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.

Read more

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.

Read more

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

Termination of Transfer – Part 1

Termination of Transfer - Part 1 by Joshua Graubart{5:24 minutes to read} It takes money to make money. For most of modern history, artists seeking mass-market success have had to partner with “production companies”—record labels, publishers, and film studios—in order to get their work in front of the public.

Though technology has in recent years reduced the burden of that requirement a bit, that very easing has also unleashed a flood of creative work in the market (much of it of indifferent quality) and mainstream success still—perhaps now more than ever—requires funds and expertise in production and promotion. It is instructive, for example, to note that in the past 20 years, only one record—Macklemore & Ryan Lewis’s 2013 Thrift Shophas topped the Billboard Hot 100 without the backing of a major record label. Read more

Copyright Class Actions Part 3 – The Class Representative

Copyright Class Actions Part 3 - The Class Representative By Joshua Graubart{4:42 minutes to read} In my last post, I discussed the first set of criteria which a court must consider in certifying a potential class action: is a class the most efficient way to serve justice?

If the court determines that a class is appropriate, it must then turn to the second set of criteria: whether the claimant(s) initiating the suit—the “representative plaintiffs”—are suitable to represent the class members. Again, it must satisfy itself as to two questions:

  1. Typicality: Are the claims made by the proposed class representatives typical of the claims of the class members as a whole?
  2. Adequacy: Will the proposed class representatives fairly and adequately protect the interests of other class members?


The first question is similar to the second question discussed in the last post—do the potential class members’ claims have one or more particular questions of law or facts in common? But here the question is focused on the “averageness” of the representative plaintiffs. Do the representative plaintiffs’ claims look like the claims which the bulk of the class members would make if they participated as individuals, or is there something unusual about these claims? Read more

Copyright Class Actions Part 2

Copyright Class Actions Part 2 By Joshua Graubart{5:06 minutes to read} As discussed in my prior post, litigating a low-value copyright infringement claim is often simply not worth the time and expense required. However, such a claim can sometimes be made cost-effective by aggregating it with similar claims in a class action. A single copyright holder with a small claim can serve as a representative of a “class” of similarly affected rightsholders.

The “class” in this example would be a large group of copyright holders, each of whom owns a work which has been infringed in the same way by the defendant(s). However, it is not enough for a copyright holder to determine that a class of similarly-situated defendants exists. The court must investigate and certify that a class is the most efficient way to obtain justice, and whether the copyright holder initiating the suit is a suitable person to represent the class. In this post, I will discuss how a court determines whether a class is an appropriate vehicle for obtaining justice. Read more

The Copyright Infringement Class Action: Cost-Effective Recovery for Low-Value Cases

{3:54 minutes to read} No matter the value of an infringement claim, there is no way to enforce a copyright claim except – literally – to make a federal case of it. The federal courts have exclusive jurisdiction over copyright disputes,[1] so copyright infringement actions must be brought in the federal courts.

Federal courts, unlike many state courts, do not have a “small claims” division.[2] Consequently, even a low-value copyright infringement claim is processed using the same rules as a multi-billion dollar commercial dispute. The cost of prosecuting a low-value copyright action may be more than the rightsholder can expect to receive in damages.

It is true that § 505 of the Copyright Act permits the court, in its discretion, to award a prevailing party his costs and attorney’s fees, but the key word is “discretion.” The court is not obligated to make such an award at all, or to make an award equal to the winner’s actual expenses. Though you may be lucky, it is quite risky to depend on an anticipated damages award. For the same reason, an attorney willing to work on a contingent fee basis – that is, to take a smaller hourly fee, or no fee at all, in exchange for a share of any proceeds – may be hard to find for a low-value claim.

So are low-value claims simply an example of rights without effective remedies? Yes and no. If the infringement is not part of a larger pattern or practice by the infringer – that is, if the infringer isn’t similarly and systematically infringing other works as well – then, yes, the cure may, financially speaking, be worse than the disease.

However, if the infringement is part of a systematic infringement – for example, if the infringer is a company whose business plan includes the infringement of thousands of copyrights – a class action may allow a single rightsholder to stand as a representative for the rights holders of all infringed works (the “class”), and to bring suit premised not on a single infringement, but on thousands. That single rightsholder is called a “representative plaintiff,” as he is meant to represent all the other class members.

By doing so, the representative plaintiff can now make his low-value claim – as a stand-in for thousands of similar claims – far more attractive to a contingent fee attorney. While a single low-value claim is too cost-inefficient, a consolidation of thousands of such claims holds the possibility of a high-value judgment or settlement. In addition, the representative plaintiff, in recognition of his initiative and the inconveniences attendant on litigation, may receive an additional “incentive award” from the class award, to encourage rightsholders with such low-value claims to prosecute them on behalf of an injured class.

In a future post, we will discuss the requirements a court considers in class certification, the process of determining whether a class exists, whether the representative plaintiff is typical of the class members, and whether litigation by a class is the most practical way to achieve justice.

[1]There is a single exception.  Prior to 1972, sound recordings were not protected by federal copyright, but were generally protected by state law.  Consequently, infringement claims regarding copyrights in sound recordings made prior to February 15, 1972 may be brought in state court.

[2] The U.S. Copyright Office has proposed the creation of a voluntary “small claims” process for copyright claims as an alternative to federal court litigation, but to date, it has not been enacted.