Star Athletica: Copyright in Clothing

Star Athletica: Copyright in Clothing by Joshua Graubart{4:12 minutes to read}  In a prior post, I discussed Wal-Mart Stores, Inc. v. Samara Bros., Inc.,[1] in which the Supreme Court determined that aesthetic features of a product could not be protected under the trade dress rubric. In that case, the products at issue were children’s clothes, and the Court suggested that rather than rely on trade dress, the designer should instead rely on protection by copyright or design patent.

It is axiomatic that “useful articles” are not protectable under copyright,[2] and that only “primarily ornamental” features of an article are protectable under design patents.[3] As discussed here, the Supreme Court has previously ruled, in Mazer v. Stein,[4] that an article can be protectible under both copyright and a design patent.

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Another Aspect of Design: Trade Dress

{4:30 minutes to read} In my last post, I discussed the design patent, a form of protection available under the Patent Act to protect designs that are “primarily ornamental” rather than those which – like most inventions one normally thinks of in connection with the Patent Act – are “primarily functional.” Design patent protection can coexist simultaneously with copyright protection for the design as a graphic or sculptural work.

In addition to patent and copyright law, non-functional designs can also be protected under the federal Trademark Act (also known as the Lanham Act), and under state trademark and unfair competition law.

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Copyright and Patents

Copyright and Patents by Joshua Graubart{3:06 minutes to read} As discussed previously, in the United States, copyright and patent law are explicitly anticipated in Article I, section 8, clause 8 of the U.S. Constitution, which accords to Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

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Termination Rights Update: The (British) Empire Strikes Back

{7:12 minutes to read} OK, the U.K. isn’t the British Empire of yore, but I couldn’t resist the title.  Termination Rights Update: The (British) Empire Strikes Back by Joshua Graubart

In a prior post, we discussed a perennial problem faced by copyright legislators. Creators often have little bargaining power at the outset of their careers, and neither creators nor production companies (here meaning the industry gatekeepers: publishers, production companies, record companies, etc.) have a reliable method for measuring the commercial success of a work before it’s published. Consequently, if copyright legislation allows irrevocable transfer of the copyright in a work, creators will inevitably grant to production companies for a pittance masterpieces with massive commercial upsides, in which they rarely share.

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Copyright and Trademark: Titles, Words & Short Phrases

Copyright and Trademark: Titles, Words & Short Phrases by Josh Graubart

{4:12 minutes to read} It is a truism among intellectual property lawyers that no matter how often one may encounter discussion of a “copyrighted word” or a “copyrighted phrase”—and this notion appears frequently in media—copyright law generally does not protect titles, words, slogans or phrases.[1]

In the United States, the Code of Federal Regulations specifically lists “[w]ords and short phrases such as names, titles and slogans” as examples of works not subject to copyright, and directs the Copyright Office not to register them.[2] However, U.S. courts have occasionally suggested that copyright claims in short phrases might be viable in exceptional cases, provided that the phrase “exhibits sufficient creativity.”[3] Read more

The Blurry Boundaries of Copyright


{3:54 minutes to read} My practice—and accordingly this blog—focuses on copyright, or at least on what we call The Blurry Boundaries of Copyright by Joshua Graubart “copyright” in the United States. However, “copyright” is only one segment of a broader spectrum called “intellectual property,” and—as is often the case with segments of a spectrum—the boundaries are somewhat arbitrary, and the subject matter can bleed across from one segment into the next. Just so with intellectual property.


Indeed—and just to illustrate the fuzziness of even the concept of “copyright”—what we commonly describe as “copyright” subject matter in the United States encompasses segments which much of the rest of the world labels “authors’ rights” (i) and “neighboring rights” or “related rights.” Copyright in the Anglophone world begins with literary property: books and pamphlets. Over time, the realm of copyright expanded to cover maps, charts, graphic art, and more, as technology and culture required. The current definition of works covered by the Berne Convention, the oldest and largest multilateral treaty on copyright protection, includes:

… every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.(ii)

This definition—which is also incorporated into the TRIPS Agreement, the general intellectual property treaty to which countries who wish to enter the World Trade Organization (WTO) must adhere—more or less covers the “authors’ rights” subsegment. The keen-eyed, however, will note what is not covered: sound recordings; live performances of actors or musicians; computer programs; database compilations, to name a few examples. Many of these are covered under the rubric of “neighboring rights” or “related rights” in other countries’ laws, or are absorbed into “copyright” under US law.

