that a garden variety article of wearing apparel is intrinsically utilitarian and therefore a noncopyrightable useful article. Equally noncopyrightable are the elaborate designs of the high fashion industry, no matter how admired or aesthetically pleasing they may be.”); see alsoBrandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1147 (2d Cir. 1987)(“Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of utilitarian pressures as aesthetic choices.”).
See Buying Counterfeit Goods: Laws and Resources, FindLaw, https://consumer.findlaw.com/consumer-transactions/buying-counterfeit-goods-laws-and-resources.html. (last visited Oct. 21, 2018).
Sarah Shannon, Fighting the $450 Billion Trade in Fake Fashion, Business of Fashion(Mar. 2, 2017), https://www.businessoffashion.com/articles/intelligence/fighting-the-450-billion-trade-in-fake-fashion.
See Chavie Lieber, Fashion brands steal design ideas all the time. And it’s completely legal., Vox(Apr. 27, 2018), https://www.vox.com/2018/4/27/17281022/fashion-brands-knockoffs-copyright-stolen-designs-old-navy-zara-h-and-m.
Please note the differences between a counterfeit, infringement, and a duplicate or knock-off. Counterfeits are used when talking about products that copy the exact product of another brand and include the trademarked logo and/or name, in hopes of passing off the fake good as the real one. (See Tyler McCall, Copyright, Trademark, and Patent Law: Your Go-To Primer for Fashion Intellectual Property Law, Fashionista(Dec. 16, 2016), https://fashionista.com/2016/12/fashion-law-patent-copyright-trademark.) An infringement refers to goods that have copied copyrighted or patented designs, but not the trademarked logo of the original product. (See Tyler McCall, Copyright, Trademark, and Patent Law: Your Go-To Primer for Fashion Intellectual Property Law, Fashionista(Dec. 16, 2016), https://fashionista.com/2016/12/fashion-law-patent-copyright-trademark.) A duplicate is like an infringement but the original designs may not have been yet registered for copyright or patent protection.
Statistical Country Profiles: United States,World Intellectual Property Organization, http://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?code=US. (last visited Nov. 1, 2018).
United States Copyright Office, Fiscal 2016 Annual Report, https://www.copyright.gov/reports/annual/2016/ar2016.pdf. (last visited Nov. 1, 2018).
See generally Kelley Keller, Trademarks, Copyrights and Common Law: Possession is Only Nine-Tenths of the Law, Kelly Keller Esq. (Jun. 13, 2018), http://kelleykeller.com/the-limitations-of-common-law-possession-is-only-nine-tenths-of-the-law/.
Professor Guillermo Jimenez, Fashion Institute of Technology, Brooklyn Law School, NYU Stern Graduate School of Business, ISM Paris, Class Lecture in Fashion Law (Aug. 29, 2018).
See Tyler McCall, Copyright, Trademark, and Patent Law: Your Go-To Primer for Fashion Intellectual Property Law, Fashionista(Dec. 16, 2016), https://fashionista.com/2016/12/fashion-law-patent-copyright-trademark. (“Design patents are a little cheaper — maybe we’re talking more like $4,000 or $6,000.”);see also Currently Trending in Fashion: Design Patents, The Fashion Law(Jun. 23, 2016), http://www.thefashionlaw.com/home/currently-trending-in-fashion-design-patents. (“[R]eports suggest a patent (and the corresponding legal fees) will cost you upwards of $10,000”).
How to Patent a Design: Everything You Need to Know, UpCounsel,https://www.upcounsel.com/how-to-patent-a-design. (last visited Nov. 1, 2018).
Rich Stim, When Do Patents Begin and How Long Do They Last?, IntellectualPropertyLawFirms.com, http://www.intellectualpropertylawfirms.com/resources/intellectual-property/patent-protection/when-d (last visited Nov. 1, 2018).
Professor Guillermo Jimenez, Fashion Institute of Technology, Brooklyn Law School, NYU Stern Graduate School of Business, ISM Paris, Class Lecture in Fashion Law (Nov. 14, 2018).
See Patent Pending Infringement: Everything You Need to Know, UpCounsel, https://www.upcounsel.com/patent-pending-infringement (last visited Nov. 17, 2018).
Professor Guillermo Jimenez, Fashion Institute of Technology, Brooklyn Law School, NYU Stern Graduate School of Business, ISM Paris, Class Lecture in Fashion Law (Oct. 3, 2018).
See generally Cheney Bros. v. Doris Silk Corp., 35 F.2d 279 (1929).
See Cheney Bros. v. Doris Silk Corp., 35 F.2d 279 (1929).
See generally Cheney Bros. v. Gimbel Bros., 280 F. 746 (S.D.N.Y. 1922).
Cheney Bros. v. Doris Silk Corp., 35 F.2d 279, 280 (1929).
See generally Int’l News Serv. v. Associated Press, 248 U.S. 215 (1918).
Jane Haskins, What Are Common Law Trademark Rights?, LegalZoom(Aug. 2016), https://www.legalzoom.com/articles/what-are-common-law-trademark-rights. (“You acquire common law trademark rights just by using your trademark in your business.”).
United States Patent and Trademark Office, Basic Facts About Trademarks 11, https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf (last visited Nov. 3, 2018). (“If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO.”).
United States Patent and Trademark Office, Basic Facts About Trademarks 11, https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf (last visited Nov. 3, 2018). (“However, owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including . . . [t]he right to use the federal registration symbol “®”).
United States Patent and Trademark Office, Basic Facts About Trademarks 11, https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf (last visited Nov. 3, 2018).
