You Don’t Have a Right to Use a Photograph Just Because its of You

Xposure Photos (UK) Ltd. sued Khloe Kardashian for posting a Manual Munoz photo of Kardashian to her Instagram account. While the complaint The Photograph is highly creative, distinctive, and valuable, a substantial part of the vault is the subject: defendant.

One would expect that the litigation will be setlled, but it is still a good reminder that you can’t post images merely because you want to.

 

Visual Artists Rights Act Review

In 1990 Congress added the Visual Artists Rights Act to the Copyright Law as new Section 106A.  Section 106A provides:

106A Rights of certain authors to attribution and integrity

(a) Rights of Attribution and Integrity.—Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art—

   (1)shall have the right—

      (A) to claim authorship of that work, and
      (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create;
   (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and

   (3)subject to the limitations set forth in section 113(d), shall have the right—

      (A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and
      (B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

(b) Scope and Exercise of Rights.— Only the author of a work of visual art has the rights conferred by subsection (a) in that work, whether or not the author is the copyright owner. The authors of a joint work of visual art are coowners of the rights conferred by subsection (a) in that work.

(c) Exceptions.—

   (1) The modification of a work of visual art which is a result of the passage of time or the inherent nature of the materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A).
   (2) The modification of a work of visual art which is the result of conservation, or of the public presentation, including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification described in subsection (a)(3) unless the modification is caused by gross negligence.
   (3) The rights described in paragraphs (1) and (2) of subsection (a) shall not apply to any reproduction, depiction, portrayal, or other use of a work in, upon, or in any connection with any item described in subparagraph (A) or (B) of the definition of “work of visual art” in section 101, and any such reproduction, depiction, portrayal, or other use of a work is not a destruction, distortion, mutilation, or other modification described in paragraph (3) of subsection (a).

(d) Duration of Rights.—

   (1) With respect to works of visual art created on or after the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, the rights conferred by subsection (a) shall endure for a term consisting of the life of the author.
   (2) With respect to works of visual art created before the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, but title to which has not, as of such effective date, been transferred from the author, the rights conferred by subsection (a) shall be coextensive with, and shall expire at the same time as, the rights conferred by section 106.
   (3) In the case of a joint work prepared by two or more authors, the rights conferred by subsection (a) shall endure for a term consisting of the life of the last surviving author.
   (4) All terms of the rights conferred by subsection (a) run to the end of the calendar year in which they would otherwise expire.

