On 22 March 22 2017, in the case of Star Athletica LLC v. Varsity Brands, Inc., et al, No. 15-866, the Supreme Court of the United States ruled, in a 6-2 decision, that design elements of a cheerleading uniform may be protected under copyright law, even though the uniform has a utilitarian function.

It is a well-known tenet under United States copyright law that apparel is outside the scope of the Copyright Act of 1976, which bars protection for works of authorship that possess utilitarian functions.  However, §101 of the Copyright Act carves out a limited exception, namely that “pictorial, graphic or sculptural features” of the design of a useful article are entitled to copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Star Athletica v. Varsity Brands involves copyright infringement of cheerleading uniforms designed by Varsity Brands, considered to be the leader in the market, copied by its rival, Star Athletica.  The majority opinion, written by Justice Thomas, sided with Varsity Brands, and ruled that the two-dimensional pictorial design, consisting of chevron, zigzags, stripes and colorful shapes, applied to Varsity Brands’ uniforms was deserving of copyright protection under §101 of the Copyright Act.

This case has elicited microscopic scrutiny by the fashion industry.

The Ruling

This case was heard by the Supreme Court on writ of certiorari to the United States Court of Appeals for the 6th Circuit.  The District Court had granted summary judgment to Star Athletica, holding that Varsity Brands’ designs were not eligible for copyright protection because they served the function of identifying the garments as cheerleading uniforms.  The 6th Circuit reversed, holding that the graphic designs applied to the uniforms, in accordance with §101 of the Copyright Act, were eligible for copyright protection because the graphics could be “identified separately” and were “capable of existing independently” of the uniforms.  The Supreme Court granted certiorari to resolve the long-standing discord between the lower courts over statutory interpretation, namely: What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act.?

In deciding this case, the Court set forth a simplified two part test, “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”  Looking to the facts of the case at hand, the Court held that the designs on the surface of the Varsity Brands uniforms satisfy the foregoing requirements.

The Conundrum of the Separability Doctrine

For decades, there has been disagreement between the circuits, which have struggled with articulating a consistent test to determine the extent to which designs applied to useful objects might be protected by copyright. While the statutory language of the separability doctrine is consistently invoked, the determination of when a design element is separable has lead to a plethora of standards and tests. Indeed, the 6th Circuit’s decision used 9 factors to determine that Varsity Brands’ graphic designs as applied to cheerleader uniforms were conceptually separable from the utilitarian aspects of the garment, and judicial analysis of separability have included such things as the design intention of the author and the marketability of the functional object if the applied art were to be removed.

Impact upon the Fashion Industry

The fashion industry anxiously awaited the decision in Star Athletica v. Varsity Brands – design companies expressing concern that the decision might undermine the already extremely limited protection afforded to fashion designs, while retailers were concerned that the decision might enhance copyright protection in a way that would expose them to new liabilities. Although, as noted in the dissenting opinion by Justice Breyer, designers often look to trademark law, and occasionally patent law, as a means of protection, these laws do not readily apply to graphic designs applied to apparel.  Although the Court’s decision provides some clarity and guidance with regard to statutory interpretation, it unequivocally adhered to what has been the status quo for fashion items, characteristically denied protection under the Copyright Act.  As the majority wrote,  “the only feature of [Varsity Brands’] cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms” and the company “has no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut or dimensions to the uniforms at issue here”.

The result in Star Athletica v. Varsity Brands will in all likelihood have little impact on the fashion industry, as it breaks no new ground.  What it does is eliminate the myriad of tests and issues that have plagued and distracted lawyers for both plaintiffs and defendants in proving and arguing many factual issues that the opinion now makes clear are irrelevant.

Accordingly, the protection of designs applied to apparel has neither been eroded nor enhanced; they are protected by copyright to the extent they would have been protected had they been fixed in a medium of expression other than a garment.  Similarly, retailers and designers of “knock-offs” do not appear to  face any new risk of liability that wasn’t present prior to the Supreme Court’s opinion.

