Showing posts with label functionality. Show all posts
Showing posts with label functionality. Show all posts

Friday, February 6, 2015

Katy Perry Dubiously Claims to Own Copyright in Shark Costume from the Superbowl Halftime Show

During singer Katy Perry's performance at the halftime show at the 2015 Superbowl, a variety of amusing costumes depicting sharks and palm trees were used.  It is unclear who specifically designed these particular costumes.  Katy Perry has reportedly utilized Jeremy Scott as her costume designer.

Greenberg then fired off a formal cease and desist letter to, which had offered to sell shark figures that were based upon Katy Perry's costume design:

So let's scrutinize Katy's copyright claim a bit more...does U.S. intellectual property law really protect this shark costume?

Potentially, no.  The costume itself may very well be a "useful article" under U.S. Copyright law, and not protectable in the abstract, since its ornamental elements are not clearly "separable" from it.  Copyright protection is generally not available to articles which have a utilitarian function.

Under the Copyright Act, the only copyright protection available to these items is for "features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."  Unfortunately for Ms. Perry, this test is inherently ambiguous when deciding the scope of copyright protection for certain useful articles, such as shark costumes.

Some distinctions are clear.  For instance, a painting on the side of a truck is protectable under copyright law even though the truck is a useful article. The painting is clearly separable from the utilitarian aspects of the truck.  The overall shape of the truck, on the other hand, would not be copyrightable since the shape is an essential part of the truck's utility.

Another commonly considered example is that of clothing.  The print found on the fabric of a skirt or jacket is copyrightable, since it exists separately from the utilitarian nature of the clothing. 

However, there is no copyright in the cut of the cloth, or the design of the skirt or jacket as a whole, since these articles are utilitarian.  This is true even of shark costumes; no copyright protection is granted to the costume as a whole.

That is because costumes, in addition to covering the body, serve a “decorative function,” so that the decorative elements of clothing are generally “intrinsic” to the overall function, rather than separable from it.  See Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452, 455 (2d Cir. 1989) (observing that garments' decorative elements are “particularly unlikely to meet [the] test” of conceptual separability); but see Chosun Int'l Inc. v. Chrisha Creations, Ltd., 413 F.3d 344 at 329 n. 3 (2nd Cir. 2005) (expressing skepticism that Halloween costumes that permit wearer “to masquerade” have a utilitarian function other than to portray appearance of article).

The idea for an upright “shark costume" is not an original copyrightable element, standing alone.  General character types are not protectable by copyright law.  See Hogan v. DC Comics, 48 F. Supp.2d 298, 310 (S.D.N.Y. 1999).

Further, as for a potential claim of "trade dress" or the tort of commercial "misappropriation," Ms. Perry would need to show that she is uniquely associated with this particular shark costume in consumers' minds.  While that is possible given the immense publicity and viewership that the Super Bowl halftime show receives, there are functionality issues there, as well.

Finally, below are photographs of a few similar shark costumes that appear to have been created and sold long before Katy Perry's costumes were created.  It is unknown if any of these designers successfully have claimed copyright or trade dress rights in their designs.  However, it would appear that the scope of Ms. Perry's intellectual  property rights, if any, would probably be quite narrow, if they exist at all:

Sunday, July 15, 2012

Partially Functional Product Designs Can Become a Trademark

Do you recognize this shape?

According to a recent decision issued by the U.S. Trademark Trial and Appeal Board (the "TTAB"), this rectangular shape is a valid trademark belonging to Hershey's for its iconic chocolate bars.
By Evan-Amos (Own work) [Public domain], via Wikimedia Commons
One key issue in such product configuration trademark cases is whether the design features sought to be protected as a trademark are primarily “functional."  If the overall design is functional, trademark protection is barred.  Primarily functional products can be protected by patents, but trademark law ends where functionality begins.

The TTAB held that while the individual rectangular shapes scored within the chocolate bar are functional (because they make it more convenient to easily divide the bar into equal pieces), the candy bar's overall design, when considered in its entirety, was not primarily functional.

Instead, the TTAB determined, based on the evidence presented that reflected a wide variety of shapes and designs used for chocolate bars, that the combination of rectangles with a raised border in Hershey's design is not primarily functional and, therefore, may be protected as a trademark.

The second issue that the TTAB considered was whether Hershey's product design had “acquired distinctiveness” in the marketplace for candy.

Product designs and configurations are not considered “inherently distinctive” as are many other types of trademarks. Therefore, in order to be protected as a trademark and registered on the Principal Register, Hershey's must demonstrate that relevant consumers considered the product design to be a source identifier. 

Evidence of distinctiveness can consist of consumer surveys, evidence as to the length of time a mark has been in continuous and substantially exclusive use, revenue of products bearing the trademark, advertising expenditures to promote goods bearing the mark, unsolicited media coverage, and evidence that the product configuration has been promoted in advertisements as a source indicator. 

Hershey's submitted all of these types of evidence to exceed its burden of proof. In addition, Hershey's also provided evidence that Williams-Sonoma attempted to copy the design of the candy bar to use as the shape of a brownie baking pan:

The TTAB ultimately found that the evidence demonstrated that the candy bar design had acquired distinctiveness and could be registered on the Principal Register as a trademark.

Do you recognize these other trademarked product designs?