(e)Transfer and Waiver.—

   (1) The rights conferred by subsection (a) may not be transferred, but those rights may be waived if the author expressly agrees to such waiver in a written instrument signed by the author. Such instrument shall specifically identify the work, and uses of that work, to which the waiver applies, and the waiver shall apply only to the work and uses so identified. In the case of a joint work prepared by two or more authors, a waiver of rights under this paragraph made by one such author waives such rights for all such authors.
   (2) Ownership of the rights conferred by subsection (a) with respect to a work of visual art is distinct from ownership of any copy of that work, or of a copyright or any exclusive right under a copyright in that work. Transfer of ownership of any copy of a work of visual art, or of a copyright or any exclusive right under a copyright, shall not constitute a waiver of the rights conferred by subsection (a). Except as may otherwise be agreed by the author in a written instrument signed by the author, a waiver of the rights conferred by subsection (a) with respect to a work of visual art shall not constitute a transfer of ownership of any copy of that work, or of ownership of a copyright or of any exclusive right under a copyright in that work.
A work of Visual Art to which Section 106A applies is defined as:
   (1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or
(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.
A work of visual art does not include—
(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication;
(ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container;
(iii) any portion or part of any item described in clause (i) or (ii);
(B) any work made for hire; or
(C) any work not subject to copyright protection under this title.
While it seems hard to quibble with the idea of protecting the integrity of artistic works, the VARA (and it should be noted similar state laws) seem to punish those who are foolish enough to allow their property to be the canvas.  Perhaps for this reason many of the VARA decisions seem to stretch the law to avoid what the court might perceive as an unjust result.
In Carter v. Helmsley-Spear, Inc., 71 F.3d 77 (2nd. Cir. 1995), the Second Circuit’s determination that a very large “walk-through sculpture” occupying most, but not all, of the building’s lobby was a work-made-for-hire that saved the building owner from liability under VARA. In the words of the district court:
The artwork consists of a variety of sculptural elements constructed from recycled materials, much of it metal, affixed to the walls and ceiling, and a vast mosaic made from pieces of recycled glass embedded in the floor and walls. Elements of the work include a giant hand fashioned from an old school bus, a face made of automobile parts, and a number of interactive components. These assorted elements make up a theme relating to environmental concerns and the significance of recycling.
In Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006), the First Circuit’s determination VARA does not include site-specific art (art that is integrated into a site) allowed a park to be redesigned without VARA liability.
In Chapman Kelley v. Chicago Park District, 635 F.3d 290 (7th Cir. 2011), the Seventh Circuit’s questionable determination that Kelley’s Wildflower Works was not protected by copyright because it was not fixed in a tangible medium, allowed the City to reconfigure Kelley’s oval flower beds into smaller, rectangular beds, and change some of the flowers, without liability under VARA.
In Pavia v. 1120 Avenue of the Americas Associates, 960 F.Supp. 620 (S.D.N.Y. 2003), the district court held that VARA applied to a sculpture created before its enactment, but not to alleged acts of mutilation that occurred before enactment.  Thus the district court dismissed Philip Pavia’s VARA claims resulting from defendants movement of his “The Ides of March” sculpture from a Hilton Hotel Lobby to a warehouse.
In Pollara v. Seymour, 344 F.3d 265 (2nd Cir. 2003) the Second Circuit’s determination that a hand-painted banner was not a work of visual art, saved a city employee from liability under VARA for removing the banner, which was installed at public plaza without a permit.
In Massachusetts Museum of Contemporary Art Foundation, Inc. v. Buchel, 593 F.3d 38 [93 U.S.P.Q.2d 1632] (1st Cir. 2010), although the First Circuit found that VARA applied to unfinished art, its determination that neither partially covering the unfinished work with tarpaulins nor displaying the unfinished work in its entirety violated VARA.
In Martin v. City of Indianapolis, 982 F.Supp. 625 (S.D.Ind. 2007), the district court granted summary judgment to Jan Martin for the city of Indianapolis’ destruction of his Symphony # 1 sculpture after his offers to donate and move the sculpture to another site for a cost of $8000.
In Scott v. Dixon, 309 F.Supp.2d 395 (E.D.N.Y. 2004), the district court found that Scott’s sculpture of a swan that the Dixons asked Scott to build in their backyard, was not a work of sufficient stature to merit protection under VARA, even though some of her other works may have attained that stature.
In Hunter v. Squirrel Hill Associates, L.P., 413 F.Supp.2d 517 (E.D.Pa. 2005), the district court found that the VARA action brought by the painter of a mural damaged by water leakage against a roof repairer was time-barred.
In Flack v. Friends of Queen Catherine Inc., 139 F.Supp.2d 526 (S.D.N.Y. 2001), Audrey Flack, an artist commissioned to create a statute of Queen Catherine of Braganza, namesake of the borough of Queens in New York City, sued Friends of Queen Catherine, Inc. the non-profit organization managing the project.  Flack sculpture of the head of the statue was left outside and was damaged, and rather than paying Flack to resculpt the face, one of her assistants was hired to do the work, so the statute could be completed. The district court rejected the claim that leaving the model outside violated VARA because damage from the passage of time or the inherent nature of the materials is excluded.  The court also rejected that the repair of the model violated VARA because conservation is also excluded.
In Board of Managers of Soho International Arts Condominium v. City of New York, 2003 WL 21403333 (S.D.N.Y. June 17, 2003) the district court denied the parties cross motions for summary judgment, noting that plaintiff failed to establish the sculpture was not removable from the building (and thus not protected under VARA), and defendant failed to established that it was removable (and thus entitled to limited production under VARA).  See Board of Managers of Soho Intern. Arts Condominium v. City of New York, 2005 WL 1153752, 75 U.S.P.Q.2d 1025 (S.D.N.Y. 2005).
In Cohen v. G & M Realty LP, 988 F.Supp.2d 212 (E.D.N.Y. 2003), the district court denied a preliminary injunction against the demolition of the buildings on which plaintiff’s aerosol artwork were created.

In Kleinman v. City of San Marcos, 597 F.3d 323 (5th Cir. 2010), the Fifth Circuit determined that a car-planter did not qualify as a “work of visual art” under the VARA, and thus was subject to regulation by the city.

