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.

However, Katy Perry's lawyers at Greenberg Traurig have apparently claimed that she is the individual "owner" of all the intellectual property depicted or embodied in connection with the shark images and costumes portrayed and used in her Super Bowl 2015 half-time performance.

Greenberg then fired off a formal cease and desist letter to Shapeways.com, 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:

Opening Pandora's Box: Supreme Court Allows Archaic Copyright Infringement Cases to Proceed

This week, the U.S. Supreme Court opened Pandora's Box.

The decision that the Supreme Court may come to regret involved a copyright infringement lawsuit surrounding the script to the movie Raging Bull, which was released in 1980.  In the film, Oscar-award winning actor Robert DeNiro played boxer Jake LaMotta.  

An heir to the co-author of a 1963 screenplay about the life of the boxer apparently waited until 2009 to file a copyright lawsuit, claiming that the 1980 movie had copied portions of her father's screenplay without authorization.

The District Court in Los Angeles and the Ninth Circuit Court of Appeals applied the equitable doctrine of "estoppel by laches," borrowing the 3-year statute of limitations in the U.S. Copyright Act.  Those Courts both found that the writer's heir had deliberately waited to file suit, prejudicing MGM which had released the film thirty-four years ago.

However, on Monday, in an unusual 6-3 split not along ideological lines, Judge Ruth Bader Ginsburg wrote for the majority, finding that the significant delay will not bar the heir from seeking damages or an injunction on a rolling basis, going forward.

The majority reasoned that each time a new Raging Bull DVD is printed and sold, there is a new independent act of copyright infringement potentially violating the heir's copyrights. Every new DVD that is printed, every time the film is broadcast on television or the film is re-mastered or re-released, is effectively a new act of infringement subject to the 3-year window going forward, not backward.

The end result is that copyright disputes that originated thirty or forty years ago -- or even in the more distant past -- can be resurrected and instituted now.

Justices Stephen Breyer, Anthony Kennedy and Chief Justice Roberts dissented, holding that the precedent would upset settled doctrine, and open up years of litigation over old wounds.

70-year old Jimmy Page, Robert Plant and others in Led Zeppelin presumably agree with the dissent's point of view.

In 1971, Zeppelin released the now iconic "Stairway to Heaven."  According to some estimates, the song has earned at least $562 million since its release, a number poised to rise higher since Zeppelin is set to release new versions of its albums this summer.

Relying on Monday's Raging Bull decision from the U.S. Supreme Court, Time magazine reports that a new copyright infringement lawsuit has now been filed by representatives of the band Spirit, which released an instrumental song "Taurus" in 1968.  According to the newly-filed lawsuit, Zeppelin opened for Spirit in the late 1960's, and was inspired to write the now famous guitar introduction to Stairway.

Direct evidence of copying may nonetheless be difficult to gather.  Spirit's lead guitarist Randy California died in 1997 and documents showing copying, if any, were presumably lost to the mists of time.

Online Oscar "Replica" Seller in Texas Sued for Counterfeiting and Fraud

©A.M.P.A.S.®

The Hollywood Reporter describes a lawsuit filed yesterday against Jaime De La Rosa, a Texas individual who was selling fake Oscar statuettes online.

The Academy of Motion Picture Arts and Sciences (AMPAS) alleges that it first became aware of the existence of these "counterfeit replica" statuettes in November 2013, when it found an eBay listing for an "Academy Award Hollywood Metal Movie Acting Trophy Prop Replica" selling for $850.00.

AMPAS then contacted De La Rosa, who signed a sworn Declaration attesting that he had made seven statuettes, selling six and surrendering one to the Academy.

AMPAS now claims that it has identified four additional statuettes sold by De La Rosa on eBay and another sold by him on Etsy, making De La Rosa's Declaration seemingly false.

AMPAS has filed other lawsuits attempting to protect its intellectual property rights in the Oscar statuettes.  For example, AMPAS sued a chocolatier in North Hollywood who made chocolate figurines.

Officially named the Academy Award of Merit, the Oscar statuette is the most recognized trophy in the world, and has stood on the mantels of the greatest filmmakers in history since 1929.

