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Andrea L. Calvaruso

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Most companies understand they should obtain a license before using a photograph in an advertising campaign or on printed materials.  And yet companies may not think twice about embedding images from a tweet or social media post into the company’s own social media feed or website. But embedder beware.  A federal judge in the U.S. District Court for the Southern District of New York recently rejected and limited the application of the so-called “Server Test”.

In jurisdictions that have adopted the Server Test, a website publisher can only be liable for direct infringement when a copyrighted image is hosted on its own server as opposed to being embedded or linked from a third-party server. On February 15, 2018, the court in Goldman v. Breitbart News Network, LLC, et al., U.S. District Court for the Southern District of New York, No. 17-cv-3144, found that embedding a tweet of a copyrighted image can be considered copyright infringement, regardless of where the image is hosted.

The Copyright Act grants copyright owners several exclusive rights to control the distribution and use of copyrighted works, including the right to make copies of the work, the right to distribute those copies to the public, and the right to publicly display the copyrighted work. In the Goldman case, the Court held that embedding a tweet of a copyrighted image can violate the copyright owner’s exclusive display right.

See our advisory for more details.

The U.S. Copyright Office has imposed new requirements on service providers in order to maintain safe harbor protection under the Digital Millennium Copyright Act (“DMCA”).  Service providers who don’t meet these requirements will lose the safe harbor protections afforded by the DMCA.  The deadline to comply with these requirements is December 31, 2017.

DMCA and the Safe Harbor

The DMCA was enacted by U.S. Congress in October 1998 with the purpose of addressing certain intellectual property issues in the wake of the Internet.  Among the DMCA’s key provisions is “safe harbor” protection, designed to shield companies from liability for infringement due to content posted by a user on the company’s website, provided that the company qualifies as a “service provider.
Continue Reading Regulatory Changes Affecting All “Service Providers” – 12/31/17 Deadline

The overall design (such as the shape and cut) of a garment, bag or shoe is not protectable under current U.S. Copyright law because such items are considered “useful articles.” However, Section 101 of the Copyright Act provides protection for the “pictorial, graphic or sculptural features [of a useful article] that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.”[1]

In the fashion world, this provision of the Copyright Act allows companies to protect original pictorial, graphic or sculptural features that are applied to garments, bags and other accessories.  Examples include: fabric designs like a floral pattern; graphic art like an artistic rendition of a snake or tiger; and sculptural 3-D hardware adornments like belt buckles or buttons.  Copyright protection only covers the artwork itself, not the overall configuration of the garment or other product to which it is applied.[2]

For decades, courts and commentators have struggled to fashion a suitable test to determine when a pictorial, graphic or sculptural feature of a useful article (such as a garment) is protectable under § 101 of the U.S. Copyright Act.  On March 22, 2017, in a 6-2 decision written by Justice Thomas, the Supreme Court provided long-awaited clarification.  Much to the relief of the fashion industry, the Court adopted a test that preserves copyright protection for applied art to apparel and fashion accessories.

Continue Reading V-I-C-T-O-R-Y for the Fashion Industry: SCOTUS Establishes Uniform Test for Protection of Artistic Works Applied to Apparel

In working with brand owners large and small, I find a surprising number of instances where independent contractors are hired to create content without a proper work for hire or other agreement to protect the company. In the rush to complete projects, get product to market and move on to the next task, even sophisticated brand owners often neglect to obtain the appropriate work for hire or assignment agreements from contractors who create photographs, graphic designs, web design, text and logos.

A recent case in New York demonstrates that independent contractors can and will contest a company’s ownership of such copyrightable works. In Buday v. New York Yankees Partnership, the niece of a man who designed the Yankee’s Top Hat Logo claimed (among other things) that her uncle retained all copyrights in the design and the Yankees’ use infringed upon those rights. Luckily for the Yankees, Ms. Buday’s copyright claims were dismissed by the Second Circuit on the bases of formalities and the employer-friendly work for hire provisions of the 1909 Copyright Act, which governs works made at the time the logo was created.

Nevertheless, this case should be a cautionary tale for brand owners, particularly because the work for hire requirements of the 1976 Copyright Act (which apply to all works created today), include provisions which presume ownership by the independent contractor in the absence of an appropriate written agreement to the contrary. Only certain categories of works are eligible for work for hire status, and a company cannot claim it owns a graphic or other work without a written work for hire agreement.

Brand owners: listen to your copyright attorneys, they are not just being overcautious! You must ensure you have the appropriate agreements in place, particularly for brand logos, product packaging, and advertisement graphics, because everyone is not as “lucky” as the NY Yankees. (Just ask my husband, who is a Boston fan!)

Just when you thought domain name enforcement couldn’t get more expensive, ICANN presents: the New gTLDs! Starting January 12, 2012, ICANN began accepting applications for new generic top level domain ("gTLD") names, only now some will not be so "generic." In addition to the gTLDs we are familiar with, such as .com, .org, .net, and .mobi, available gTLDs may include brand names such as ."kelleydrye. " or ".yourbrand," or community or industry identifiers such as ".beauty" or ".basketball."

Even if your company decided not to apply for a new gTLD, there are important steps you should take to protect your company’s brands.

  • On June 13, 2012, ICANN is scheduled to publish information regarding the new gTLD applications, including who filed applications and which .brand or .generic strings each seeks to register.
  • Brand owners and other potentially affected parties have a limited time to raise concerns and objections regarding a gTLD application after the publication date via ICANN’s dispute resolution procedures and Public Comment Period.

All brand owners should prepare themselves accordingly:

Continue Reading Brand Owners Take Note: New Domain Names Mean Big Changes