In 1709 (or was it 1710?) the Statute of Anne created the first purpose-built copyright law. This blog, founded just 300 short and unextended years later, is dedicated to all things copyright, warts and all. To contact the 1709 Blog, email Eleonora at eleonorarosati[at]gmail.com
Friday, 30 January 2015
Zebra Stripes and Polka Dots May be Protected by U.S. Copyright
On January 12, 2015, the Eleventh Circuit affirmed a
decision of the Southern District Court of Florida which had granted summary
judgment to Washington Shoe, finding that Olem Shoe had infringed its copyright
in several designs adorning rain boots, albeit not willfully. The case is Olem Shoe Corp. v. Washington Shoe Corp,
Washington Shoes designs and sells rain boots. In the fall
of 2009, it sent a cease-and-desist letter to Olem Shoe Corporation, a shoe
wholesale company, claiming that one of Olem’s rain boot models infringed
Washington Shoe’s copyright in its “Ditsy Dots” design, a particular polka dot
Olem filed suit to have the copyright declared invalid.
Washington Shoe counterclaimed, and sent another cease-and-desist letter in
early 2010, claiming copyright infringement in its “Zebra Supreme” design. Both
of the allegedly infringing Olem models had been sourced in China. Pictures of
all these models can be found on p.31 of the case.
Birds May Not Have Rain Boots, But They Love Colorful Designs
Olem filed a motion to dismiss Washington Shoe’s
counterclaim, asserting that Washington Shoe’s copyrights protected only the
two-dimensional drawings filed with the Copyright Office, not the boots
themselves. But the district court found in April 2010 that, while the
utilitarian functions of boots could not be protected by copyright, the designs
printed on their surface could be protected.
Washington Shoe then filed a motion for summary judgment.
The district court granted it with respect to the copyright claim, but denied
it with respect that the infringement was “willful.” Washington Shoe appealed
to the Eleventh Circuit, Olem cross appealed, and the court affirmed.
Filing the Copyright
The plaintiff in a copyright infringement suit must prove
that he owns a valid copyright, meaning that the work is original and that
plaintiff has obtained a registration certificate. The plaintiff must also
prove that the defendant has copied elements of his work which are original.
Olem argued in front of the district court that the
registered Ditsy Dots design was not original enough to be protected by
copyright, as it was too generic to be sufficiently original. However, the district
court found that the polka dots design was sufficiently original to be
protected by copyright, relying on PrinceGroup, Inc. v. MTS Products, a 1997 Southern District of New York case,
where the court had found that a particular polka-dots fabric pattern met the
low threshold of creativity to be protected by copyright.
In our case, the district court found that “the particular arrangement of different
sized dots at varying distances along vertical and horizontal planes… [was] an
artistic decision that distinguishes Ditzy Dots from generic polka dots.”
However, some irregularities in dot-shape could not be protected by copyright,
as they “surely derive[d] from the
process of stretching a two-dimensional design over a three-dimensional boot.”
Proving Copying of
Constituent Elements of the Protected Work
Also, the district court was mindful to note that “only… the conceptually severable patterned
designs on the face of the boots… not any utilitarian functions of the boots
themselves” are protected by copyright. Indeed, U.S. Copyright law does not
protect useful articles. However, §101 of the Copyright Act provides that “the design of a useful article… shall be
considered a pictorial, graphic, or sculptural work only if, and only to the
extent that, such design incorporates pictorial, graphic, or sculptural
features that can be identified
separatelyfrom, and are capable of
existing independently of, the utilitarian aspects of the article.” The District Court found that Olem
Shoe had copied constituent elements of the designs which were original.
Another Utilitarian Aspect of Rain Boots
As Washington Shoe could not prove copying, it had to
establish access and substantial similarity with its designs. The district court
found that Olem had “access” to the registered designs, as the boots bearing
the protected designs were sold nationwide at Target, which has numerous stores
in Florida, were Olem is located. The boots were also sold at Target.com. Also,
Washington Shoe had presented these boots in tradeshows which had been attended
by Olem. For all of these reasons, Olem was found to have had access to the protected
The district court also found the designs on Plaintiff and
Defendant’s boots to be substantially similar, after having compared them from
four different angles, and concluded that Olem had infringed Washington Shoe’s
copyright. The Eleventh Circuit noted that two works essentially or virtually
identical are strikingly similar, and that the copying elements of an
infringement claim was satisfied in this case. The Eleventh Circuit found the
polka dots and the zebra stripes designs virtually identical and thus strikingly
similar, and affirmed the district court’s finding that Olem had copied
Washington Shoe’s design.
Creation But No Willful Infringement Either
Olem had unsuccessfully argued in front of the district court
that it had independently created its own design, submitting testimonies that
the company had received these designs from a Chinese supplier, and then used
them on its boots without knowing that they were protected by copyright.
While this was not sufficient to establish independent
creation, the district court nevertheless took it into consideration to hold
that Olem had not willfully infringed Washington Shoe’s copyrights. As the
parties did not cite any Eleventh Circuit cases, nor did the District Court identify
cases establishing willful infringement standards, the district court had
adopted as definition of willful copyright infringement a Second Circuit
definition, where courts examine “whether
the defendant had knowledge that [its] product represented infringement or
perhaps recklessly disregarded the possibility.”
The Eleventh Circuit noted that “[g]enerally, establishing a
reckless state of mind in a copyright case requires a showing that the
infringer possessed particular knowledge from which willfulness could be
inferred, such as evidence that the infringer was given samples of the
copyrighted work prior to producing the infringing work” (p. 13).
The Eleventh Circuit was not convinced by Washington Shoe’s
argument that, merely because the designs were strikingly similar, Olem
recklessly disregarded the likelihood that it infringed Washington Shoe’s copyright,
reasoning that “striking similarity… says
little about the state of mind of the copier” (p. 12).
Of the Importance of
Sending Detailed Cease-and-Desist Letters
The Eleventh Circuit was not convinced either by Washington
Shoe’s argument that the cease-and-desist letters sent to Olem prove that it
knew that it was infringing protected copyright.
Indeed, Washington Shoe had sent Olem two cease-and-desist
letters, but Olem could still “reasonably
and in good faith have believed that there was no infringement,” according
to the district court, as the letters did not include identifying information
for the registration or a sample of the allegedly infringing work. Therefore, these
letters were not probative evidence that Olem knew that it infringed Washington
Shoe’s copyright, and the copyright infringement was thus not willful.
The Eleventh Circuit agreed with the district court on this
point, noting that the letters, as sent, “provided
nothing from which Olem could have determined that the claim was legitimate”
This should give pause to copyright practitioners when writing their
next cease-and-desist letters. These documents should include enough
information as to effectively put the receiver on notice that he does indeed
infringe their client’s copyright.