Looking Forward

We have yet to see how the Supreme Court’s new separability test will be applied, but its application may significantly simplify and harmonize the analysis in the lower courts.  Congress, despite years of lobbying efforts by the fashion industry, has consistently failed to adopt the sort of “design right” that many European countries apply to apparel, and the debate continues as to whether fashion design is under-protected or, as some argue, the current “light” protection of fashion design is actually part of the engine that drives the industry.

There is no doubt that the Varsity Brands opinion vividly confirms that the Copyright Act today affords no protection at all to the overall design (e.g., the combined shape, cut, fit, color, drape, neckline, etc.) of an item of apparel.  On the other hand, it makes equally clear that the copyright protection afforded to any pictorial, graphic or sculptural work is in no way undermined when it is first fixed in, or later applied to, an item of apparel. Varsity achieved what it set out to do, but the ruling in this case has not significantly changed the landscape.

Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China.
In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties.

Facts and Ruling

From 2000 onwards, Qiaodan Sports Co. Ltd. (“Qiaodan Sports“) registered a number of trademarks including, “乔丹”, “QIAODAN” and a logo which was resembling Nike’s famous “Jumpman” logo. The original “Jumpman” logo is owned by Nike Inc. to promote its “Air Jordan brand” of basketball shoes and comprises a silhouette of Michael Jordan performing a slam dunk. In 2012, Michael Jordan sued Qiaodan Sports for infringement of his name rights in China. He asked the Chinese authorities to invalidate the registered trademarks “乔丹”, “QIAODAN” and the corresponding logo mark arguing that Qiaodan Sports’ trademarks are misleading consumers in the People’s Republic of China in a way that consumers may believe that these sport products like shirts, sport shoes and sport apparel sold by Qiaodan Sports are licensed or otherwise authorized by Michael Jordan.

The Trademark Review and Adjudication Board, the Beijing No. 1 Intermediate People’s Court and the Beijing High Court consistently came to the view that “Jordan” is a common American surname which is not readily and uniquely associated with Michael Jordan. The lower courts also perceived no exclusive and definitive link between Michael Jordan and “乔丹” and the sign “QIAODAN”. However, Michael Jordan decided to recover the valuable commercial rights in his name by appealing to the Supreme People’s Court.

Rulings of the Supreme People’s Court

Favorable Decision – “乔丹”

In these appellate proceedings Michael Jordan could successfully demonstrate that the sign “乔丹” is well-recognized in China and clearly associated with Michael Jordan personally. The Supreme People’s Court recognized an established a link between “乔丹” and Michael Jordan, and that Qiaodan Sports had “malicious intent” in registering “乔丹” as a trademark when it was fully aware of Michael Jordan’s reputation in China. Therefore, the use of “乔丹” by Qiaodan Sports infringed upon Michael Jordan’s prior rights in his name and the Supreme People’s Court ordered the “乔丹” trademark registration to be invalidated.

Unfavorable Decision –”QIAODAN”

“QIAODAN” is the English transliteration of “乔丹”. The meanings of “QIAODAN” and “乔丹” are identical. However, from the perspective of trademark use, the Supreme People’s Court could not find an established link between “QIAODAN” and Michael Jordan, as naturally Michael Jordan would not have used “QIAODAN” in any manner. The Supreme People’s Court therefore concurred with the lower courts’ decisions in the invalidation actions against “QIAODAN” and related formative trademarks in favor of Qiaodan Sports.

A Look Ahead

Michael Jordan’s success in recovering his Chinese name “乔丹” serves as an encouraging precedent to brand owners.

At least the Supreme People’s Court is seen to have considered all relevant circumstances, in particular the fairness and commercial value behind the name, in order to reach a finding that Michael Jordan can have his long lost Chinese name back as a trademark that is likely to be worth millions of dollars. The applicable laws and provisions have not changed.

