Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Baker Daniels LLP; ...
• Pages: 58-62

Published in Landslide® magazine, Volume 12, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

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Decisions in Brief

COPYRIGHTS By John C. Gatz

A Registration Is Required

Xclusive-Lee, Inc. v. Hadid, No. 19-CV-520, 2019 U.S.P.Q.2d

265437 (E.D.N.Y. July 18, 2019). Jelena Noura “Gigi” Hadid

is a well-known international supermodel modeling for major

fashion brands such as Fendi and Stuart Weitzman. She was

sued for copyright infringement for uploading a cropped ver-

sion of a photograph of herself allegedly owned by Xclusive

(a paparazzi photographer). Hadid moved to dismiss the com-

plaint on the basis that Xclusive failed to allege or obtain a

copyright registration in the photograph. The district court

agreed with Hadid and dismissed the complaint.

At the time the complaint was led, Xclusive had sub-

mitted an application for registration of the photograph with

the U.S. Copyright Ofce, but the registration had not yet

issued. It is a statutory requirement under the Copyright Act

that a plaintiff must obtain registration of a work before l-

ing a lawsuit based on infringement of the same work. The

U.S. Supreme Court recently claried in Fourth Estate Pub-

lic Benet Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881,

887 (2019), that registration occurs only when the Copyright

Ofce grants registration; the ling of an application is not

enough. The district court found that because Xclusive did

not have a registration at the time it led the complaint, Xclu-

sive had not met the statutory requirement for bringing a suit.

Banana Costumes Are Copyrightable

Silvertop Associates Inc. v. Kangaroo Manufacturing Inc.,

No. 18-2266, 2019 U.S.P.Q.2d 285853 (3d Cir. Aug. 1, 2019).

Appellee Silvertop (d/b/a Rasta) and appellant Kangaroo both

sell costumes. Rasta obtained a copyright registration for its

full-body banana costume. Rasta became aware that Kan-

garoo was selling a banana costume that closely resembled

its costume and sued Kangaroo for copyright infringement,

among other causes of action. Rasta moved for a prelimi-

nary injunction. The district court granted the preliminary

injunction and Kangaroo appealed to the Third Circuit on

the grounds that the injunction should not have been issued

because Rasta is not likely to succeed on the merits.

On appeal, Kangaroo asserted that Rasta did not have a

valid copyright claim in the banana costume. The Third Circuit

rst looked at whether the nonutilitarian, sculptural features of

the costume are copyrightable using the reasoning set forth in

the Supreme Court decision of Star Athletica, L.L.C. v. Varsity

Brands, Inc., 137 S. Ct. 1002 (2017). The Third Circuit then con-

sidered whether the merger or scenes a faire doctrine renders the

costume unregistrable. The Third Circuit ultimately concluded

that Rasta is likely to be able to prove a valid copyright in its

banana costume. Specically, the Third Circuit determined that

Rasta’s costume is a “useful article.” The Third Circuit explained

that the costume’s colors, lines, shape, and length are all artistic

and protectable features under the copyright law.

The Third Circuit construed Kangaroo’s invocation of the

merger and scenes a faire doctrines into the single question

of whether registering the banana costume would essentially

monopolize an underlying idea, which here would be the

concept of a banana as a costume. Because there are a multi-

tude of ways to create and portray a banana costume, the Third

Circuit found that a copyright claim in Rasta’s costume would

not monopolize such an idea. In fact, Rasta provided over 20

examples of other banana costumes that it found noninfringing,

which the Third Circuit used to support its conclusion.

Errors on Copyright Registration Not Sufcient to

Invalidate Copyright

Universal Dyeing & Printing, Inc. v. Knitwork Productions

II, LLC, No. 2:17-cv-05660, 2019 U.S.P.Q.2d 237269 (C.D.

Cal. June 25, 2019). Universal is a company that makes and

sells fabrics. Universal registered copyrights in a number of

designs in 2010 and 2013, including two copyright registra-

tions asserted against Knitwork. The 2010 registration had an

error where the designs deposited for two applications were

switched. Universal led for a supplementary registration to

correct the description of the deposited design, so the supple-

mentary registration matched the deposited article. The 2013

application contained 15 designs as a single work registra-

tion; however, some of the designs included public domain

elements, and other designs had been purchased from another

entity. The 2013 application did not include this information.

Universal led a supplementary application to correct the 2013

registration. Knitwork moved for summary judgment that the

copyrights were invalid based on Universal trying to defraud

the Copyright Ofce with the errors in the applications.

The district court denied Knitwork’s motion for summary

judgment. Starting with the 2010 registration, the district

court determined that Universal did not change the deposit

of the 2010 application in a way prohibited by 37 C.F.R.

§ 202.6(d)(4)(ii), but instead amended the information of the

registration to match what was deposited. Additionally, the

district court found that Knitwork failed to show any evi-

dence that the mistakes in Universal’s 2010 application were

made intentionally. Turning to the 2013 application, the dis-

trict court found that there was no evidence that the asserted

design had been published before the ling of the applica-

tion, so the fact that some of the designs had been previously

published did not invalidate the copyright to the previously

unpublished designs. The district court further found that

the failure to disclose in the original application that certain

designs contained public domain materials and that some

designs were assigned to Universal were mistakes that could

be corrected by a supplementary application.

Knowing False Information in Copyright

Registration Can Lead to Invalidation

Gold Value International Textile, Inc. v. Sanctuary Clothing,

LLC, 925 F.3d 1140 (9th Cir. 2019). Gold Value (d/b/a Fiesta)

sued Sanctuary and other clothing retailers (collectively Sanctu-

ary) alleging that Sanctuary copied its fabric design. Sanctuary

counterclaimed, asserting invalidation of Fiesta’s copyright reg-

istration. The district court granted summary judgment in favor

of Sanctuary, nding Fiesta’s registration invalid because Fiesta