 In English v. BFC&R East 11th Street LLC, [97 Civ. 7446(HB)] 1997 WL 746444 (S.D.N.Y. 1997), the district court denied artist’s motion for preliminary injunction and granted the developer’s motion for summary judgment, finding that the murals were placed illegally on the property, and thus not entitled to protection under VARA.
In Leicester v. Warner Bros., 232 F.3d 1212 [57 U.S.P.Q.2d 1001] (9th Cir. 2010), the Ninth Circuit determined that artist Andrew Leicesters contributions to the design of the streetscape around the 801 Tower in Los Angeles (featured in Batman Forever) became part of a unitary architectural work, and was not entitled to separate protection under VARA.
In Cheffins v. Stewart, 825 F.3d 588 [119 U.S.P.Q.2d 1094] (9th Cir. 2016), the Ninth Circuit affirmed the determination that a mobile replica of 16th-century Spanish galleon, built from used school bus, was a work of applied art, and thus not protect by VARA, when it was burned by the owner of the land on which it was stored, so that the bus could be sold as scrap.
 In Cort v. St. Paul Fire and Marine Ins. Companies, Inc., 311 F.3d 979 (9th Cir. 2002), the Ninth Circuit held that claims under VARA for covering over artist Jesus “Chuy” Campusano’s Lilli Ann mural did not constitute advertising injury covered by defendant’s commerical insurance policies.
In Hanrahan v. Ramirez, [2:97–CV–7470 RAP RC] 1998 WL 34369997 (C.D. Cal. 1998), Artist Mary B. Hanrahan won default judgment against the lessees of Avenue Liquor Store in West Ventura that painted over her mural.

In Whalen v. United Food and Commercial Workers Local 135, [14–CV–3017 W(BLM)] 2015 WL 4659213 (S.D. Cal. 2015), the district court granted and part and denied in part defendant’s motion to dismiss, finding that artists John and Jeanne Whalen did state a cause of action under VARA for the Union’s painting over their mural “Providing The Feast,” located on the Union’s wall.  SeeWhalen v. United Food and Commercial Workers Local 135, 2016 WL 2866875 (S.D.Cal. 2016)

In Kammeyer v. United States Army Corps of Engineers, [15–869 JGB (KKx)] 2015 WL 12765463 (C.D.Cal. 2015) the court granted the Corps’ motion to dismiss artist Ronald Kammeyer’s VARA lawsuit to stop the Corps from Bicentennial Freedom Mural in Corona, California, but allowed Kammeyer to refile.  See, also, Kammeyer v. United States Army Corps of Engineers, [15–869 JGB (KKx)] 2015 WL 12791408 (C.D.Cal. June 3, 2015) 
In Jackson v. Curators of the University of Missouri, [11–4023–CV–C–MJW] 2011 WL 5838432 (W.D. Mo. November 21, 2011), the district court denied the University’s motion to dismiss artist Paul Jackson’s VARA claims for mistreatment of his Tiger Spot mosaic installed on campus.
In Romero v. California Department of Transportation, [ 08–8047 PSG (FFMx)] 2009 WL 650629 (C.D.Cal. March 12, 2009), the district court granted CalDOT’s motion to dismiss Frank Romero’s VARA claim for painting over his “Going to the Olympics” mural rather than cleaning the graffiti from it.

Fair Use is Not Always Fair

Photographer TC Reiner sued Watkins Institute and one of its students Ryon Nishimori for copyright infringement when Nishimori incorporated one of Reiner’s copyrighted photographs into a mock advertisement for a classroom assignment, and saved his work on Flickr, along the way removing Reiner’s copyright notice to improve the appearance of the mock advertisement and giving rise to a DMCA claim as well.

Fortunately for the school and the student, the court granted summary judgment that the uses were a fair use under 17 U.S.C. §107.  The Court examined each of the four factors enumerated in the statute:

In evaluating the first factor, the Court considered whether the new work is transformative, and whether the use of that work is for commercial or noncommercial purposes.” The Federal Circuit agreed that Watkins gave the photograph to the students so that the students could learn to create a mock advertisement, not so the students would benefit merely from absorbing the content of the photograph itself. This is a nonprofit educational purpose.

In evaluating the second factor, the nature of the copyrighted work weighs slightly against finding fair use. Courts consider two aspects of the work in evaluating this factor: first, the extent to which it is a creative work enjoying broader copyright protection as opposed to a factual work requiring broader dissemination, and second, whether it is unpublished, in which case the right of first publication is implicated.

In evaluating the third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole also weighs against finding fair use because defendants used Reiner’s entire photograph.

In evaluating the fourth factor, the court said that the burden of proof as to the market effect rests with the Reiner where the challenged use is of a noncommercial educational nature.  The court found a complete absence of proof of any impact on the market for the work.