The Chinese authorities and courts are willing to see and listen. The key to success is for foreign brand or name owners to present sufficient evidence to support their rights and show bad faith on the part of the trade mark squatter. Michael Jordan’s case and other similar cases involving brand owners such as New Balance and Hermès, emphasize the need for foreign brand owners to identify and register a Chinese version of their brands be it as a translation or as a transliteration as soon as possible, in order to ensure that they are protected against trade mark squatters.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Women's running shoes and dumbbells for trainingThe question of whether a sequence of exercises, such as yoga poses or dance moves, can be copyrighted has occupied the attention of international courts, scholars and copyright offices for some time. In late 2015, the issue received some media attention when yoga guru Bikram Choudhur tried to gain a US copyright in a signature sequence of yoga poses but failed before the Court of Appeals for the Ninth Curcuit. Despite the effort of international copyright conventions, the question of copyrightability essentially remains a matter of national law.

On 2 February 2007, the Higher Regional Court of Cologne (Case 6 U 117/06), Germany, ruled that an acrobatic dance performance could, in principle, be considered a “work of dance art” subject to copyright protection under Sec. 2 para. 1 No. 3 of the German Copyright Act. The required threshold of originality could, however, only be achieved, if the performance went beyond a sequence of physical movements and conveyed a particular artistic message. Whether this ruling can, by analogy, be extended to yoga and exercise routines is not clear. Simple routines are, however, not likely to constitute “personal intellectual creations” within the meaning of Sec. 2 para. 2 of the German Copyright Act.

An Integrated, Coherent, and Expressive Whole

In a further example, in a Statement of Policy from 18 June 2012, the US Copyright Office took the position that “a selection, coordination, or arrangement of functional physical movements such as sports movements, exercises, and other ordinary motor activities” did not represent the type of authorship intended to be protected under the US Copyright Act as choreographic works. However, a “composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole” could rise to the level of original choreographic authorship.

A Look Ahead

Even if simple yoga or exercise routines will likely not meet the minimum threshold of originality in most jurisdictions, a film or description of such routine may be copyrightable, as may a compilation of photographs of the routine’s individual movements. Additionally, exercise brands can make a profit from teaching their routines to others („train the trainer“) or from licensing their brand to fitness centers so that people familiar with the brand’s program know what to expect of the centers’ workout sessions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Athlete showing medalsThe Olympic Games 2016 which take place in Rio de Janeiro, Brazil, from 5 to 21 August are supported by a huge volume of marketing and advertising campaigns. As many countries have done before, Brazil enacted special legislation to protect the Olympic symbols and expressions specific to the games hosted in Rio. The protection offered in these Olympic-special legislations often can go beyond what would normally be available under trademark or copyright protection laws. For example, the London Olympic Games and Paralympic Games Act 2006 created a sui generis right of association to prevent the use of any representation that is likely to suggest an association between the London Olympics and goods or services.

Germany, as another example, also put some special legislation into place. However, a company that had offered “Olympic discounts” in its advertisements during the 2008 games was found not to infringe the German Olympic Protection Act. The German Federal Supreme Court ruled that, unlike trademark protection, the Olympic Protection Act did not grant legal protection to the advertising function of the Olympic symbols. Therefore, a mere time-related reference like “Olympic discounts” did not lead to infringement.

The Brazilian Olympic Act

Under the Brazilian Olympic Act (Federal Law No 12,035/2009), as amended by the Brazilian Federal Law No 13,284/2016, the Olympic symbols are granted special temporary protection. These include emblems, flags, anthems, mottos, mascots and torches used by the International Olympic Committee, the International Paralympics Committee and the Association Rio 2016, charged with the organization of the Games. The protected symbols also include various expressions such as Olympic Games, Paralympic Games and Rio 2016 – in any language. However, unlike the London Olympic Act, for example, the Olympic symbols are all subject to protection under trademark law. The protection period shall begin with registration of the symbols with the Brazilian National Institute of Industrial Property (INPI) and extend until 31 December 2016.

The use of such symbols is prohibited, even for non-commercial purposes, except if authorized by the International Olympic Committee or the Association Rio 2016. Furthermore, the act prohibits the use of terms and expressions that, albeit outside the list of protected symbols, are sufficiently similar to them to the extent that they are able to invoke an undue association of any products and services whatsoever, or even any event or company, with the Rio 2016 Games or the Olympic Movement.