Tyler McCall,Copyright, Trademark, and Patent Law: Your Go-To Primer for Fashion Intellectual Property Law, Fashionista(Dec. 16, 2016), https://fashionista.com/2016/12/fashion-law-patent-copyright-trademark.
Jane Haskins, How Much Does it Cost to Trademark a Business Name?, LegalZoom(Apr. 2015), https://www.legalzoom.com/articles/how-much-does-it-cost-to-trademark-a-business-name.
Tyler McCall, Copyright, Trademark, and Patent Law: Your Go-To Primer for Fashion Intellectual Property Law, Fashionista(Dec. 16, 2016), https://fashionista.com/2016/12/fashion-law-patent-copyright-trademark.
See Xavier Morales, How Long Does a Trademark Last?, SecureYourTrademark.com(Aug. 25, 2018), https://secureyourtrademark.com/blog/how-long-does-a-trademark-last/.
How long does trademark protection last?,RegisteringATrademark.com, http://www.registeringatrademark.com/length-trademark.shtml (last visited Nov. 3, 2018). Please note there is some maintenance the registrant must do to keep this protection time active, such as filing an affidavit between the fifth and sixth year after the date of registration, stating that the mark is still in use.
See Trade dress, Wikipedia, https://en.wikipedia.org/wiki/Trade_dress (last visited Nov. 2, 2018). (“Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another.”).
SeeWhy is Copying So Rampant in Fashion?, The Fashion Law(Aug. 28, 2018), http://www.thefashionlaw.com/home/why-is-copying-so-rampant-in-fashion.
Professor Guillermo Jimenez, Fashion Institute of Technology, Brooklyn Law School, NYU Stern Graduate School of Business, ISM Paris, Class Lecture in Fashion Law (Sep. 26, 2018).
See Wal-Mart Stores v. Samara Bros., Inc., 529 U.S. 205 (2000).
See Samara Bros., Inc. v. Judy-Philippine, Inc., 969 F. Supp. 895 (S.D.N.Y. 1997).
See Samara Bros., Inc. v. Wal-Mart Stores, 165 F.3d 120 (2d Cir. 1998).
See discussion infra Part 3.B.i. (naming Christian Louboutin’s iconic red sole, Hermès Birkin and Kelly’s bag shape, Céline luggage, and Bottega Veneta’s woven pattern as designs protected through trade dress).
Common law copyright, Wikipedia, https://en.wikipedia.org/wiki/Common_law_copyright (last visited Nov. 2, 2018).
Copyright FAQs, IntellectualPropertyLawFirms.com, http://www.intellectualpropertylawfirms.com/intellectual-property/copyrights/faqs.htm (last visited Nov. 3, 2018).
Professor Guillermo Jimenez, Fashion Institute of Technology, Brooklyn Law School, NYU Stern Graduate School of Business, ISM Paris, Class Lecture in Fashion Law (Sep. 12, 2018).
Nicholas Wells, How much does a U.S. copyright registration cost?, WellsIPLaw.com, https://www.wellsiplaw.com/how-much-does-a-u-s-copyright-registration-cost/ (last visited Nov. 3, 2018).
Definition of Copyright, LegalZoom, https://www.legalzoom.com/knowledge/copyright/topic/copyright-definition (last visited Oct. 21, 2018).
17 U.S.C. § 102 (2018).
17 U.S.C. § 102(a) (2018).
Library of Congress, U.S. Copyright Office, Copyright Registration for Pictorial, graphic, and Sculptural Works 2(Comm. Print 2015).
See Jack Adelman, Inc. v. Sonners & Gordon, Inc., 112 F. Supp. 187 (S.D.N.Y. 1934).
See Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., 169 F. Supp. 142 (S.D.N.Y. 1959).
See Kieselstein-Cord v. Accessories by Pearl, Inc., 489 F. Supp. 732 (S.D.N.Y. 1980).
Kieselstein-Cord v. Accessories by Pearl, Inc., 489 F. Supp. 732, 733 (S.D.N.Y. 1980).
SeeWhy is Copying So Rampant in Fashion?, The Fashion Law(Aug. 28, 2018), http://www.thefashionlaw.com/home/why-is-copying-so-rampant-in-fashion. (“[C]opyright law . . . does not protect useful things, like clothing and accessories, it has provided a rather small amount of protection for those things in their entirety to date.”).
See Star Atheltica, LLC v. Varsity Brands, Inc., 580 U.S. __ (2017).
Useful Articles, Copyright.gov, https://www.copyright.gov/register/va-useful.html (last visited Nov. 17, 2018).
See Supreme Court Sounds Off on Copyright in Cheerleading Uniform, The Fashion Law (Mar. 22, 2017), http://www.thefashionlaw.com/home/supreme-court-says-cheerleader-uniform-is-protectable-by-copyright-law. (“As for whether the decision will actually serve to rid courts of the uncertainty associated with separability, that is still very much up for debate.”).
Puma Files Patent, Copyright, Trade Dress Suit Against Forever 21 Over Rihanna Shoes, The Fashion Law (Apr. 3, 2017), http://www.thefashionlaw.com/home/puma-files-design-patent-copyright-trade-dress-suit-against-forever-21-over-rihanna-footwear.
Stephen Berg, Puma Loses Bid to Pull Forever 21 Shoes From Shelves, The Webb Law Firm (Jun. 5, 2017), https://www.webblaw.com/news/puma-loses-bid-pull-forever-21-shoes-shelves/.
