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January 20, 2010

Back door to fashion copyright protection?

By Marie-Andree Weiss

In a case filed on December 18, 2009 in the New York Southern District Court, Nygård International Partnership claims that the Canadian Broadcasting Company (CBC) copied without authorization plaintiff's copyrighted performance/material.

Here are the facts of the case, as stated in the complaint: Nygård opened a store in Manhattan last November, and organized a fashion show featuring Nygård merchandise as part of the opening celebration. Nygård invited only a limited number of preapproved media members, and had them all sign an agreement limiting their rights to record the show. CBC had not been invited to the show, and thus had not signed the agreement. One of its employees nevertheless allegedly made an unauthorized recording of the event, even after having been asked by a Nygård employee to leave the store. A cameraman who may be a CBC employee also made an unauthorized video recording of it.

Count 1 of the Complaint claims that defendant infringed Nygård's exclusive rights in its copyrighted works. Which works are they, the fashion clothes or the fashion show?

Plaintiff applied for copyright registration for the show. Searching the copyright office database reveals that it holds two copyright registrations for a motion picture of the fashion show, one contained on four DVDs, and one contained on one DVD. Nygård claims that the distribution of images of its fashions prior to their release in the marketplace would give its competitors an unfair advantage, and could cause Nygård to lose control over its intellectual property.

But which intellectual property is it? Nygård's competitors are fashion houses, not media companies. It seems that by claiming copyright protection of the movie picture depicting the fashion show, Nygård is trying to indirectly protect its fashion creations. As we know, clothes, even highly fashionable ones, are not protected by U.S. copyright laws, because they are useful articles

By claiming copyright protection of the recording of a fashion show, featuring fashion clothes not protected by U.S. copyright, could fashion designers protect their creations? If successful, this case could allow protecting fashion clothes using a back door, or perhaps one should say, a stage door.

What could be the outcome of this case? In a similar case, Sarl Louis Féraud Inter v. Viewfinder Inc. (S.D.N.Y 2005), the S.D.N.Y. dismissed French Fashion house plaintiffs Féraud and Balmain's action to enforce two judgments issued by the Tribunal de Grande Instance de Paris against Viewfinder, an American company. Viewfinder's Internet site had reproduced photographs of plaintiff's fashion shows.

One of Viewfinder's arguments had been that the French judgment was repugnant to the New York public policy because it was inconsistent with American intellectual property law. Fashion designs are indeed protected by French copyright law: article L.112- 2 14° of the French Intellectual Property Code (thereafter French IP Code) specifically lists as protected works "creations of the seasonal industries of dress and articles of fashion." Interestingly, fashion shows, although not expressly protected by the French IP Code, are protected under its article L112-1 which grants protection to the "rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose." This rather large definition encompasses fashion shows. Until recently though, French Courts had not explicitly held that fashion shows were protected, even though legal IP scholars, such as Professor Pierre-Yves Gautier, argued that they ought to be. The Criminal Chamber of the Cour de Cassation, France's Supreme Court, finally held in February 2008 that a fashion show is protected by French IP laws, and thus the persons who reproduced it illegally were indeed guilty of the crime of counterfeiting (Cass. Crim. February 5, 20008, number 07-81.387).

Since plaintiffs could not copyright their dress designs in the U.S., Viewfinder's argued that its photographs could thus not be found to violate plaintiffs' property interests under U.S. law. The S.D.N.Y refused to enforce the French judgment, stating that doing so would have been repugnant to the public policy of New York State under C.P.L.R. § 5304 (b)(4). However, it did not decide that enforcing the Paris court's judgment would be repugnant because the French intellectual property laws differ so from those of the United States, but because enforcing it would violate Viewfinder's First Amendment rights. Even if the plaintiffs' designs were copyrightable, U.S. copyright law provides "as a matter of First Amendment necessity, a "fair use" exception for the publication of newsworthy matters (Viewfinder, 406 F.Supp.2d at 284). The Court noted that "fashion shows are a matter of great public interest, for artistic as well as commercial purposes" and that "the extensive coverage given to such events in various mass media makes clear that there is widespread public interest in these matters."

This argument did not fare well with the Court of Appeal for the Second Circuit (Feraud v. Viewfinder, 489 F.3d 474 (2nd Cir. 2007), which vacated the lower court's order for failure to conduct the full analysis necessary to reach the conclusion that Viewfinder's First Amendment rights would be violated. The Second Circuit noted that the First Amendment does not provide a categorical protection, and it must co-exist with intellectual property laws: "the fact that an entity is a news publication engaging in speech activity does not, standing alone, relieve such entities of their obligation to obey intellectual property laws."

As for the 'fair use' argument, the Second Circuit cited Harper & Row, 471 U.S. at 557, 105 S.Ct. 2218, where the Supreme Court had found that publishing "newsworthy matters" is not necessarily fair use. This precedent may be helpful to Nygård, should the defendants invoke fair use as a defense. Regardless, this interesting case should be monitored closely by those interested in finding a way to protect fashion designs in the United States.

