More clarity on “normal use” in EU design law
The Court of Justice of the European Union has offered some clarity on what may be deemed ‘normal use’.
Beach-themed backing dancers stole the spotlight from Katy Perry at the recent US Superbowl, leaving the singer at the centre of a dispute over copyright.
The dancers, dressed as sharks, became a viral sensation as the “Left Shark” in Perry’s beach-themed half-time show didn’t seem to know the dance moves. The awkward shark has even appeared on talk shows and is becoming an American star!
Replica figurines of the “Left Shark” have been sold online by a number of vendors, most notably by Fernando Sosa. Sosa, designer of 3D images and figurines, was the recipient of a cease and desist letter sent by Perry’s representatives.
The letter demanded that Sosa remove the products from his website, turn the merchandise over and ‘provide a complete accounting for all of the revenue received’ from the sharks. The letter also claimed that Perry owns all shark images and costumes that were depicted in the half-time show. It stated that any representation of the shark without Perry’s approval would be a violation of her intellectual property rights.
Sosa sought representation to defend his position and even created more varieties of the shark. Sosa’s representatives replied to the letter demanding answers to several questions, including how Perry could own copyright in a shark costume. The reply also suggested that if someone did indeed own copyright in the costume, it would likely be the designer behind the creation of the shark, not Perry.
The retort also claimed that outfits or costumes are not easily protected by copyright, thus it is questionable whether the shark costumes are subject to copyright at all.
In the UK under the Copyright, Designs and Patents Act, copyright can subsist in various types of works, including artistic works such as graphic designs. The owner of that copyright is generally the person who created it, unless they were an employee creating the work in the course of employment or there is an agreement otherwise. The owner’s copyright in a work is infringed by a person who performs certain restricted acts, without licence or authorisation, including making copies of the work. This can include making 3D copies of an artistic work.
In this case, Perry’s ownership of the copyright, and therefore her right to enforce the copyright, has been questioned.
The onus is on Perry’s representatives to show that (1) copyright subsists in the shark costume (which has been questioned); (2) that the copyright was owned by Perry (which has also been questioned); and (3) that the work has been copied by Sosa without licence or authorisation.
At the time of writing we understand that Perry’s lawyers have not replied to Sosa’s response, perhaps because the burden in pursuing the allegations is high.
Notably, however, Perry’s representatives have now taken a different approach to seeking rights in this Internet sensation. US trade mark applications have been filed for ‘LEFT SHARK’, ‘RIGHT SHARK’, ‘DRUNK SHARK’ and ‘BASKING SHARK’. This highlights the various options available to protecting intellectual property.
It will be interesting to see whether the trade marks are accepted by the US Patent & Trademarks Office, and whether Perry’s representatives subsequently try to enforce them.