See discussion supra Part II.C.
See Steve Schlackman, How Mickey Mouse Keeps Changing Copyright Law, Art Law Journal (Feb. 15, 2014), https://alj.artrepreneur.com/mickey-mouse-keeps-changing-copyright-law/;see also Timothy B. Lee, Why Mickey Mouse’s 1998 copyright extension probably won’t happen again, Ars Technica (Jan. 8, 2018), https://arstechnica.com/tech-policy/2018/01/hollywood-says-its-not-planning-another-copyright-extension-push/.
See discussion infra Part 3.A.
See Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 214 (2000).
H.R. 5055, 109th Cong. (2006).
Innovative Design Protection and Piracy Prevention Act, S. 3728, 111th Congress (2010).
S 3523 – Innovative Design Protection Act of 2012, Congress.gov, https://www.congress.gov/bill/111th-congress/senate-bill/3728/all-actions?q=S.3728 (last visited Dec. 5, 2018).
Design Piracy Prohibition Act, Wikipedia, https://en.wikipedia.org/wiki/Design_Piracy_Prohibition_Act (last visited Nov. 18, 2018).
See Brittany Lamb, The Federal Government’s Hand-Me-Downs: The Possibility of Protecting Fashion at the State Level, 115 Colum. L. Rev. 127 (2015); see also Linna T. Loangkote, Fashioning a New Look in Intellectual Property: Sui Generis Protection for the Innovative Designer, 63 HastingsL. J. 1 (2011);see alsoSusan Scafidi, Fashion is in the House!, Counterfeit Chic(Jul. 10, 2011), http://counterfeitchic.com/2011/07/fashion-is-in-the-house.html;see also Dover Street Market: Not Merely a Store, The Fashion Law (Jul. 22, 2014), https://www.thefashionlaw.com/?offset=1406048450465.
Innovative Design Protection Act of 2012, S. 3523, 112th Congress (2012).
See Aya Eguchi, Curtailing Copycat Couture: The Merits of the Innovative Design Protection and Piracy Prevention Act and Licensing Scheme for the Fashion Industry, 97 Cornell L. Rev. 131, 147 (2011); see also Casey E. Callahan,Fashion Frustrated: Why the Innovative Design Protection Act is a Necessary Step in the Right Direction, But Not Quite Enough, 7 Brook. J. of Corp., Fin. & Com. L. 195 (2012).
See Casey E. Callahan, Fashion Frustrated: Why the Innovative Design Protection Act is a Necessary Step in the Right Direction, But Not Quite Enough, 7 Brook. J. of Corp., Fin. & Com. L. 195 (2012).
Howard D. Bader, Fashion Design Protection Law Failed Again In 2012, Ballon Stoll Bader & Nadler, P.C. (Feb. 2013), http://www.ballonstoll.com/fashion-design-protection-law-failed-again-in-2012/.
SeeTedmond Wong, Comment, To Copy or Not To Copy, That Is the Question: The Game Theory Approach To Protecting Fashion Designs, 160 U. Pa. L. Rev. 1139, 1148-52 (2012).
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the Legal Protection of Designs, 1998 O.J. (L 289).
Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs, art. 11-12, 2002 O.J. (L 3).
Corrigendum to Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights, ch. II, § 1, art. 3, 2004 O.J. (L 195).
Council Regulation (EC) No 1383/2003 of 22 July 2003 Concerning Customs Action Against Goods Suspected of Infringing Certain Intellectual Property Rights and the Measures To Be Taken Against Goods Found To Have Infringed Such Rights, art. 1, 2003 O.J. (L 196) 7.
SeeCopyright, Designs and Patents Act1988, c. 48 (Gr. Brit.); Registered Designs Act 1949, c. 88 (Gr. Brit.); The Registered Designs Regulations 2001, SI 2001/3949 (Gr. Brit.) (implementing Directive 98/71/EC).
SeeCode de la Propriete Intellectuelle [C. Prop. Intell.] [Intellectual Property Code] (Fr.) (providing comprehensive protection for designs).
SeeLegge 22 aprille 1941, n. 633, G.U. July 16, 1941, n. 166 (It.) (Italian Copy Law); see also Decreto Legislativo10 febbraio 2005, n.273, C. proprieta industrial Dec. 12, 2002, n.30 (It.) (Code of Industrial Property) (granting broad copyright protection to articles of fashion and requiring industrial designs to have artistic value).
SeeGesetz uber den rechtilichen Schutz von Mustern und Modellen – Geschmacksmustergesetz[GeschmMG] [Act on the Legal Protection of Designs], Mar. 12, 2004, Bundesgesetzblatt, Teil I [BGBl I] at 122 (Ger.); Urheberrechtsgesetz [UrhG] [Act on Copyright and Related Rights], Sept. 9, 1965, Bundesgesetzblatt, Teil I [BGBl I] at 1273 (Ger.) (providing copyright protection for a design if is of high artistic value and it is sufficiently novel, differing from previous designs to the extent that it is regarded as an individual intellectual creation).
SeeBenelux-Verdrag Inzake de Intellectuele Eigendom25 februari 2005, Trb. 2005 (Benelux Convention on Intellectual Property); Auteurswet 23 september 1912, Stb. 1912 (Neth.) (Dutch Copyright Act).
See discussion infra Part 1.
SeeWhy is Copying So Rampant in Fashion?, The Fashion Law(Aug. 28, 2018), http://www.thefashionlaw.com/home/why-is-copying-so-rampant-in-fashion. (“Trademark law only protects the names/logos, etc., and not the underlying design.”).