But certain other categories do not easily fit in either the “authors’ rights” or the “neighboring/related rights” boxes. Among the most ambiguous is “industrial design,” a category which can include—among other things—fashion design, vehicle design, and furniture design. In a future post, I will discuss the difficulties of intellectual property protection for industrial design.

Joshua GraubartJoshua Graubart





(i) “Authors’ rights,” incidentally, usually includes a subsegment called “moral rights,” which in the United States is so restrictive in scope as to raise the question whether it exists at all except with respect to certain works of “fine art.”
(ii) Berne Convention, Art. 2(1).



What is Intellectual Property?

{3:54 minutes to read} “Intellectual property” consists—as the name suggests—of “creations of the mind,” and more What is Intellectual Property? By Joshua Graubartspecifically, of commercially valuable aspects of those creations. [1]

As the name also suggests, “intellectual property” is a subcategory of “property.” Unlike, for example, real property (land) or chattel (other tangible property, such as a car or a horse), intellectual property is intangible: it can’t be seen or picked up, and it has no “natural” form or limits. Unlike land or livestock, it does not exist except to the extent it is created by law. Its boundaries, consequently, follow no “natural” form; rather, its boundaries are solely and precisely those described by law.

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Copyright Small Claims Court: The Devil is in Small Details

{5:24 minutes to read} In a prior post, I mentioned that in September 2013, the U.S. Copyright Office had proposed a Copyright Small Claims Court: The Devil is in the Small Details by Joshua Graubart copyright small claims court as an alternative to full-blown civil litigation. Almost three years later, the Copyright Office’s proposal has moved onto the legislative agenda as a bill (H.R. 5757) in the House of Representatives sponsored by Rep. Hakeem Jeffries (D-NY).

H.R. 5757 largely follows the guidelines recommended by the Copyright Office. It would establish an optional, alternative forum for copyright infringement claims, employing a streamlined procedure and a cap on damages set at $15,000 per work infringed and $30,000 per action (for actions including more than one infringed work). The award of costs and attorney’s fees permitted under the Copyright Act would not be allowed except in cases of bad faith, and even then capped at $5,000.

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Termination Rights, Part 3: The British Commonwealth

Termination Rights, Part 3: The British Commonwealth by Joshua Graubart{4:18 minutes to read} In a prior post, Termination of Transfer – Part 1, I talked about Congress’s implementation of a two-term copyright structure, of 28 years each, in the US Copyright Act of 1909 (the act which governs copyright in works dated before 1978). The stated purpose was to permit authors a “second bite at the apple,” whereby they could profit anew from the exploitation of their works once the first term expired. As noted in that post, the structure failed to achieve its purpose.

However, while Congress went out of its way to justify its 1909 Act structure, the structure certainly wasn’t novel. It was, in fact, the same structure that had been used in prior American copyright acts, and it can be traced back ultimately to the Statute of Anne, [1] the 1709 British statute celebrated as the forebear of modern copyright legislation in the English-speaking world.

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Termination of Transfer Part 2 Cont’d: Clearing the Flaming Hoops

Termination of Transfer Part 2 Cont’d: Clearing the Flaming Hoops By Joshua Graubart{4:48 minutes to read} As discussed in the last post, terminating a transfer of copyright is far more technically complicated than one might expect. This blog continues that discussion by outlining who can terminate and when.

Who can terminate?

Only a limited set of people can terminate a transfer:

  • If the author is still alive, only he/she can terminate any transfer.
  • If the author is dead, only certain combinations of the author’s widow(er), children, and grandchildren can effect a termination.
  • If there are no such heirs or they all die before the author, the author’s executor or a trustee of his estate can effect a termination.

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