Link to Nygard complaint:
http://www.scribd.com/doc/24376395/Complaint-Copyright-Trespass-CBC

Link to French IP Code:
http://195.83.177.9/code/liste.phtml?lang=uk&c=36&r=2494

Link to Sarl Louis Feraud Int'l v. Viewfinder, Inc. (2nd Cir. 2007): http://vlex.com/vid/sarl-louis-feraud-int-l-viewfinder-28797792

January 28, 2010

Today is the Deadline for Objections and New Opt-outs in the Google Books Settlement

By Mary Rasenberger

Today is the deadline for filing objections to the amended settlement agreement in the Google Books case. It is also the deadline for opting back in to the settlement (for those who opted out of the original settlement) and for opting out (for those who did not opt out of the original settlement and wish to do so now). There are clear directions on the Google Books Settlement site http://www.googlebooksettlement.com for opting out or opting back in.

The original settlement agreement, filed in October 2008, was the result of two years of negotiations among the named parties in the class action lawsuit brought by U.S. authors and publishers claiming that Google infringed their copyrights by scanning their books and displaying excerpts without authorization. The amended settlement agreement was filed this past November in response to objections submitted by the U.S. Department of Justice and numerous class members.

We'll see what today brings, but so far it's been relatively quiet compared to the storm of filings that preceded the original September 4th deadline for objections to the original settlement agreement. Hundreds of objections had been filed well in advance of that deadline.

The first objections to the amended settlement agreement were filed Tuesday; and less then a dozen appear on the court's docket as of this writing. A couple dozen opt-outs have been filed with the court, some expressing their objections - although anyone who opts out technically does not have standing to file objections. Ursula LeGuin's petition requesting that the United States be exempt from the settlement and signed by over 350 authors does not appear on the docket yet - but she states on her website that the petition has been filed. In addition, a couple of letters in support of the amended settlement have been filed.

One explanation for the apparent relative apathy is that objectors and supporters feel they have already said their piece in objections filed to the original settlement and don't have much to say about the amendments. Indeed, the amendments do not address most of the objections to the original settlement raised by class members, but are mainly directed to the anti-trust and class action concerns that the Department of Justice raised in its brief. Judge Chin clearly instructed in his November 19, 2009 order that objections be limited to the amendments, which thus far most objectors seem to be heeding to.

Most of the actual objections filed thus far (i.e., not amicus or opt-outs) focus on the amended definition of the settlement class. Class members are now limited to authors or publishers of a book published and registered in the U.S., or published in, the U.K., Australia or Canada prior to January 5, 2009. This amendment was clearly intended to remove many foreign rights holders and their objections from the settlement, including the Germans and French, whose governments had filed objections. Over three-quarters of the more than 400 objections to the original settlement were filed by foreign rights holders. The new definition does not actually remove many foreign right holders, however. It encompasses right holders of any book published at any time prior to January 5, 2009 in any of the named countries; and this includes numerous books by authors and publishers of excluded countries. Go to any foreign language or university book store in Canada, the U.K. or Australia, and you will find many foreign language books. Thus, many of the objectors this time around have complained that the new definition is murky and does not resolve their concerns.

Another explanation for the relative quiet around this deadline might be mere ennui - is this becoming like the health bill - how much longer can we talk about it? Also, there appears to be a coming to terms with the settlement, or perhaps its inevitability, at least among some of the former opponents. Gail Steinbeck, an early and vocal opponent of the settlement, has recently come out in support of it.

The filing that will undoubtedly have the most influence is the U.S. Department of Justice Statement of Interest on the amended settlement agreement, due next Thursday, February 4th. It will be interesting to see what positions Justice takes to the amendments, since so many of them are intended to directly address its objections -- mainly the more easily remedied specific anti-trust concerns. The amended settlement agreement does not fully address all of Justice's concerns, however, most notably the issues Justice raised about the opt-out provisions for out-of-print works, especially as applied to unclaimed works. Justice indicated that converting the opt-out to an opt-in would resolve many of the problems with the settlement, but never stated that it was necessary to eliminate the opt-out provisions. The opt-out is likely an area of some contention within the government, given Google's heavy lobbying and public insistence that eliminating the opt-out would kill the deal, side by side with a recognition that opt-outs in copyright law are better suited to legislation. As such, I would expect to see continued ambiguity in the government's brief.

The Fairness Hearing scheduled for February 18, 2010. Objectors and supporters may discuss issues related to the original settlement and the amendments. If you wish to appear, you must file your notice of intent to participate by next Thursday, February 4th.

Mary Rasenberger is an attorney with Skadden, Arps, Slate, Meagher & Flom. This blog entry represents her personal views in her individual capacity and not those of Skadden, any other law firm or any client. This blog is not sponsored by Skadden or any other law firm, or any client.

About January 2010

This page contains all entries posted to The Entertainment, Arts and Sports Law Blog in January 2010. They are listed from oldest to newest.

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