SeeWhy is Copying So Rampant in Fashion?, The Fashion Law(Aug. 28, 2018), http://www.thefashionlaw.com/home/why-is-copying-so-rampant-in-fashion. (“There is a bit of a roadblock here for many brands, as design patent protection [i]s expensive (it tends to cost thousands of dollars to achieve) and takes a relatively long time (upwards of one year) to obtain.”).
See infra discussion Part 4.
Why Are Designers Leaving New York? And Can We Blame Them?, The Fashion Law (Jul. 13, 2017), http://www.thefashionlaw.com/home/can-we-blame-designers-to-decamping-no-nyfw-is-a-mess.
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text:
Allapattah Servs., Inc. v. Exxon Corp.
Frances T. v. Village Green Owners Assn.
Franklin v. Marie Antoinette Condominium Owners Assn.
Gatton v. T-Mobile USA, Inc.
McManus v. CIBC World Markets Corp.
Share v. Casiano Bel-Air Homeowners Assn.
Sproul & Rosenberry, Advising Cal. Comon Interest Communities (Cont.
disputed material facts on a motion for summary judgment or adjudication.
court finds a reference agreement exists between the parties.
therefore had no purchase contract with Interguif. [Exh. 26, p 264:12 265:3; Exh.
analysis” on the question of whether CC&Rs fall within the ambit of section 638.
a construction defect dispute between an association and developer. (Opinion p.
directed to the Legislature, not this Court. Review should be denied.
A. The Court Applied the Well Settled Principles of Grafton Partners.
Court’s decision in Graflon Partners v. Superior Court (2005) 36 Cal.4th 944.
considerations relevant to the waiver of trial by jury in civil cases.
parties expressed as prescribed by statute.’” (Grafton Partners v.
caprice of every judge or magistrate in the State.’” (36 Cal.4th at p.
claim under section 638, a statute resulting in a waiver of the right to jury trial.
association and developer for Judicial Reference. Not so.
controversy between the parties arises out of that contract or lease.
developer as defined by the Civil Code.
patently clear when one reviews the statutory elements of a contract.
invitation to revolutionize the theory of contract formation.
expressed as prescribed by statute.” California Constitution, Article I, Section 16.
(1991) 53 Cal.3d 1082, 1098.
This Court should deny review, and defer this issue to the Legislature.
arise from such a statutory scheme could be thoroughly negotiated and addressed.
estate purchase contracts signed after January 1, 2003. Civil Code section 938.
Decision In Villa Milano v. Ii Davorge (2000) 84 cal.App.4th 819.
Decision in this matter is in accord with Villa Milano on this fundamental point.
Association nor Ii Davorge raises this point, so we need not address it at length.
’ 819 at 826 (fn. 4).
the current statutes. There is no conflict of law on this fundamental point.
or between the owners and the association, not the association and developer.
Cal.App.4th 824,828, 833-834; Fourth La Costa Condominium Owners Assn. v.
Seith (2008) 159 Cal.App.4th 563-575, all owner/association disputes..
Cir. 1994) 26 F.3d 1224, 1228-1229 [“relatively unusual and complicated facts”].
association and developer for judicial reference, as required by section 638.
“written contract” under section 638, then it is unconscionable and unenforceable.
courts.”]. In sum, these issues are not “cleanly presented” to this Court.
Court’s review under California Rules of Court, Rule 8.500.
Petition, Association requests the Court consider the following additional issue.
contract” between the Association and Developer under section 638.
drafted, executed, and recorded the CC&Rs against the Treo @ Kettner project.
is required in order to meet the test of unenforceability. Id.
together, evince a public policy favoring jury trials in construction defect actions.
law and motion practice on its head.
processing program used to generate this Answer.
(BY OVERNIGHT MAIL). I caused such documents to be mailed via overnight mail.
November 3, 2008, at San Diego, California.
A&D Fire Protection, Inc. Aztec Sheet Metal, Inc.
% Gary Richard Bond Esq. % Kevin V. DeSantis, Esq.
Dutch Masonry, in pro per East & West Alum Craft, Ltd.
Ecco Manufacturing Spratt Emanuel Engineering, Ltd.
% Mark R. Frederick, Esq.
Kryton International, Inc Paramount Tile, Inc.
% Miles Alperstein % Christoper J. Koorstad, Esq.
Suncrest Cabinets, USA, Inc. Wilkinson Hi Rise, Inc.
Valentine S. Hoy, VIII, Esq. Charles K. Egan, Esq.
Attorneys for INTERGULF CONSTRUCTION Attorneys for ALCALA COMPANY, INC.
James R. Lance, Esq. Benjamin R. Trachtman, Esq.
Tamara A. Laskin, Esq. Michael B. Martin, Esq.
Attorneys for BRIAN COX MECHANICAL, INC.
Gregory D. Hagen, Esq. Brian K. Stewart, Esq.
DRATH CLIFFORD MURPHY & HAGEN, LLP Michael L. Wroniak, Esq.
and MONTIGO DEL RAY CORP.
Donna E. Moore, Esq. Susanneh M. Mitchell, Esq.
OSMAN & ASSOCIATES Chris Cruz, Esq.
Attorneys for GLASS FACTORY, INC.
Charles L. Harris, Esq. John Michael Harmata, Esq.
Thomas A. Balestreri, Esq. Michael M. Edwards, Esq.
Scott Silber, Esq. Craig A. Weeber, Esq.