During the time of protection, requests for registration of trademarks that constitute a reproduction or an imitation of the official symbols or are likely to cause any confusion or association with the organizing entities or the official symbols, shall be rejected. In addition, the INPI shall inform the responsible entity for the registration of domain names in Brazil, NIC.br, of all registered trademarks, so that any requests for registration of domain names containing terms or expressions identical or similar to the trademarks be refused ex officio.

Enjoy the Games!

Even though the legislation may have arrived a bit late (Federal Law No 13,284/2016 was published on 10 May 2016), the Olympic Act provides a solid framework for the protection and enforcement of intellectual property rights related to the Olympic games. So, all that is left for corporate sponsors or fans of the Olympics is to enjoy the Games!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

big stadiumOn 16 June 2016, the General Court of the European Union rejected an opposition by Fútbol Club Barcelona to the wordmark “KULE” (T‑614/14). The opposition was based on an alleged infringement of the club’s Spanish wordmark “CULE,” the term culé being a Spanish variation of the Catalan word cul and used as a nickname for supporters of the club. Apparently, this is not the only negative experience Fútbol Club Barcelona has had with the General Court in recent years. In 2015, the General Court dismissed an action brought by the club seeking registration of the outline of its crest as a Community trademark (T-615/14).

Facts of the Case

On 22 April 2011, US-based fashion company Kule filed an application for registration of the EU wordmark “KULE” with the European Union Intellectual Property Office (EUIPO). The goods for which registration was sought are in class 14 (jewellery and precious stones), class 18 (wallets, purses and trunks) and class 25 (clothing, footwear and headgear). On 2 November 2011, Fútbol Club Barcelona filed a notice of opposition to registration of the wordmark in respect of all goods concerned. The opposition was based on an alleged infringement of the Spanish wordmark “CULE,” which the club applied for in 1982 and which was also registered to cover goods in classes 14, 18 and 25.

On 1 October 2013, the Opposition Division rejected the opposition. An appeal against the Opposition Division’s decision was dismissed by the EUIPO Board of Appeal on 18 June 2014. The Board of Appeal found that the documents presented by the Fútbol Club did not demonstrate genuine use of the earlier trademark in relation to the goods concerned. This decision was now confirmed by the General Court. Pursuant to Article 42(2) and (3) of Regulation No. 207/2009/EC, a trademark opposition shall be rejected if, at the applicant’s request, the opposer is unable to prove genuine use of the earlier mark during the five years preceding publication of the new mark.

Key Considerations of the General Court

The General Court followed previous Court of Justice of the European Union (CJEU) decisions that genuine use of a trademark could be found where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered. Regarding the extent of the use made of the earlier trademark, the General Court stated that account must be taken to both the commercial volume of the overall use of the mark and the length of the period during which that mark was used, including the frequency of that use.

In the present case, the General Court found that Fútbol Club Barcelona had not adduced evidence “to show the place, time, extent or nature of use of the earlier trade marks in relation to the goods covered.” While the General Court acknowledged that the Spanish term culé was indeed used as a nickname for the supporters and players of the club, the use of that term had not been proven in relation to the goods covered by the ”CULE” wordmark.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

iStock_000052002718_XXXLargeOn 11 April 2016, the German Federal Cartel Office (FCO) announced that the German League Association (Ligaverband) and the German Football League (Deutsche Fußball Liga, DFL) have committed that no single pay-TV buyer can win exclusive live broadcasting rights to Bundesliga league games for the 2017/2018–2020/2021 seasons. The FCO made this “No Single Buyer” rule a precondition to green-light the proposed tendering model. Currently Sky Deutschland holds all domestic live broadcasting rights for Germany’s top football leagues until the end of the 2016/2017 season, having won the last tender in 2012.

