The Entertainment, Arts and Sports Law Blog

EASL is proud to announce the formation of a new committee on Fashion Law, co-chaired by David H. Faux and Cathryn A. Mitchell. This committee will keep its members apprised of new developments in copyright, trademark, and other applicable business laws that particularly apply to the business of fashion. Already, the co-chairs are planning events in survival skills for designers and designers’ representatives in a down economy, updates on the efforts to gain copyright protection for designs, and more. They are also looking to expand options and opportunities for committee members to be involved and informed. If interested, please join the committee by responding to Carolyn Clayton at cclayton@nysba.org, or contact Dave (davefaux@dhf-law.net) and Cathy (cam@cll.com) for more information.

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

By David H. Faux
EASL Fashion Law Committee

A Fashion Trade Show calendar is now available for members of EASL’s Fashion Law Committee. This calendar lists all the trade shows by date, location, and website that are occurring in New York City in any given month. The calendar will be updated regularly.

Please contact Biana at bianachka06@yahoo.com for access. Please also be aware that we are still in the “experimental” stage of launching this calendar, restricting access from the general public, and keeping it updated. If there are glitches, that is because there are supposed to be glitches in the beginning. Let Biana Borukhovich or I (davefaux@dhf-law.net) know about them.

A special thanks to the Fashion Law Society at Touro Law Center.

By Marie-Andrée Weiss

The New York Times reported this week the plight of the Mardi Gras Indians (http://www.nytimes.com/2010/03/24/us/24orleans.html). They create beautiful costumes by hand, often at great expense, to wear during festivities three times a year in the streets of New Orleans, like beautiful butterflies. Of course, they are very popular with photographers, and these photographs are sometimes used on calendars or posters, without their creators being able to benefit financially.

That is because under U.S. law, these costumes are considered clothing, and as such, useful articles that cannot be protected by copyright. Photographs of these costumes cannot be considered derivative works.

Could these costumes be protected by copyright?

According to the recent New York Times article, Ms. Ashlye M. Keaton, an attorney representing the Indians, is trying to find a way to protect their rights. What avenues may be open for these costumes to be protected?

Are these costumes useful?

“Useful articles” are defined by 17 U.S.C. § 101 as “having an intrinsic utilitarian function that is not merely to portray the appearance of the article.” As beautiful and outrageous as these costumes are, they still carry out a useful function, keeping the body of its wearer warm, and protecting him from being seen naked in public, which, even during Mardi Gras, is illegal in New Orleans. So, they are “useful” in some ways.

Can the artistic qualities of the costume be separated from their utilitarian nature?

Useful articles, however, may be protected by copyright only to the extent that “their 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” (17 U.S.C. § 101).

The House Report for the bill which became the 1976 Copyright Act (House Report no. 94-1476) noted that a design cannot be protected by copyright under the bill unless the product contains “some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article.” So even a useful article can be protected if its creator can show that some of its aesthetic features are “separable” from its utilitarian aspects.

Courts apply a “conceptual separability test” in order to determine whether copyright protection may be granted to a useful article, by assessing whether the primary ornamental aspect of the work is conceptually separable from its subsidiary utilitarian function (Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989). Well, I just spent some time admiring pictures of Mardi Gras Indians costumes posted online, and many elements of the costumes are visually separable from the utilitarian aspect, the costume as a body cover. As a matter of fact, some of the costumes are reminiscent of halos bordering icons, and constitute a frame around the dancer’s body.

What if the costume is designed to provoke an emotion?

In Masquerade Novelty v. Unique Industries, the Third Circuit held in 1990 that a mask portraying the nose of an animal is not a useful article for the purposes of §101, as its utility is not to portray an animal nose, but rather to make people laugh when they see someone wearing the mask.

So, could “emotional usefulness” be a criterion as well? The Mardi Gras Indians costumes play a crucial social role in conveying strong emotional reactions when watching the dancers celebrating Mardi Gras, an euphoric holiday created in Europe as a day of celebration before plunging into the rigors of both Lent and cold weather.

Let’s argue then, that the Indians’ costumes are something truly beautiful, and these costumes can be certainly considered beautiful by many people. Anyway, courts do not judge people’s tastes, as “it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judge of the worth of pictorial illustrations, outside of the narrower and most obvious limits”(Bleinstein v. Donaldson lithographing Co. (188 U.S. 239)).

Could a photograph be used to protect the costumes?

Ms. Keaton is quoted in the New York Times as trying to protect these costumes by copyright so that the photographs of these costumes could be then considered derivative work. Yet would it be possible to use copyrighted photographs of these costumes in order to protect the costume themselves?

A photograph, just as a sketch, is a two-dimensional rendition of a subject, and can be protected by copyright as long as it is original. Would a three-dimensional reproduction of the picture be protected? After all, the Second Circuit found that the sculptor Jeffrey Koons had infringed a photographer’s copyright when creating a three-dimensional sculpture of one of his photographs, which depicted a couple on a bench holding puppies (Rogers v. Koons, 960 F.2d 301). Taking that route may be a way to prevent a third party from reproducing a costume, but would not prevent a photographer from taking another picture of the same costume, as photographing a particular subject does not prevent others from doing the same.

In Galiano v. Harrah’s Operating Co., Inc., a Fifth Circuit case (416 F.3d 411), a uniform designer had received copyright protection for sketches she had made of casino employee uniforms as part of the creative process of designing these uniforms. These sketches were classified as “two-dimensional artwork.” The casino continued to order the uniforms from the manufacturer, even after its business agreement with the designer had ended. The designer sued the casino for copyright infringement, claiming that the finished garments were derivative works. She was unsuccessful, and the Fifth Circuit (to which Louisiana belongs) concluded that she did not own a valid copyright to the clothing designs.

By the way, is it a costume or a sculpture?

Ms. Keaton is also arguing that these costumes could be considered sculpture. In 1984, the Ninth Circuit reversed a district court that had granted summary judgment on the grounds that a swimsuit created by the appellant Mr. Poe was useful. So a swimsuit, or, for that matter, any other garment, may or may not be useful, and whether it was an utilitarian article of clothing or a work of art has to be resolved by the trier of fact. (Poe. V. Missing Persons, 745 F.2d 1238).

Right of publicity

The New York Times notes that the Mardi Gras Indians are tired of seeing their images being used in commercial ventures, such as calendars or posters, without receiving any money themselves for the commercial exploitation of their images. But isn’t this a commercial use of not only the costumes, but also of their personal identity? As such, they are entitled to have their rights protected by the right of publicity, which is the right to control the commercial use of one’s image. Louisiana has adopted the right of publicity through common law. In New York State, it has been recognized by statute, NY Civ. Rights Law §§50 51.

Of course, using that route would not prevent the copying of the costumes by another party, as the right of publicity and copyright are distinct rights.

What gives?

Fashion designs are still not protected in the United States, but maybe it is time to amend the Copyright Act to protect at least one-of-a-kind costumes.