Can You Copyright Your Label? Yes… well, no… well, partly.

A client of ours recently sought to copyright its label and wanted to know if that was possible. Understandably, the company didn’t want competitors copying its hard work in creating a unique and visually distinctive label for its product.

We first addressed the obvious, which is trademark protection for the name of the product. Ok, but the label is more than just the name, it is the artistic creation of a designer who was hired to give my client’s product a very purposeful and contemporary look.

So, can we copyright the label?

This seemingly simple question brings to bear a number of interesting issues. As a threshhold matter, Copyright protects original expression. The United States Supreme Court has held that with regard to copyright, originality means only that the work was independently created by the author and possesses at least some minimal degree of creativity. See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 346 (US 1991). The requisite level of creativity is typically extremely low; even a slight amount will suffice. See FMC Corp v. Control Solutions, Inc. 369 F.Supp.2d 539, 561 (E.D. Pa. 2005). Classic copyright material (like prose or photographs) typically meets the minimum threshold of creativity with ease. But that is not to say that the threshold is so low as not to exist at all.   Indeed short phrases, basic shapes, and lists of ingredients do not present the sufficient amount of creativity for copyright protection.

Labels, however, are typically a combination of pictures, text, short phrases, and shapes. So are they copyrightable because of the pictures and process, or not, because of the short phrases and basic shapes?

There are a number of cases that indicate that labels are subject to copyright protection. See Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1959). Based on case law, it appears that consumer product labels containing more than a mechanical list of ingredients manifest the amount of creativity necessary to enjoy copyright protection. See FMC Corp. 369 F.Supp.2d at 572 (citing Sebastian Int’l, Inc. v. Consumer Contact (PTY) Ltd., 664 F.Supp. 909, 913 (D.N.J.1987), rev’d on other grounds,847 F.2d 1093 (3d Cir.1988); Drop Dead Co. v. S.C. Johnson & Son, 326 F.2d 87, 92–93 (9th Cir.1963), cert. denied,377 U.S. 907, 84 S.Ct. 1167, 12 L.Ed.2d 177 (1964) (copyright on aerosol wax product label held valid); Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 545 (2d Cir.1959) (defendant’s use of identical pictures on cake labels infringed plaintiff’s copyrights on the labels).

For example, in one case, a label on a bottle of shampoo was found copyrightable for a small bit of text describing the product:

“Hair stays wet-looking for as long as you like. Brushes out to full-bodied dry look … WET is not oily, won’t flake and keeps hair wet-looking for hours, allowing you to sculpture, contour, wave or curl. It stays looking wet until it’s brushed out. When brushed, hair looks and feels thicker, extra full. Try brushing partly, leaving some parts wet for a different look.” See Sebastian, 664 F.Supp. at 913.

The court held that “[n]o one can seriously dispute that if plaintiff were to discover that a competitor’s package utilized the exact language as above with the exception of the product’s name, plaintiff would be entitled to protection.” Id.

The court in Sebastian instructed that the language on a label is entitled to copyright protection when it is “more than simply a list of ingredients, directions, or a catchy phrase.” See Sebastian, 664 F.Supp. at 913.

Even shorter phrases can be sufficiently original to garner copyright protection, even for commercial works, such as labels. See Abli Inc. v. Standard Brands Paint Co., 323 F.Supp. 1400 (C.D. Cal. 1970) (label was copyrightable when it contained phrases such as “Cut to desired length … Will not run … Simply slide top bead into rod as illustrated”). Indeed, the length of a sentence is not dispositive of whether it is subject to copyright protection. See Rockford Map Publishers, Inc. v. Directory Service Co. of Colorado, Inc., 768 F.2d 145, 148 (7th Cir. 1985).

In addition to text, drawings or photographs typically are protectable.

Now when you register a copyright, you have to select whether it is a work of visual art, literary work, etc. As a whole, a label certainly seems like a visual work. Indeed, often it is registered as such. Federal courts have held that the form of registration of a work has no effect on the scope of copyright. See S.C. Johnson & Son, Inc. v. Turtle Wax, Inc. 1989 WL 134802 (N.D. Ill. 1989) (finding that a work registered as a nondramatic literary work rather than a work of visual arts does not negate copyright protection in visual elements of the work). Nonetheless, you will sometimes find pushback from the Copyright Office based on the nature of the work you claim.

