You
may have read on this blog a few weeks ago
that Balenciaga America is being sued in the Southern District of New York for
having allegedly copied the designs of a New York souvenir manufacturer.
Defendant, Balenciaga USA, had allegedly featured
Plaintiff’s designs, a stylized New York City skyline, on a hoodie,
a tote bag, pouches and skirts. These luxury models had been designed and
produced in France by Balenciaga for its 2017 ‘Balenciaga NYC Tourist
Collection,’ whereas Plaintiff’s goods are sold in souvenir shops and airports
around New York.
The case is following its course, and Balenciaga
America moved last month to oppose Plaintiff’s motion for a preliminary
injunction and an order of seizure. Plaintiff claims that Balenciaga America
will be transferring the allegedly infringing merchandise out of the United
States and has requested an injunction from the court.
The French fashion house detailed its
arguments in a memorandum
filed on October 18. It claims that it is holding the 36 products at stake in
inventory in the U.S., with no intention to export them, and that the
preliminary motion is thus unnecessary. It then goes on presenting its defense
to the copyright infringement claim.
The
legal standard for preliminary injunction
Section 502 of the
Copyright Act gives courts the power to
grant temporary and final injunctions in copyright infringement suits.
Before the eBay
v. MercExchange Supreme Court patent case in 2006, plaintiffs
did not have to show irreparable harm to be awarded injunctive relief, but only
needed to establish the likelihood of success of the lawsuit. That changed
after eBay v. MercExchange, as the
Supreme Court held that a Plaintiff seeking a permanent injunction must show he
has suffered an irreparable injury. The Supreme Court further explained in Winter
v. Natural Resources Defense Council, Inc. that a plaintiff
seeking a preliminary injunction must establish: (1) that he is likely to
succeed on the merits; (2) that he is likely to suffer irreparable harm in the
absence of preliminary relief; (3) that the balance of equities tip in his
favors, and (4) that an injunction is in the public interest.
Plaintiff claims that transferring the
products at stake outside of the country would make it more difficult to
recover damages for illegal overseas sales. Defendant claims Plaintiff has not
showed irreparable harm, and it was merely the importer of the goods in the
U.S.
Defendant quotes Music
Sales Ltd. V. Charles Dumont & Son, a 2009 case from the
District Court of New Jersey to posit that exporting goods to the U.S. is not
infringement under the Copyright Act, unless a predicate act has occurred in
the U.S. that is itself infringement under the Copyright Act. Defendant also
cited a Second Circuit case,
Update Art Inc. v. Modiin Publ’g Ltd.,
where the court noted that it is “well
established that copyright laws generally do not have extraterritorial
application.”
Plaintiff does not quote the next phrase in
Update Art, which states the
exception to the rule, ”when the type of
infringement permits further reproduction abroad — such as the unauthorized
manufacture of copyrighted material in the United States.” This does not
appear, however, to be the case here, as the allegedly infringing designs have
been originally designed and produced in France. Selling them in the U.S. does
facilitate further reproduction abroad, especially since Defendant wisely
pulled these products from the stores.
The
copyright infringement defenses
Balenciaga America claims that Plaintiff’s
original design is a mere “collage of
some of the most well-known landmarks in the New York City skyline” and are
not protected by copyright.
These “unprotectible elements” are arranged
in a different way than the way they have been arranged by Plaintiff.
Balenciaga admits that there may be some similarity in the “look and feel “of
both works, but that is because they are both done “in a style that has long been associated with hot rods, graffiti art,
and hip hop, a style that is decidedly not original to Plaintiff.” Indeed, hot
rod cars are often airbrushed, and both designs mimic this
technique.
As the works at stake contain both
protectable and non-protectable elements, Defendant argue that the court must
not use the “ordinary observer test,”used by the Second Circuit courts to
assess copyright infringement, which asks “whether
the ordinary observer, unless he set out to detect the disparities, would be
disposed to overlook them, and regard their aesthetic appeal the same,” but
the “discerning ordinary observer test.” This test dos not call for “a piecemeal comparison of each of the
protectible elements with its putative imitation, but rather a careful
assessment of the "total concept and feel" of the works at issue,
after the non-protectible elements have been eliminated from consideration,”
Silberstein
v. Fox Entertainment Group, Inc.
Defendant argues that both style of the
designs are similar only as they “both pay
homage to hot rod and graffiti-style airbrushed styles, which belongs to no one
(and everyone).” This argument is a bit farfetched, as validating it would
mean that no graffiti artists can claim copyright protection for his or her
work as the style belongs to no one.
For Defendants, the New York City landmarks
must necessarily be used to evoke the city’s skyline and are thus scènes
à faire, as “[d]epictions of New York City landmarks and the
words “New York City” are stock images and phrases standard in tourist
souvenirs.”
Defendant claimed that it arranged these
unprotectible elements in a different way than Plaintiff did in its own works,
and that when these elements are filtered out the only copyrightable element
left is the arrangement of the building, which is different in Plaintiff’s
works and Defendant’s works.
Plaintiff argued in its reply
that Balenciaga “had offered no evidence
of unoriginality,” quoting Yurman
Design Inc. v. PAJ Inc.,
where the Second Circuit wrote that "[c]opyright law may protect a combination of
elements that are unoriginal in themselves.”
Indeed, as explained by the Supreme Court
in Feist,
“[f]actual compilations… may possess the requisite originality [to be protected
by copyright]. The compilation author
typically chooses which facts to include, in what order to place them, and how
to arrange the collected data so that they may be used effectively by readers.
These choices as to selection and arrangement, so long as they are made
independently by the compiler and entail a minimal degree of creativity, are
sufficiently original [to be
protected by copyright].”
Fair
use
The first of the four fair use factors of Section
107 of the Copyright Act, the purpose and the character of the use,
focuses on whether the use is transformative.
Balenciaga America claims that the designs
are transformative, as they offer “as
subversive, tongue-in-cheek commentary on fusty notions of propriety in
fashion, and emphasizing the beauty in the ordinary.” It explains that the
design were inspired by ordinary objects, comparing the process to Marcel
Duchamp using an urinal to create Fountain
and Andy Warhol painting cans of Campbell soup (he even declared tomato to be
his favorite flavor, although
this has been debunked).
Defendant argues that the second factor,
whether the protected work is factual or expressive, also plays in its favor as
Plaintiff’s work merely depicts New York’s trademark. The third factor should
be in its favor as well as it only tool, if indeed it took anything,
unprotectible elements. As for the fourth factor, the effect on the potential
market, Defendant notes that “it is not
unreasonable to think that Plaintiff’s sales have increased from the publicity
around this case.”
I must admit that Plaintiff’s products must
be on every fashionable copyright attorney or scholar’s wish list now. See you
at JFK’s gift shop!
Image of the Empire State Building, U.S. Government
Work.
Poster from the Hot Rod Girl movie (1956).