Since the initial Academy Awards banquet began on May 16, 1929, 2,809 Oscar statuettes have been presented. Each January, additional new golden statuettes are cast, molded, polished and buffed by R.S. Owens & Company, the Chicago-based awards manufacturer retained by the Academy since 1982.  Oscar stands 13 1/2 inches tall and weighs in at 8 1/2 pounds.

On its website, AMPAS notes that the Academy, as the copyright owner of the Academy’s “Oscar” statuette, and owner of its trademarks and service marks, including “OSCAR®,” “OSCARS®,” “ACADEMY AWARD®,” “ACADEMY AWARDS®,” “OSCAR NIGHT®,” “A.M.P.A.S.®” and the federally registered “Oscar” design mark, is required to protect its properties against unauthorized uses and infringements.

Toy Company Sues Beastie Boys, Claiming Parody Protects Its Viral Ad

Screenshot from GoldieBlox's website

A progressively-themed company that makes and sells toys that will supposedly help young girls overcome gender stereotypes has become embroiled in a high-profile copyright litigation with the Beastie Boys.  Toy company GoldieBlox says on its website: 

"In a world where men largely outnumber women in science, technology, engineering and math...and girls lose interest in these subjects as early as age 8, GoldieBlox is determined to change the equation.  Construction toys develop an early interest in these subjects, but for over a hundred years, they've been considered "boys' toys".  By designing a construction toy from the female perspective, we aim to disrupt the pink aisle and inspire the future generation of female engineers."

In its recent viral video commercial touting the ingenuity of young girls who build an elaborate contraption that can change the television channel, GoldieBlox intentionally utilized the music and parodied the lyrics from the Beastie Boys' song Girls.

The Beastie Boys were apparently not pleased with GoldieBlox's unauthorized use and sent a cease and desist letter, alleging copyright infringement and demanding that GoldieBlox end its campaign.

Rather than complying with the demands, GoldieBlox countered by filing a Declaratory Judgment Complaint against the Beastie Boys in Los Angeles federal district court, asserting that its usage was parody and fully protected by the First Amendment.

Given the Beastie Boys' recent unhappy experience with copyright litigation, one suspects that GoldieBlox's executives were well aware that this dispute would erupt, and intentionally developed a strategy inducing litigation to fuel its viral campaign to garner "free" publicity.  Whether the gambit works or not is yet to be seen.

Legally, the controlling analysis here is the Supreme Court's decision in 1994 in Campbell v. Acuff-Rose Music, Inc., interpreting the "fair use" defense to musical parodies used in a commercial context.

In that case, the members of the rap music group 2 Live Crew had created a parody of Roy Orbison's iconic "Pretty Woman," called "Big Hairy Woman."  Roy Orbison's estate sued the rap group, alleging that the group's use was not fair or protected free speech, but was an unprotected commercial use.

After years of litigation, the Supreme Court ultimately held that 2 Live Crew's commercial parody may very well be a fair use within the meaning of § 107 of the U.S. Copyright Act, which states:

"In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—




(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;


(2) the nature of the copyrighted work;


(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work."

On appeal, the Supreme Court found the aforementioned four factors must each be applied to every situation on a case by case basis, and that the fact that the parody was used in a commercial context alone was not dispositive.

When looking at the purpose and character of 2 Live Crew's use, the Supreme Court found that the more transformative the new work, the less will be the significance of the other three factors.  The court found that, in any event, a work's commercial nature is only one element of the first factor enquiry into its purpose and character.

Justice Souter, writing for the majority of the Court, then moved onto the second § 107 factor, "the nature of the copyrighted work", finding it has little merit in resolving this and other parody cases, since the artistic value of parodies is often found in their ability to invariably copy popular works of the past.

The Court found the third factor integral to the analysis, finding that the Ninth Sixth Circuit Court of Appeals had erred in holding that, as a matter of law, 2 Live Crew copied "excessively" from the Orbison original.

Justice Souter reasoned that the "amount and substantiality" of the portion used by 2 Live Crew was reasonable in relation to the band's purpose in creating a parody of "Pretty Woman".