Where the rubber really meets the road is in compilation, meaning, the compilation of multiple elements. As with my very first example, what is the result when you combine copyrightable elements like pictures and prose with non-copyrightable elements like lists of ingredients, brand names, titles, or short phrases?

Many have and many will continue to argue that the work is registrable as a whole work in the arrangement and selection of the components. Indeed, the Copyright Act itself provides that a work as a whole can be copyrightable due to the originality expressed in the overall selection, organization, and arrangement of the work, and the United States Supreme Court has agreed. See Feist at 360; see also 17 U.S.C. § 103. Yes, originality can be displayed in taking commonplace materials and making them into a new combination and arrangement. See Drop Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87 (9th Cir. 1963) (finding arrangement of color, layout, design and wording on bottle of PLEDGE furniture polish is copyrightable as a whole, including laudatory and instructional text); see also X-IT Products, LLC v. Walter Kiddie Portable Equipment, Inc., 155 F.Supp.2d 577, 609-611 (E.D. Va. 2001) (finding that although short phrases and bullet points on packaging were not protectable, label as a whole was protected under copyright, which necessarily includes the arrangement of the individual elements). Even very simple arrangements can be sufficiently original to be entitled to copyright protection. See S.C. Johnson & Son, Inc. v. Turtle Wax, Inc. (finding that a label with red stripes on a yellow background with a ribbon and the company name is sufficiently original for copyright protection).

Now hold on to your hat…

Despite this line of case law, it is the well-articulated policy of the Copyright Office to deny registration of the arrangement of elements on the basis of physical or directional layout in a given space. See Darden v. Peters, 402 F. Supp. 2d 638 (E.D.N.C. 2005). Not only does this apply to labels, it applies to websites, too!! To perhaps put it another (and more awesome) way, on a phone call with an examiner from the Copyright Office wherein I recited the above mentioned case law, the examiner told me, “Well the court can say that, but that’s not how we see it.

So where to go from here?

Are labels copyrightable?

Yes.

Can you successfully register a label for copyright?

Um, maybe not.

Can you successful register just those creative elements of a label, like a picture, drawing, or prose?

YES. The way you do this is to submit the entire work, but claim only the creative elements, essentially disclaiming the rest.

There you have it – the more creative the elements of your label, the better your shot of gaining copyright protection from the Copyright Office.

Intellectual property issues like copyright and trademark can be tricky. If you or your business have a question about an intellectual property issue, contact a trademark attorney, copyright attorney, or intellectual property attorney at Briskin, Cross & Sanford.

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Next steps for Aereo in The People vs American Cable Monopolies?

Over the weekend, a letter from Aereo founder and CEO Chet Kanojia appeared on the Aereo website and to any of Aereo’s 500,000 or so customers who logged into the Aereo ap.  While ABC might have thought that it had cut off the hydra’s head after the Supreme Court ruled in its favor last week, Aereo is clearly still pursuing the case in the court of public opinion:

A little over three years ago, our team embarked on a journey to improve the consumer television experience, using technology to create a smart, cloud-based television antenna consumers could use to access live over the air broadcast television.

On Wednesday, June 25, the United States Supreme Court reversed a lower court decision in favor of Aereo, dealing a massive setback to consumers.

As a result of that decision, our case has been returned to the lower Court. We have decided to pause our operations temporarily as we consult with the court and map out our next steps. 

The cornerstone of the Supreme Court 6-3 ruling was the holding, as reported by Scotusblog, that “Aereo publicly performs copyrighted works, in violation of the Copyright Act’s Transmit Clause, when it sells its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over the air.”

If you know anything about the Copyright Act of 1976, you probably know that copyright owners are given a bundle of rights with respect to original works of authorship, among them the exclusive right to perform the copyrighted work publicly. At the heart of this case is whether Aereo, as it claimed, merely rented a small antenna and a digital DVR to each of its customers so that they could grab “free” TV signals off the air and watch them later, or whether Aereo was acting more like a cable company and actually retransmitting copyrighted broadcasts in violation of the Act.