After weighing all the factors in the light consistent with the purpose of the fair use doctrine, the Court conclude that the school’s educational use of the photograph was fair use.  The court made a similar conclusion with respect to Nishimori’s uses.  Finally, the court found that a DMCA requires knowing or having reasonable grounds to know that removal of Reiner’s copyright notice will induce, enable, facilitate, or conceal an infringement of the federal copyright laws.  The Court said it was undisputed the Nishimori did not know or have reasonable grounds to know that removing Reiner’s name, the name of the photograph, or the copyright tracking number, would induce, enable, facilitate, infringement, and thus did not violate 17 U.S.C. §1202(b)(1).

In the end, the fair use exception of 17 U.S.C. §107 protected the school and its student from liability for using a copyrighted photograph in an academic assignment, but it did not save them from just over two years of litigation, and the accompanying costs.  Just because a use qualifies as a fair use, does mean you are going to be treated fairly.

 

 

 

Just Because You Own a Copy Doesn’t Mean You Own the Copyright

The Estate of Vivian Maier has sued Jeffrey Goldstein and his company Vivian Maier Prints, Inc. for copyright infringement.  Vivian Maier was an American street photographer, who worked for about forty years as a nanny in Chicago’s North Shore, while pursuing photography during her spare time.  Chicago art collector Jeffrey Goldstein accumulated a significant quantity of Maier’s work, includign 17,500 negatives, 2,000 prints, 30 homemade movies, and numerous slides.  Before selling his collection in 2014, Goldstein formed Vivian Maier Prints, Inc., to sell prints.

On April 20, 2017, the Estate of Vivian Maier sued Goldstein for “copyright infringement, trademark infringement, false designation of
origin, unfair competition, unfair trade practices, and cybersquatting under the Copyright Act, 17 U.S.C. §§101 et seq., the Lanham Act, 15 U.S.C. §§1051 et seq., and the laws of the State of Illinois, based on, among other acts, Defendants’ unlawful copying, distribution, sale, and public exhibition of the Estate’s copyrighted works, Defendants’ use of the Estate’s registered mark VIVIAN MAIER, and Defendants’ false portrayal of their activities as officially endorsed or connected with Vivian Maier or her estate.”

Goldstein may or may not have been aware of 17 USC §102, whihc provides:

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

This statute, which on some levels is intuitive, often leads to some surprising results.  Most of use understand and accept that buying a book doesn’t give the purchase the right to make a movie based upon the purchased  book.  However, it is less intuitive that the purchaser of a painting cannot hang the picture in a public place (because of the public display right), or the purchaser of a movie on DVD cannot show the movie in public (private showing is not prohibited, and is impliedly licensed in any event).  Does he owner of negatives get to make prints of the negatives — the only real use for them?  That would be making a copy of the image, and is arguably an infringement.

Given that Goldstein sold his collection nearly three years ago, and the copyright statute has just a three year statute of limitations, what does the  Estate hope to accomplish with the filing?  Well among other things, it may be a grab for whatever Maier materials Goldstein still has:

Perhaps getting back the materials that Goldstein accumulated is the ultimate goal.  The separation of copyright from the physical work works both ways: while the owner of the physical image can’t exploit the image without access to the copyright rights, the owner of the copyright rights in an image can’t exploit that copyright without access to the physical image.

The Estate also complains about Goldstein using the name Vivian Maier in selling prints of Vivian Maier’s photographs.  The Estate obtained an assignment of Supplemental Registration No. 4057824 on VIVIAN MAIER from another collector of Vivian Maier images, John Maloof, and on March 29, 2017, applied for another registration on VIVIAN MAIER (Application No. 4057824).  Is is really infringement of the Estate’s right to call a VIVIAN MAIER print a VIVIAN MAIER print?

 

Two Heads May Be Better Than One, But Six Heads Won’t Help You Market Your Bar

Monte Thrasher brought a VARA complaint against Marci Siegel and Co-Op 28 for painting over his “Six Heads” mural in the Los Feliz neighborhood of Los Angeles:

so that a mural of Charles Bukowski, a noted poet and tragic alcoholic, could be painted, apparently to promote a bar to be known as “Bukowski’s:

The case, Thrasher v. Siegel, 2:17-cv-03047 is pending in the Central District of California.

There are some other notable applications of Visual Artists Rights Act (VARA), of which the property owners need to be aware.  Permitting artwork to be placed on property without the proper planning, can interfere with subsequent alterations to the building.