Attorneys for LAKEVIEW BUILDING SYSTEMS, INC.
Attorneys for McPARLANE & ASSOCIATES, INC.
John A. Simpson, Esq. Chrissa N. Corday, Esq.
Attorneys for MISSION POOLS OF ESCONDIDO, INC.
Timothy S. Noon, Esq. David M. Hall, Esq.
Attorneys for PROFESSIONAL SERWCE INDUSTRIES Attorney for STARLINE WINDOWS, INC.
Keith C. Cramer, Esq. Robert B. Titus, Esq.
GORDON & REES, LLP Brandi G. Wallace, Esq.
Garry McCarthy, Esq. James R. Balich, Esq.
LEWIS BRISBOIS BISGMRD & SMITH, LLP Wilson K. Park, Esq.
John J. Higgins, Esq. Shaun K. Boss, Esq.
Attorneys for VULCAN MATERIALS COMPANY Attorneys for WILLIAM KELLY & SONS, CALIFORNIA, INC.

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Welcome to the inaugural edition of the ELIPS Newsletter! We are delighted to add this Newsletter to the long and impressive list of benefits that the Executive Committee has worked to provide our members. As you will see from our Calendar of Events, the Executive Committee has been hard at work for you, and we enthusiastically invite you to attend and participate. As Chair of the Section, I want to make sure that every member knows just how welcome you are to participate actively and meaningfully in the activities and the leadership of the section. There is room for everybody with ideas and energy.
In that regard, I especially want to acknowledge and thank Jeff Mandell, the Editor of this Newsletter. Just a few months ago, Jeff approached me and expressed an interest in becoming active in the section. We needed an Editor for this newsletter. Jeff jumped in and the newsletter is now a reality. Jeff is now a member of the section's Executive Committee, and we hope that he is as delighted as we are with the way things have developed. After many years as an entertainment and copyright lawyer, Jeff is now a new, up-and-coming mediator and arbitrator of entertainment and copyright disputes. He's also a charming person, and I encourage you all to get to know him. If you, similarly, have ideas and energy, and would like to get involved in section activities and leadership, please just let me know, we have plenty of room! My email is jk@jeffkichaven.com.
Thanks to one and all for being part of ELIPS!
Los Angeles Superior Court judges now send most lawsuits to mediation. The Court is under enormous budgetary pressure to get cases settled without using its strained resources for a trial. In some cases, the litigants initiate mediation on their own. While a few lawsuits do go to trial (less than 5% of those originally filed), the overwhelming majority will settle. It's just a question of when.
This article addresses the strategic role that Entertainment Counsel can play in mediation, working as a team with the client's Litigation Counsel.
1. Mediation is an in-person, settlement conference, facilitated by a neutral "mediator". Each individual party must attend the mediation; a business must send someone with authority to settle the case. Most mediations are concluded in one day, though the parties may agree to extend the process.
2. Everything about mediation is voluntary. The mediator doesn't have the power to decide the case, or make awards. Unless both sides agree to proposed settlement terms, there's no settlement, and the lawsuit continues as if the mediation hadn't occurred.
3. The mediator's job is to help set the agenda and procedure that will be followed during the day; manage joint fact-finding; assist in negotiations and guide the parties to an agreement (which is then documented in short form, and signed before anyone leaves).
a) By statute, nothing said or written during the mediation may be entered into evidence if the case proceeds to trial. Often, participants supplement this protection with a confidentiality agreement, prohibiting anyone at the mediation from discussing the discussing it (including settlement terms), with anyone, including the press.
b) Either party may instruct the mediator not to disclose part of what he says/provides during ex parte meetings, conference calls or in caucus. The mediator must follow this proscription.
5. The parties may meet with the mediator ex parte, or with everyone together, as determined by the mediator throughout the mediation. If the parties meet in caucus, the mediator becomes a shuttle-negotiator, assisting each side in formulating offers or counter-offers, and then delivering them to the other party. The process repeats, and the mediator brings back the reply, which may include a counter-proposal. This back and forth process may continue until a deal is reached, or the mediator determines it would be useful to bring the parties together for a final push to settle.
6. The level of the mediator's involvement in formulating offers and evaluating each side's case, will differ, depending on the preference of the litigators in each room. Some will want the mediator to limit his role to identifying issues and possible solutions, but not to "have a point of view". Others welcome (or request) more direction.
a. Entertainment "is a business of relationships," but the nature of lawsuits frequently damage or destroy relationships. Mediation, by comparison, can preserve or resurrect relationships, because of its speed, low cost and its ability to use creative deal-making to bring the parties together.
b. Mediation is inexpensive. Mediators in LA typically charge between $3,000 and $7,000 per day, and most cases end in one day.
c. Mediation is inexpensive. Mediators in LA typically charge between $3,000 and $7,000 per day.
d. You can choose a mediator who really understands the entertainment business, its deal-making terminology and the likely intent of the parties. How many times have you worried about the judge or jury not understanding the language of business affairs, the detailed participation provisions or the customs and practices of the industry? Mediation is a chance to get someone who will really get it.
e. A mediator can serve as a valuable sounding board for your side's next proposal, to be sure the message you think you're sending to the other side will be heard the way you want it to be heard (and not trigger a "reactive" hostile response.
(i) One side's strategy includes crushing the other side with discovery and motion practice, until they're ready to settle on your terms.
(ii) One side unwilling to set a precedent of settling any cases of the this type, at any price (even with a confidentiality agreement).
(iii) Your client is certain he/she is right, and is willing to run the risk of an expensive, total loss (including attorney's fees).