Sources say that the DFL opposed the “No Single Buyer” rule, but the FCO stood firm in this effort to foster competition. FCO president Andreas Mundt voiced concerns that, as long as there was only one holder of live rights in the market, innovative competition—especially from internet-based broadcasters—might be restricted.

The DFL will be inviting tenders for 17 different audiovisual media rights packages, eight of which concern domestic live broadcasting. The tendering model sets forth that if one bidder acquires all live broadcasting rights packages to the Bundesliga games, an over-the-top (OTT) package will be offered. This OTT package will include the rights for live transmissions of three games per match day (one on Saturday, two on Sunday), but only via the web and the mobile web. So:

  • either the rights to transmit Bundesliga live games across all technologies—satellite, DTT (digital terrestrial transmission), cable/IPTV (Internet Protocol Television), web and mobile web—are allocated among different providers
  • or, in case of a single buyer of all live packages, one third of the games can be watched via web and mobile-web streaming on a second provider’s platform.

If the live packages were divided among different providers, consumers would not necessarily need to subscribe to more than one pay-TV service to view all of the games. A single provider could still offer all live broadcasts by sublicensing any rights it did not win itself.

What’s Next?

The DFL said on its website that it aims to conclude the auction of Bundesliga live broadcasting rights for the 2017/2018–2020/2021 seasons in early June 2016, before the start of the UEFA Euro 2016 football tournament. Experts expect the DFL to generate 1.1–1.5 billion euros per season from the broadcasting rights.

iStock_000037619096_LargeThe right to televise sporting events is one of the most valuable commodities in the broadcasting sector. When reports surfaced that live-streaming apps, such as Periscope and Meerkat, had been used to transmit live streams of the “fight of the century” between Floyd Mayweather Jr and Manny Pacquiao on 2 May 2015, they raised the issue of the copyright implications of these kinds of applications.

The legality of web streaming is still considered a grey area because, although the stream creates a copy of a file on a person’s computer, that copy is temporary and is stored exclusively to allow uninterrupted playing of that file. In a 2014 decision, the Court of Justice of the European Union (C-360/13) ruled that, in the course of viewing a website, all copies made on an end-user’s computer screen and in the cache of that computer’s hard disk “satisfy the conditions [of Art. 5 of the Copyright Directive (2001/29/EC)] that those copies must be temporary, that they must be transient or incidental in nature and that they must constitute an integral and essential part of a technological process”. Thus, all copies made when viewing a website may be made without the authorization of the copyright holder. Whether this decision could, by analogy, be extended to web streaming is unclear as the Court did not refer to streaming. In the wake of some cases involving video platform RedTube, the German Ministry of Justice, for example, issued a statement that the mere consumption of copyrighted content by way of streaming does not amount to copyright infringement.

While viewing a web stream might not amount to infringement, setting up a stream might. The question in this context is whether the content transmitted via streaming actually falls within the scope of copyright protection. The Court of Justice of the European Union (C-403/08) noted that, in principle, sporting events cannot be regarded as intellectual creations classifiable as works within the meaning of the Copyright Directive (2001/29/EC). This includes, in particular, football matches, which are subject to rules of the game, leaving no room for creative freedom whatsoever. Thus, those attending the event can transmit live streams to social media followers and the wider Internet without infringing copyright. However, this applies only to the action taking place in the arena. A televised football game might be judged differently, since the broadcast is subject to various creative decisions by its director(s) such as, inter alia, camera perspectives, close-ups and slow-motion scenes. These tools, or a combination thereof, might give the director(s) enough creative freedom to justify copyright protection of a televised football game. In any event, copyright can subsist in various works contained in the broadcasts. For example, an opening video sequence, pre-recorded films showing highlights of recent matches, or various graphics.

Conclusion

Football, boxing and golf matches as such are subject to rules of the sport and leave no room for creative freedom for the purposes of copyright, so live-streaming from the point of view of an arena attendee will likely not be copyright relevant. The copyright implications of live-streaming might also be different from on-demand-streaming. In the absence of case law addressing the issue, a precise assessment is, however, not yet possible.