In Henderson v. Ziman, (2:14-cv-03042-SJO-AS) (C.D. California), artist Victor Henderson sued for damages for the destruction of the mural “Brooks Avenue Painting” that he helped paint in 1969:

His complaints were apparent resolved, and the case was dismissed about four months after filing.

In Cohen v. Wolkoff, 13-CV-05612 (FB) (E.D.N.Y) Wolkoff and four corporations owned a group of commercial buildings that over the years were “decorated” by many self-proclaimed aerosol artists.  To control this problem, Cohen approached Wolkoff and offered to become the curator of any future works that would be permitted to be painted on the walls.  Although the agreement’s precise terms remain disputed, Wolkoff orally agreed to this general bargain.  Under Cohen’s guidance, the quality of the aerosol art vastly improved, and the site became known as 5Pointz and evolved into a mecca for high-end works by internationally recognized aerosol artists:

Defendants decided to raze the buildings that were the canvas for the 5Pointz project in order to build two new condominium towers. While the plaintiffs were denied a preliminary injunction, the Court recently ruled on cross motions for Summary Judgment, and plaintiff’s claim for damages for the destruction of their art will go to trial.

 

Transformative Use or Infringement

In Cariou v. Prince, 714 F3d 694 [106 USPQ2d 1497] (2d Cir. 2013), the Second Circuit said that a use of a copyrighted work need not comment on the original artist or work, or on popular culture, in order to constitute “transformative” use that qualifies for fair-use defense.  All that is needed to qualify as a fair use, is that the new work alters the original with “new expression, meaning, or message.  Thus the Second Circuit reversed the district court judgment that Cariou’s photograph (left) was infringed by Prince’s “transformative” image (right).

Apparently intent on testing the lower limits of “transformation,” Richard Prince has continued with his appropriation style of artistry, and has been sued by two other photographers:

In Graham v. Prince et al, [1:15-cv-10160-SHS ] filed in the Southern District of New York on December 30, 2015, Graham complained about the reproduction of his photograph with a instragram-style border:

In Morris v. Prince et al., [2:16-cv-03924-RGK-PJW ] filed in the Central District of California on June 3, 2016, photograph Dennis Morris complained about the appropriation of a portrait he published in a book by Richard Prince:

In Salazar v. Prince et al., [2:16-cv-04282-MWF-FFM] filed in the Central District of California on June 15, 2016, model/makeup artist Ashley Salazar complained about the appropriation of a selfie she posted on instagram by Richard Prince:

In McNatt v. Prince et al, [1:16-cv-08896-SHS] filed in the Southern District of New York on November 16, 2016, McNatt complained about the reproduction of his photograph with a instragram-style border:

It hard to imagine that using almost an entire image and “framing” it with a few comments and graphics is “transformative,”  and we will have to wait to see what the courts say.  The Morris and Salazar cases have been dismissed by stipulation, the Graham and McNatt are still pending.

One wonders what upsets these plaintiff’s more, the fact that virtually their entire work is appropriated by someone, or the fact that that someone sells these “transformations” for as much as $100,000!

 

“Begun, the Clone War Has”

Hot on the “heels” of the Supreme Court’s decision in Star Athletica, LLC v. Varsity Brands, Inc., (2:17-cv-02523PUMA SE has sued Forever 21 in the Central District of California (or among other things, copyright infringement in making a product simulating  Puma’s CREEPER, FUR SLIDE, and BOW SLIDE sneakers.

Puma asserts its U.S. Patent No. D774,288 on the CREEPER sneaker:

Puma also asserts its trade dress rights in the CREEPER, as well as in the FUR SLIDE:

and the BOW SLIDE:

And last but not least, citing Start Athletica, Puma asserts copyrights in all three styles:

The asserted expansion of copyright protection to such such designs seems to be the exact thing that Justice Breyer was concerned about in his dissent in Star Athletica.  Are fuzzy flip flops really something worthy of a century or more of protection? Should competitors have to risk substantial awards of statutory damages and attorneys fees, as well as possible criminal penalties to satisfy consumer demand for a product.  As Justice Breyer said (quoting Thomas Jefferson), sometimes costs can outweigh the benefit even of limited monopoly.  Or, more ominously, as Yoda once said, “Begun, the clone wars has.”

 

 

 

 

Soft Kitty, Warm Kitty, Little Furry Plaintiff . . .