2. Deciding when to mediate. The sooner you mediate, the more your client will save in legal fees. However, both sides will need sufficient information from the other side to bargain intelligently. Once the parties agree to mediate, you might agree with opposing counsel to focus discovery during mediation preparations, to the most persuasive evidence regarding the major issues, plus proving of damages incurred (or calculations to show there were no damages). Discuss with opposing counsel the immediate production of the key items needed to mediate.
3. Consider attending the mediation in person, especially if you negotiated the deal at the heart of the dispute (or if your client requests that you attend). If you attend, you'll likely add real value, by virtue of your intimate knowledge about deal-making, including a sense of how far the other side is willing to go. This can be invaluable, but note: don't take control of the mediation. Your litigator is running the case, which may resume battle the next day. Work as a team.
4. Selection of the mediator.
a. In mediation, you can choose a mediator who really understands the entertainment business, its deal-making terminology and nuances, and quick familiarity with the meaning of technical agreements. This is the alternative to worrying that your judge or jury might not understanding the language of business affairs, and what the parties intended when they went into production without signed agreements.
b. How deals are negotiated and documented in stages, including oral agreements and the nuanced language of legal affairs documentation.
(i) unsigned agreements (possibly covered with hand-written comments, after a year of slow, back and forth negotiating).
(ii) verbal agreements, made with the "understanding" that the issue is resolved to one side's benefit, on condition it won't be in the paperwork.
(iii) ambiguity in the agreement, including nuances of drafting.
(iv) how production really works, so the deal and its paperwork will track reality, regarding matters like: completion bond inducement letters, the footprint limitations of international distribution agreements and pre-sales, used collateral for your client's independent production loans.
d. Also ask: Is the mediator knowledgeable enough to be a valuable sounding board for your next proposal, to fully explain it to the other side and to bring back the other side's counter with an explanation of how it was derived?
5. Participate in a pre-mediation conference calls with the mediator.
6. Review and make suggestions to Litigation Counsel re: the mediation brief. (You'll likely know extrinsic, but essential facts pertaining to the rest of the client's career, which may be important).
a. Advise them to lower their expectations: they won't get the kind of outcome in mediation that could happen if you cleanly win a case after trial (and appeal). Mediation strives for "win-win", where each side gets what it needs, in exchange for giving up some things it wants.
b. Discuss with your client the likely effect the case may have on his long-term career, including its coverage in the press. If the lawsuit will make him a pariah afterwards, push for early, private settlement.
a. There is great value to having Entertainment Counsel on the scene during the negotiations. At a trial, the court is limited to giving you damages and/or a court order (e.g. an injunction). That's all. In mediation, by contrast, the parties can agree to almost any terms to settle. Entertainment Counsel - in his element doing this - can churn out alternatives better than anyone else in the room, because he understands everything going on, and can respond to the other side's proposals with alternatives that would be advantageous to the client.
b. Encourage your client to participate in the discussions directly. Your client will more likely be satisfied with the settlement, if he was directly involved in negotiating its terms.
c. Advise client and Litigation Counsel when you think it's time to close.
a. If the parties settle, you can provide another set of eyes on the settlement agreement.
b. If there is no agreement, remain open to the mediator trying a few more approaches to the problem before you give up. A good mediator will have a number of tools ready for this moment.
c. Be open to the mediator contacting counsel after a failed first day, to see if the remaining issues can be worked out between the lawyers (or at a second day of mediation). Many cases settle after giving everyone a little time to cool off and reflect on what happened during the first try.
You can download a free PDF version of this article, at www.mandellmediation.com. Click on "Articles" in the red bar on the left side of the page. This article is for general education only. It is not legal advice for anyone in a particular situation.
Jeffrey Mandell is a mediator and arbitrator, specializing in entertainment, media, copyright, and the right of privacy. Prior to this, was a partner at Gang, Tyre, Ramer and Brown for 20 years.
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Avis Frazier-Thomas, Warner Bros/Intel Prop.
USC Law IP Institutes are renowned both for their practicality and for their high-level academic discussion. The 2011 Institute continues this dedication to keeping decision makers and their advisors at the forefront of emerging issues and best practices in patent, copyright, trademark, and related fields.
Copyright claimant is presumed to own a valid copyright need not establish validity of its copyright for defendant's burden to set forth facts rebutting this presumption to arise; presumption of validity of a copyright applies when standing is at issue. Plaintiff's collection of fabric designs satisfied requirements set forth in 37 C.F.R. Sec. 202.3(b)(4) to be registered as an "unpublished collection."
Copyright owner's unsolicited mailing of compact discs containing copyrighted sound recordings for marketing purposes effected a sale of the discs to the recipients for purposes of the first sale doctrine. Recipients were free to dispose of the discs as they saw fit under the Unordered Merchandise Statute.
