Litigation

Supreme Court Rules That Elements of Apparel Design are Copyrightable

In a closely watched case, the U.S. Supreme Court ruled today that decorative elements of a cheerleading uniform can be protectable by U.S. copyright law.  The opinion was much anticipated because clothing has generally been considered to be a “useful article” that is not subject to copyright.  This issue has not been squarely addressed by the Supreme Court before today and lower courts were in, as the Court put it, “widespread disagreement” on the proper standard to apply.

The majority opinion was written by Justice Thomas and joined by four other justices.  Justice Thomas’ opinion held that an element of clothing could be protected if it “can be perceived as a two- or three-dimensional work of art separate from the useful article” and it would qualify for copyright “if it were imagined separately from the useful article into which it is incorporated.”  The Court found that the designs represented on the surface of the cheerleading uniform could meet that standard in principle.  (The Court demurred on the issue of whether the particular designs in question are actually sufficiently original to be copyrightable and limited its ruling to surface designs in general.)

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HBA Litigation Group Successfully Fends Off Attempt to Enjoin Use of the “New York Fashion Week” Name

In a case involving the signature events in American fashion, HBA litigators fended off a motion for a preliminary injunction that would have prevented HBA’s client the Council of Fashion Designers of America (the “CFDA”) from using the New York Fashion Week name.

New York Fashion WeekFashion Week, Inc. (“FWI”) presents fashion shows to consumers, unlike than the shows directed to the fashion industry and media that have long been the foundation of New York Fashion Week.  After using other names to put on its shows, FWI obtained a trademark registration on the Supplemental Register for the term “New York Fashion Week” in 2014.  FWI began using that name even though it only put on one show at a time, taking place on only one day.

As it had for many decades, the CFDA had continued to use the New York Fashion Week name to promote the fashion events that it had scheduled, including the semi-annual women’s fashion events.  But on June 28, 2016, FWI brought a lawsuit and motion for a temporary restraining order against the CFDA and co-defendant WME IMG LLC (“IMG”) claiming that the defendants’ use of the trademarks NEW YORK FASHION WEEK and NYFW infringed FWI’s claimed rights to those marks.  On the next day, Judge John G. Koeltl of the United States District Court for the Southern District of New York held that FWI had not made the requisite showing of irreparable harm and set a briefing schedule for FWI’s preliminary injunction motion to be heard on August 4, 2016.

In response to that motion, the CFDA argued that:  (1) FWI’s long delay in bringing its motion – roughly 18 months – negated any claims of irreparable harm; (2) FWI had not developed any trademark rights to NEW YORK FASHION WEEK and NYFW because it had no registrations on the Principal Register and could not make any showing that consumers identified those marks with FWI; and (3) the CFDA had prior trademark rights to the NEW YORK FASHION WEEK and NYFW trademarks because of its prior use of those trademarks and the public association of them with the CFDA.  In support of the last point, the CFDA submitted substantial evidence of media coverage, testimony from industry professionals, and even FWI’s own promotional materials that used those trademarks to refer to the CFDA’s events rather than FWI’s.

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