The majority reasoned "even if 2 Live Crew's copying of the original's first line of lyrics and characteristic opening bass riff may be said to go to the original's 'heart,' that heart is what most readily conjures up the song for parody, and it is the heart at which parody takes aim." 

The Supreme Court then looked to the new work as a whole, finding that 2 Live Crew thereafter departed markedly from the Orbison lyrics, producing otherwise distinctive music.

Looking at the final factor, the Supreme Court found that the Court of Appeals erred in finding a presumption or inference of market harm.

Parodies in general, the Court said, will rarely substitute for the original work, since the two works serve different market functions.

While Acuff-Rose found evidence of a potential "derivative" rap market in the very fact that 2 Live Crew recorded a rap parody of "Oh, Pretty Woman" and another rap group sought a license to record a rap derivative, the Supreme Court found no evidence that a potential rap market was harmed in any way by 2 Live Crew's parodic rap version.

In fact, the Supreme Court found that it was unlikely that any artist would find parody a lucrative derivative market, noting that artists "ask for criticism, but only want praise."

Applying this same analysis in the newly-filed Beastie Boys case, the courts will need to evaluate each of these same factors to determine if Goldiblox's usage was appropriate or improper.

In the meantime, the GoldieBlox commercial has gone viral, and received nearly 8 million views.

Jay-Z, Kanye West, Run D.M.C. and Others Sued for Past Sampling

Unauthorized "sampling" of catchy melodies used in modern music is heating up as a recurring legal issue.  

Several high-profile copyright cases have been filed in recent months against major performers, accusing them of taking a portion, or "sample," of one sound recording and reusing it as an instrument or a sound recording in a different song or piece, without authorization.

As discussed in detail on Wikipedia, sampling was originally developed by experimental musicians in the 1960's.  However, hip hop music was the first popular music genre based around the art of sampling - being born from 1970's DJs who experimented with manipulating vinyl on two turntables.

Sampling is now most often done today with a computer program. However, vinyl emulation software may also be used, and turntablists continue to sample using traditional methods.  The inclusion of sampling tools in modern digital production methods increasingly introduced sampling into many genres of popular music, as well as genres predating the invention of sampling, such as classical music, jazz and various forms of traditional music.

Several recent cases have been filed against established performers, premised on allegations that such activity constitutes a clear form of copyright infringement -- even when the alleged infringement occurred decades ago, and was only recently discovered.

It is likely that sophisticated software tools have allowed performers to go back and analyze musical catalogs to locate potential infringement that may have been harder to audibly detect with the "naked ear."

Jay-Z, Kanye West, Mark Wahlberg, Run D.M.C. and many others face a new copyright infringement lawsuit brought by Twilight Records and Syl-Zel Music which claim that the 1967 song "Different Strokes" that was performed and recorded by Syl Johnson was sampled without permission in a variety of derivative works in the 1990's.

According to the suit which was filed in federal district court in Chicago, Usher infringed upon the Different Strokes copyright with his 1993 song "Call Me a Mack," while Public Enemy allegedly made use of a copyrighted riff without authorization on multiple hit songs including Fight the Power.

Both Mark and Donnie Wahlberg are accused of sampling the same tunes on "The Last Song on Side B."  Run D.M.C. faces similar allegations for its songs "Naughty" and "Beats to the Rhyme."  All of the accused songs were released in the 1990's.

The Different Strokes melody has previously been the subject of similar litigation against more recent music performed by Jay-Z and Kanye West.  A lawsuit filed in 2011 had claimed that those performers improperly sampled the tune on their "Watch the Throne" album.  That suit was settled confidentially.

Putting aside the merits of the factual allegations, the latest cases may face an interesting legal problem.

The U.S. Copyright Act imposes a three year statute of limitations on civil copyright infringement claims from when the claim "accrued," barring a copyright owner from seeking damages for infringement that occurred in the past.

However, where alleged infringement is ongoing, federal courts have split on whether any bar applies, and whether the more flexible and equitable "estoppel by laches" defense should apply.

Furthermore, there is some dispute as to when the statute of limitations begins to run, given modern technology.  Usher's song "Call Me a Mack" was released in 1993, two decades ago.  However, the use of iTunes and cell tone ringtones have created a robust new marketplace for such a song.