Plaintiff that sold software program--which automatically played the early levels of a popular multiplayer online role-playing game in which players interact in a virtual world while advancing through 70 levels--was not liable for secondary contract infringement, even though plaintiff was not entitled to an essential step defense. Players were licensees rather than owners of game software, where the game owner's prohibitions against bots and unauthorized third-party software were covenants rather than copyright-enforceable conditions absent a nexus between the provisions and the licensor's exclusive rights of copyright. Plaintiff's programming of its software to avoid detection did not violate Sec. 1201(a)(2) of the Digital Millennium Copyright Act--which prohibits the circumvention of any technological measure that effectively controls access to a protected work and grants copyright owners the right to enforce that prohibition--with respect to the game's literal elements and individual non-literal elements--such as source code and visual and audible components--where the game's detection software did not effectively control access to those elements. Modification violated Sec. 1201(a)(2) as to the game's dynamic non-literal elements, which included travel through the virtual world. Plaintiff's programming of its software to avoid detection did not violate Sec. 1201(b)(1) of the Digital Millennium Copyright Act--which prohibits trafficking in technologies that circumvent technological measures that effectively protect "a right of a copyright owner"--because game's detection software, designed to reduce cheats and bots, did not protect its reproduction right against unauthorized copying. Game owner was not entitled to summary judgment on its tortious interference claim against plaintiff where there was a material question of fact as to whether plaintiff's actions were improper, even though claim was not preempted by the Copyright Act.
Judgment was affirmed by an equally divided court.
Costco Wholesale Corporation v. Omega, S.A.
Defendant The Freecycle Network--an organization devoted to facilitating the recycling of goods--engaged in naked licensing and thereby abandoned its trademarks where it allowed plaintiff Freecycle Sunnyvale--a member group--the ability to use the trademark but did not retain express contractual control over member's quality control measures, did not have actual controls over member's quality control measures, and unreasonably relied on member's quality control measures.
In Research Corp. Technologies, Inc. v. Microsoft Corp., Case No. 2010-1037, the Federal Circuit reversed the district court's finding that certain claims of two asserted patents were invalid under 35 U.S.C. § 101 because they claimed patent ineligible subject matter. The Federal Circuit emphasized the broad language of § 101 and discussed the Bilski decision's emphasis on the importance of interpreting § 101 broadly. In this case, the patents claimed a process for rendering a halftone image, which is a functional application that addresses a need in the art, and the process requires film, printers, memory, and display devices. Thus, the claimed subject matter falls under the broad category of § 101, which states that any new and useful process or any improvement thereof qualifies as patentable subject matter under § 101. Additionally, the claims are still patentable under § 101 even though some of the claims incorporate well-known algorithms and formulas, because these algorithms and formulas are only part of each claim, and none of the claims as a whole seeks to patent the algorithms and formulas.
The Federal Circuit affirmed the district court's finding that certain asserted claims of a third patent are broader than the invention disclosed in the applications to which the third patent claims priority. Thus, the asserted claims are not entitled to the earlier filing date of the priority applications. The priority applications repeatedly discussed the "present invention" as a blue noise mask and recited a blue noise mask in their claims. The figures in the priority applications only illustrated various aspects of a blue noise mask. Furthermore, the inventors' testimony confirmed that the applicants were only in possession of a blue noise mask when the priority applications were filed. Therefore, the district court was correct in finding that the asserted claims of the third patent, which claimed inventions that only substantially included blue noise masks, are broader than the invention disclosed in the priority applications and are not entitled to the earlier filing dates.
In ERBE Elektromedizin GMBH v. Canady Technology LLC., Case No. 2008-1425, the Federal Circuit affirmed the Eastern District of Pennsylvania's grant of summary judgment of non-infringement of ERBE's trademark of the color blue for an endoscopic surgery probe, because the mark was functional. The Federal Circuit also affirmed the district court's application of prosecution disclaimer, which overrode ERBE's claim differentiation arguments.
ERBE only sought to register the color blue for probes used in endoscopic surgery on the supplemental register. Therefore, ERBE did not have a presumption of validity in the mark and had the burden of proving it owned a valid mark. Canady sold a similar endoscopic surgery device with a blue probe and ERBE sued Canady for trademark infringement. The district court granted summary judgment for non-infringement to Canady holding the mark functional and therefore invalid (and also lacking secondary meaning).
On appeal, ERBE argued a genuine issue of material fact existed regarding whether the mark is functional. Specifically, ERBE asserted that the evidence demonstrated that many other colors are equally visible against human tissue and are available for selection. For support, ERBE offered the declaration of the Managing Director Christian Erbe stating that "[b]lue is one of the many colors available for APC probes. Any color, other than beige or red, would be clearly visible during endoscopic procedures."
The Federal Circuit affirmed the finding that no genuine issue of material fact existed regarding whether the mark was functional. The Federal Circuit noted that color may not be granted trademark protection if the color performs a utilitarian function in connection with the goods it identifies or there are specific competitive advantages for use. The Federal Circuit further noted that the evidence in the record demonstrated that the color blue is prevalent in the medical field, the color enhances identification of the endoscopic tip, and several companies use blue endoscope probes. Finding no genuine issue of material fact, the Federal Circuit explained that "there is no evidentiary support that other colors are as visible through an endoscopic camera as the color blue other than a conclusory, self-serving statement by Mr. Erbe." Also, ERBE failed to establish a genuine issue of fact with respect to secondary meaning.
In In Re Vistaprint Limited, Case No. 2010-M954, the Federal Circuit denied defendant Vistaprint's petition for a writ of mandamus. Vistaprint was seeking to vacate a decision by the U.S. District Court for the Eastern District of Texas denying transfer.
Pursuant to 28 U.S.C. § 1404(a), a trial court has broad discretion to transfer a case to a more convenient venue. To determine whether Vistaprint's proposed venue was more convenient, the trial court applied the public and private factors used in a forum non conveniens analysis. The district court weighed the considerations of convenience in favor of transfer, but concluded that judicial economy outweighed these factors.
The Federal Circuit assessed the district court's decision to determine if there was abuse of discretion and determined that the trial court had properly balanced judicial economy against the factors of convenience.