The majority in the Supreme Court decided that it was the latter, relying on Congress’s express emendation of the Copyright Act in 1976 to encompass cable TV companies. The basis for their reasoning was the so-called “transmit” clause, which maintains that the exclusive right to “perform” a work covered by the Copyright Act includes the exclusive right to “transmit or otherwise communicate a performance . . . of the work . . . to the public, by means of any device or process, whether the members of the public capable of receiving the performance . . . receive it in the same place or in separate places and at the same time or at different times.”

Dissenting, Justice Scalia filed an opinion joined by Justices Thomas and Alito expressing the belief that Aereo does not “perform” because Aereo’s subscribers determine their own programming selections just as a copy shop serves consumers by providing machines capable of copying anything that the consumer brings in to copy, whether it is subject to copyright or not, and it would be wrong to blame the technology for the fact that it is capable of facilitating law-breaking uses (is anyone thinking of handguns here?).

Scalia goes on to criticize the Court’s holding as stitching together a few fragments of legislative history and lacking solid foundation:

“What we have before us must be considered a ‘loophole’ in the law. It is not the role of this Court to identify and plug loopholes. It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes. Congress can do that, I may add, in a much more targeted, better informed, and less disruptive fashion than the crude ‘looks-like-cable-TV’ solution the Court invents today.”

While the Supreme Court ruling may appear to have ended the two-year legal battle between ABC and the feisty tech start-up, Aereo, although it originally said that there was no “plan B,” now claims that while it may be down, it is not out. As Forbes contributor Mark Rogowsky notes, Aereo “didn’t have time to seek changes to federal law. Instead, it took the path of an Uber or AirBnB: operate in a legal grey area and hope the law moves with you or affirms your actions. Unlike those other companies, however, Aereo faced big national entities who could take the matter before the ultimate Court in the land.”

While Fox and the big broadcasters may be delighted with the ruling for the time being (Fox is currently suing Dish Network in a similar case involving its Dish Anywhere app, a case that is up before the Ninth Circuit Court of Appeals next month), the blogosphere is already alight with Aereo alternatives, and it may well be that, having plucked a single dandelion head, ABC’s efforts to put down one upstart in the popular rebellion against astronomical cable fees will merely spread the seeds of innovation beyond even the reach of the large cable monopolies’ power to control.

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic

Susan Scafidi, law professor and academic director of Fordham Law School’s Fashion law Institute (bio here) discusses Christian Louboutin’s efforts to seek an injunction from a court in Belgium preventing the use of his trademark red-soled pumps by a right-wing political faction in Belgium as a part of its anti-Muslim rhetoric.

Louboutin claims his brand is being tarnished.  Scafidi agrees: “This is a case of unauthorized use of a trademark in unrelated advertising, albeit for a political party and a point of view rather than a product.”  She also points out that Louboutin is not the only aggrieved party: the Belgian photograph shamelessly rips off the art of  Canadian feminist photographer Rosea Lake (original shown here), a fact about which Ms. Lake is none too pleased (see her own blogged response here).

Susan Scafidi’s full post (linked below) is well worth reading (as are all of her blog postings).

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic.

Natasha vs. Nikita: Elton John finally vindicated in case of copyright claim brought by unlucky lover and lonely lyricist

Back in 1982, Guy Hobbs, a photographer working on a Russian cruise ship, enjoyed a brief, shipboard courtship with a Russian waitress.  Alas, it was not to be for Hobbs, and, as artists often do, Hobbs wrote a song about the sad romance.  He named it “Natasha,” registered the copyright in the U.K., and sent it to several music publishers, hoping, no doubt, to turn the experience to some profit, at least.

Unlucky in love, unlucky in life, Hobbs could apparently find no takers for his wistful song.  However, the publishing company Big Pig Music, Ltd., one of the companies that had earlier declined Hobbs’ song, several years later registered a copyright for the Elton John and Bernie Taupin song “Nikita,” which went on to become a huge hit for Elton John in 1985 (See Elton John singing Nikita here).  Hobbs claims he first saw the written lyrics of “Nikita” in 2001.  He contacted John and Taupin to demand payment for what he alleged was copyright infringement; but again, not surprisingly, he was rebuffed.