In Chase v. Warner Bros. Enetertainment, Inc., 1:15-cv-10063-NRB (March 27, 2017), Judge Buchwald of the Southern District of New York, granted Warner Bros. motion to dismiss a copyright infringement suit brought by the daughters and heirs of  Edith Newlin, author of the lyrics to Warm Kitty.  Plaintiff’s charged that the song Soft Kitty, popularized by The Big Bang Theory, infringed the copyright in Warm Kitty.

Unfortunately for plaintiff’s they could not prove ownership of the copyright.  While the song was published in an song book that was copyrighted, and the copyright in the collection was renewed, neither the author nor her successors renewed the copyright in the individual song, so their rights lapsed.

Plaintiffs were the victims of the complexities of the 1909 Copyright Act, which are still being felt more than 100 years later.  At least they have a nice, public domain song to comfort them.

Two Bits, Four Bits, Six Bits, a Dollar, Cheer Uniforms are Copyrightable, Stand Up and Holler!

In Star Athletica, LLC v. Varsity Brands, Inc., (March 22, 2017), the Supreme Court affirmed the Sixth Circuit that the two dimensional designs appearing on the surface of Varsity’s cheerleader uniforms were copyrightable.

The Supreme Court granted certiorari to resolve widespread disagreement over the proper test for implementing 17 USC §101’s separate-identification and independent-existence requirements.  The Court held that a feature incorporated into the design of a useful article like an article of clothing is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.

The Supreme Court noted that the Copyright Act establishes a special rule for copyrighting a pictorial, graphic, or sculptural work incorporated into a “useful article,” which is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  The design of a useful article is considered a pictorial, graphical, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

The Supreme Court said that this so-called separability test applied to the designs at issue because they were incorporated into the design of a useful article.  Applying the separability test the Supreme Court said that the first requirement — that the design can be identified separately from the utilitarian article — is not onerous one need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic,or sculptural qualities.

The Court said that second requirement — capable of existing independently of the utilitarian article — is more difficult to satisfy; the decision maker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.  In other words, the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101 once it is imagined apart from the useful article.  This means the feature cannot itself be a useful article or an article that is normally a part of a useful article.

In the view of the Court, the ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.

The Court said that applying the separability test to the surface decorations on Varsity’s cheerleading uniforms is straightforward. First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as two-dimensional works of art.

The Court cautioned that the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. The Court said that even if Varsity ultimately succeed in establishing a valid copyright in the surface decorations at issue here, it had no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.

 

All Trade Secrets Must Be Secret; But Not All Secrets are Trade Secrets

A pair of recent illustrate two important interrelated points about trade secret law: First, all trade secrets must be secret. Second, and less obvious, not all secrets are trade secrets.

In Hawg Tools, LLC v. Newsco International Energy Services, Inc., [2016COA176M] (Colo. App. December 1, 2016), the Colorado Court of Appeals reversed the trial court award of $1.3 million for misappropriation of trade secrets relating to sealed bearing packs for mud motors used in drilling, because “the evidence
did not prove that the design of the sealed bearing pack in question was a secret.”

As the Colorado Court of Appeals noted, the subject of a trade secret must be secret, and must not be of public knowledge or of a general knowledge in the trade or business.  While the jury found, at least implicitly, that the sealed bearing pack design was secret, the Court of Appeals review of the record revealed that no reasonable person would conclude that any evidence, or any reasonable inference arising therefrom, was presented on which the jury’s verdict against defendants could be sustained.

The Court found ample evidence to establish that the two desings were essentially the same, but it did not find sufficient evidence to distinguish plaintiff’s design its from other designs that were publicly available at the same time. In other words, the evidence in the record showed that the design of plaintiff’s sealed bearing pack was “of public knowledge or of a general knowledge” in the mud motor manufacturing business.

The $1.3 million verdict could not be sustained because the trade secret was not in fact a secret.

Part II of the less comes from the jury verdict in in Zenimax Media Inc. v. Oculus VR LLC, in the Northern District of Texas.  There, the jury rejected plaintiff’s trade secret misappropriation claims:

However, on the breach of the non-disclosure agreement, the jury found for plaintiff:

The jury found that Oculus as a successor to the agreement, and responsible for damages for its breach, and awarded $200,000,000.00 in damages:

One cannot and should rely exclusively on trade secret protection under state, and now federal law — not all secrets are trade secrets, i.e., not all secrets meet the definition of trade secret under state and federal law.  However, these “non-trade secret” secrets can have substantial value.  A good non-disclosure agreement remains an essential business tool.