In Vistaprint's proposed venue, Massachusetts, there were employees who may serve as witnesses and documents that may be used as evidence. But the trial court had become familiar with the patent at issue and the underlying technology. There was also co-pending litigation in the same court involving the same patent and technology. Thus, there was substantial justification for maintaining the suit in the Eastern District of Texas.
In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Case No. 2008-1403, the Federal Circuit again reversed the district court's grant of summary judgment of invalidity on Prometheus's asserted method claims.
Prometheus's claims at issue were methods for determining the optimal dosage of drugs to treat autoimmune diseases. The relevant portion of Prometheus's method claims included a step determining the levels of the drugs metabolites in the patient's body and a step warning a physician of potentially toxic levels of the same metabolites. Prometheus sued Mayo after Mayo announced it would begin to use an internal test for the same metabolites. Mayo's test differed in that it used different levels to determine toxicity of the relevant drug metabolites.
The district court granted Mayo's motion for summary judgment of invalidity under 35 U.S.C. § 101, reasoning that Prometheus's claims were framed as treatment methods. In particular, the district court reasoned that the determination of metabolite levels was merely a data-gathering step in the claim that led to the final "warning" step of alerting a physician of potentially toxic levels. In addition, the district court held that Prometheus's claims covered a natural body process that the inventors did not actually "invent".
The Federal Circuit first dismissed the idea that the claims are treatment methods because alerting a physician is only one step or portion of the claim. Based on Bilski, the claim considered as a whole fits as "an application of a law of nature" as opposed to a claim of an unpatentable natural phenomenon. Further, while the machine-or-transformation test was not the exclusive test to determine invalidity post-Bilski, the Federal Circuit reasoned that it was still highly relevant. In this case, the Federal Circuit reasoned that the transformation was present within the human body and its components following the administration or determination of a specific class of drugs.
In Akamai Technologies, Inc. v. Limelight Networks, Inc., Case No. 2009-1372, the Federal Circuit affirmed the district court's grant of the defendant Limelight's motion for JMOL of noninfringement of method claims reciting steps performed by different actors.
The patent owner asserted method claims requiring "for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain." It was not disputed that Limelight did not itself perform this step of the asserted claims, and that the tagging step above was performed by Akamai's customers, the content providers. The separation of these steps was expressly laid out in Limelight's customer contracts.
Akamai urged joint infringement by arguing that Limelight directed or controlled the step performed by content providers because, among other things, Limelight provided step-by-step instructions, provided technical assistance, and contractually required providers to perform the steps. Akamai cited BMC Resources for the proposition that "a party cannot avoid infringement simply by contracting out steps of a patented process to another entity."
In affirming noninfringement, the court noted that implicit in its prior holdings in Muniauction and BMC Resources, that "the performance of a method step may be attributed to an accused infringer when the relationship between the accused infringer and another party performing a method step is that of principal and agent, applying generally accepted principles of the law of agency as explicated by the Supreme Court and the Restatement of Agency." Thus, "for infringement to be found, both parties must consent that the agent is acting on the principal's behalf and subject to the principal's control."
The Federal Circuit held that "direction and control" was insufficient without attribution of acts to another. Likewise, a test based on benefits is improper because any contractual agreement includes benefits for each party. The Federal Circuit expressly held that "there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps."
Here, instructions, however explicit, did not create an agency relationship. The Federal Circuit noted that the contract here did not obligate content providers to use Limelight's service, but that if the provider chose to use Limelight's service, certain steps had to be performed by content providers first for which Limelight was "merely providing the customers with the tools" to exercise independent discretion and control. The Federal Circuit further noted that proper drafting can typically overcome a joint infringement problem, as had been done by the claims asserted in the other patents of the case.
In WiAV Solutions LLC v. Motorola, Inc., Case No. 2010-1266, the Federal Circuit reversed the district court's holding that WiAV lacked constitutional standing to sue the defendants for patent infringement because several third parties have a limited right to license the patents in WiAV's exclusive field of use.
WiAV obtained the exclusive right to (1) make, use, offer to sell, export, and import hardware products in the wireless handset field of use; (2) assign and sublicense its rights in the licensed patents; and (3) sue third parties for infringement of the licensed patents in the wireless handset field of use. However, six third parties previously obtained licensing rights to the same patents limiting their right to grant sublicenses to fields of use outside of WiAV's or to affiliates and subsidiaries of the third parties.
WiAV sued defendants for infringing the licensed patents, but the district court granted the defendants' motion to dismiss for lack of standing. Finding that third parties retained a right to sublicense the patents in the field of use, the district court concluded that WiAV is not an exclusive licensee and therefore lacked standing. The district court held that a party cannot be an exclusive licensee of patent if others have the right to grant sublicenses under the patent.
On appeal, the Federal Circuit reversed the district court's holding and explained there is no bright-line rule that a party cannot be an exclusive licensee of a patent if others have the right to license the patent. The Federal Circuit noted that to be an exclusive licensee, a party need not be the only party with the right to license the patent. Rather, a licensee is an exclusive one if it holds any of the exclusionary rights that accompany a patent. The Federal Circuit reasoned that an exclusive licensee may have standing to sue some parties and not others depending on the scope of its exclusionary rights. Here, there is no evidence that the defendants are affiliates or subsidiaries of the third parties eligible to obtain a sublicense in WiAV's field of use. As such, the Federal Circuit concluded that WiAV established standing by showing it has the right under the licensed patents to exclude the defendants from engaging in infringing activity and is harmed by their alleged conduct.