The Ninth Circuit Court of Appeals, based in California, ruled in 2012 that an admitted 13-year delay in filing a copyright lawsuit after infringement had been discovered, barred all relief against the defendant.

Other courts have held that the doctrine does not apply in this context, because there is nothing in the text or legislative history of the U.S. Copyright Act that suggests that Congress ever intended for an equitable defense to apply.  It is unclear if the Supreme Court will resolve this split among the federal appeal courts on how to measure a purported delay.

Injunctions against further use of the song by these third parties could present a concern, but equally worrisome to these defendants is the fact that the copyright owner has sought an accounting for all past profits, as well as reimbursement of its' attorneys' fees.

When Does Copyright Law Cease Protecting a Fictional Character? (Part II)

A previous post discussed litigation related to the current status of Sir Arthur Conan Doyle's copyright claims to the fictional characters of Sherlock Holmes and Dr. Watson, given that several works had passed into the public domain as a matter of US copyright law.

Below is a further discussion about the power of US copyright law to protect fictional characters that have lapsed into the public domain, but which have been developed through subsequent film adaptations and through the creation of "derivative works."

These legal issues are best illustrated by the murky copyright status of the iconic characters in the Wizard of Oz.

In May 1900, author L. Frank Baum published The Wonderful Wizard of Oz, a fantasy children's novel that included illustrations by W.W. Denslow.  The book includes the familiar story describing how Dorothy, the Tin Man, Scarecrow and the Cowardly Lion traveled down the yellow brick road together to see the Wizard so Dorothy could return home. Notably, in the original 1900 text, Dorothy's slippers are silver.

Baum's seminal book was famously adapted to movie screens in the now iconic 1939 masterpiece film starring Judy Garland. This film made revolutionary use of Technicolor, which inspired a change to the color of Dorothy's slippers to ruby red.  Indeed, Dorothy's red slippers would later become enshrined in the Smithsonian Institution, as a testament to the importance that this particular prop played in American culture.

Although the children's novel The Wonderful Wizard of Oz lost its US copyright protection in 1956, only the original novel by Baum and illustrations by Denslow have entered the public domain.

However, all the later-created derivative works based on the novel are still eligible for independent copyright protection.

Section 101 of the Copyright Act defines a "derivative work" as "[a] work based upon one or more preexisting works" or "[a] work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship."  Therefore, the 1939 film in which Dorothy wore ruby red slippers is a derivative work that is still protected by US copyright, valuable rights currently held by Warner Brothers.

Slight differences between the public domain novel and the still-copyrighted movie are not an academic issue to those seeking to make any adaptation of the Wizard of Oz plotline without a license from Warner Brothers.  And that includes Disney.

Indeed, just last week, Disney aired a brand new adaptation of the original Wizard of Oz called the Wizard of Dizz.  In this version, Mickey Mouse and the Mickey Mouse Clubhouse troupe are recast as the characters from The Wonderful Wizard of Oz, with Minnie Mouse as Dorothy, and Professor Von Drake as the Wizard.

While the Disney adaptation is potentially protected free speech as a form of parody, a subtle but important detail is the fact that the ruby red slippers worn by Minnie Mouse are replaced by green shoes.

Was this detail an act of literary license on Disney's part, or part of a clever legal strategy to avoid a claim of copyright infringement? 

In fact, Warner Brothers had litigated the status of the Wizard of Oz just two years ago, so it is more likely the latter.

In their most recent squabbles over this issue, Warner Brothers took the legal position that the characters from the film had so altered public perception, that virtually ANY unauthorized use of the characters would violate the film studio's copyright.

And (believe it or not) the 8th Circuit Court of Appeals agreed, issuing a decision that left more questions than it answered.

Subsequently, additional unauthorized renditions including Oz the Great and Powerful starring James Franco, stirred up even more controversy, as Disney riled Warner Brothers by filing for trademarks on that name.

In conclusion, when fictional characters are first described in a text that falls into the public domain, the status of the original copyright does not necessarily make these characters free for the public to use without license.

Further, in Part III, we will discuss how trademarks and trade dress can theoretically create a perpetual "brand" surrounding a character that otherwise would be in the public domain as a matter of copyright law.