Hobbs sued Sir Elton Hercules John, et. al in District Court, lost, and, apparently undaunted, appealed to the Seventh Circuit.  Interestingly, even though the action was brought 27 years after the alleged infringement, John did not raise the three-year statute of limitations for copyright infringement as part of his defense.  Perhaps it was a matter of artistic pride for John to show outright that “Nikita” did not infringe on Hobbs’ “Natasha” rather than to win on what some might think of as a legal technicality.

The United States Court of Appeals for the Seventh Circuit, in its July 17, 2013 opinion (you can read the full opinion here), looked at the lyrics in detail.  Hobbs had argued that the two songs shared a unique combination of the following elements:

  1. A theme of impossible love between a Western man and a Communist woman during the Cold War;
  2. References to events that never happened;
  3. Descriptions of the beloved’s light eyes;
  4. References to written correspondence to the beloved;
  5. Repetition of the beloved’s name, the word “never,” the phrase “I need you,” and some form of the phrase “you will never know;” and
  6. A title which is a one-word, phonetically-similar title consisting of a three-syllable female Russian name, both beginning with the letter “N” and ending with the letter “A.”

The Court, however, pointed out that the Copyright Act does not protect general ideas but only the particular expression of an idea; and even at the level of the particular expression, the Copyright Act does not protect “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.”  In other words, while a writer can certainly copyright a specific expression of a particular story, nobody can be allowed a monopoly on all stories about impossible romances, where the lovers are separated by the Cold War, and the Russian woman has pale eyes and a name beginning with “N” and ending with “A.”

In fact, the court found that the two stories in this case were substantially different in many other ways, one telling the story of two lovers forced to part ways, the other a story of a man who briefly sees and desires a woman he can never meet as they are separated by “guns and gates.”  And because the two stories were substantially different, Hobbs’ copyright infringement claim failed as a matter of law.

“Oh, Nikita you will never know….”

Who Owns Your Tattoo?

It is not only in our copyright, trademark, and intellectual property practice but also in our general business practice that we regularly have to deal with who actually owns (or will own) the copyright of a particular piece of graphic art, a photograph, a video, a design, a set of presentation slides, a piece of software code, and so on.  Copyright protects a work of original authorship (including literary, dramatic, musical, artistic, and certain other intellectual works) once it is created in a “fixed form.”  There is no doubt that a drawing, a piece of writing or sculpture, even a piece of computer code meets this definition… but a tattoo?

The Pugh Research Center reports that while 14% of Americans have at least one tattoo, among US adults aged 26-40, the figure is now 40%, and tattoos are now a $1.65 Billion dollar industry in the US. www.statisticbrain.com/tattoo-statistics/.  And, while the courts have not yet definitively inked in the principle, if a work of art on paper is copyrightable, why not a work of art on skin?

The interesting wrinkle here, of course, is that unless your tattoo artist was your employee, or unless he or she signed a “work made for hire” agreement with you, the tattoo artist probably owns the copyright to the original design now permanently displayed on your chest.  Arguably, in purchasing the tattoo, you have purchased a license to display it (although that is part of the bundle of rights normally reserved to the copyright holder), but this right may not be unlimited, and it may be that a company using the tattooed image of an athlete endorsing a product or captured in a video game and identified by his or her distinctive tattoos will find itself owing a royalty to the tattoo artist.  Darren Heitner for Forbes writes here about San Francisco 49ers quarterback Colin Kaepernick sitting in a tattoo artist’s chair holding a tablet featuring the Yahoo! Fantasy Football app while getting inked up: Questions Concerning Copyright Of Athlete Tattoos Has Companies Scrambling – Forbes.

As you might expect, the lawsuits have already started: in Whitmill vs. Warner Brothers, the tattoo artist that inked Mike Tyson’s distinctive facial art sued W.B. for allegedly copying the Tyson tat and placing it on the face of an actor in The Hangover 2You can read the complaint here.  While that case may have settled out of court, penalties for copyright infringement can be high, so whether you are protecting that one-of-a-kind body-portrait or a more mundane work of authorship, you may wish to run it past your attorney before, rather than after, the ink is dry.