Copyright Protection Proposed for Fashion Designs

Under current law, fashion designs and patterns are not protected from infringement by the Copyright Act. Instead, they are considered “useful designs” that are beyond the scope of the current Act. Recent legislation proposed in the House, however, seeks to change this by amending Chapter 13 of the Copyright Act and extend copyright protection for limited purposes and a limited term. Design Piracy Prohibition Act, H.R. 2196, 111th Congr. (proposed April 30, 2009).

Provisions of H.R. 2196

H.R. 2196 was proposed by Rep. William D. Delahunt (D-MA), and co-sponsored by 23 other members of the House. It proposes to amend 17 U.S.C. § 1301 (and following), and to extend limited protection to all clothing, including “undergarments, outerwear, gloves, footwear and headgear” as well as various accessories and luggage (namely “handbags, purses, wallets, duffel bags, suitcases, tote bags and belts”) and frames for eyeglasses. H.R. 2196 § 2(a)(2)(B).

Rather than providing blanket copyright protection as you might find for an original literary work (e.g., a book), this bill proposes that copyright protection would only last for three years beginning on the date of publication of the registration or the date on which the design is first made public, whichever is earlier. Id. § 2(d); 17 U.S.C. § 1304 (determining when protection begins). The bill defines an “infringing article” as one for which “the design . . . has been copied from a design protected under this chapter, or from an image thereof, without the consent of the owner of the protected design.” H.R. 2196 § 2(e). Importantly, however, the bill excludes the following from this definition: “an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture or similar medium.” Id. 2(e)(2). Presumably, these “copies” are permitted, at the least, for advertising or marketing purposes.

There is also a carve-out for designs that are independently created, reflect a “trend” or if they are “not closely and substantially similar in overall visual appearance to a protected design.” Id. A “trend” is further defined as “a newly popular concept, idea or principle expressed in, or as part of, a wide variety of designs of articles of appear that create an immediate amplified demand for articles of apparel embodying that concept, idea or principle.” Id. § 2(a)(2)(B).

Unlike other provisions in the Copyright Act, in order to obtain copyright protection for fashion designs, this bill requires an owner to apply for registration within six (6) months of making the design available to the public either in the U.S. or another country. Id. § 2(f)(1). Failure to apply for registration within that narrow window of time will eliminate the designer’s ability to sue under copyright law relating to copies of that specific design. Id.

The bill also anticipates that the Copyright Office would provide free public access to a database cataloging all of the fashion designs that have been registered under this provision. Id. § 2 (j); id. § 2(j)(a)(3). In order for this to be effective, owners must provide a “brief description of the design for purposes of matching the search criteria of the searchable database . . . [but this description] shall in no way limit the protection granted to the design or the subject matter of the registration.” Id. § (f)(3). The database will also contain a “substantially complete visual representation of all fashion designs submitted for registration under this chapter” as well as certain objective information. Id. § 2(j).

This bill also increase certain penalties for filing for protection inappropriately, so that the current statute would be revised to read: “Whoever knowingly makes a false representation materially affecting the rights obtainable under this chapter for the purpose of obtaining registration of a design under this chapter shall pay a penalty of not less than $5,000 [current amount is $500] and not more than $10,000 [current amount is $1,000], and any rights or privileges that individual may have in the design under this chapter shall be forfeited.” Id. § 2(h); see also 17 U.S.C. § 1327 (emphasis added).

If enacted, this bill would have immediate effect. Id. § 3.

Prior Proposals

In 2006, the Copyright Office presented a written statement to the House Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, explaining why the limitations proposed in the then-current bill (H.R. 5055, 109th Congr., 2d Sess., introduced March 30, 2006) might be acceptable. Statement, July 27, 2006. (“The Office believes that if Congress concludes that fashion design protection legislation should be enacted, H.R. 5055 provides a sound basis for balancing competing interests.”). For instance, the Copyright Office applauded the 3-year limitation to protection proposed by the bill:

“Because the peak demand for such [high-fashion] designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer's reasonable expectation of exclusivity. . . . The Office applauds the proponents of fashion design legislation for seeking a modest term of protection that appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely be harmed by the sale of infringing goods. The Office would find it difficult to support fashion design legislation that offered such protection for the 10-year term enjoyed by vessel hull designs, but considers the 3-year term to be reasonable, assuming that the proponents of the legislation are able to make the case for protection.” Id.

The Statement outlines in detail prior proposals seeking protection for fashion and industrial designs, dating back to 1914. Id. Hearings were held about H.R. 5055 on July 27, 2006, but the bill was not enacted before the end of the session.

Current Status of H.R. 2196

Upon introduction on April 30, 2009, the bill was referred to the House Committee on the Judiciary.

When is a Fictional Character Copyrightable?

Until recently, there was no easy answer to this question, except to say, “it depends on how well defined the particular character is.” On June 17, 2009, however, a federal district court in New York considering J.D. Salinger’s motion for a temporary restraining order blocking the publication and distribution of a “sequel” to his 1951 classic Catcher in the Rye ruled from the bench during oral argument that the character of Holden Caulfield is copyrightable on its own. (The Court’s opinion is not yet available through PACER, although many articles have reported the nature of the Court’s opinion in granting the TRO; the formal opinion apparently will be filed within the next 10 days.) See, e.g., Ashby Jones, “Judge Halts Publication of ‘Catcher’ Sequel, For Now,” Wall Street Journal Law Blog, June 17, 2009.

J.D. Salinger’s Complaint

On June 1, 2009, J.D. Salinger filed suit against “John Doe, writing under the name John David California,” two publishers (Windupbird Publishing Ltd. and Nicotext A.B.) and a distributor (ABP, Inc. d/b/a SCB Distributors, Inc.) alleging two counts of copyright infringement and a count of unfair competition. Salinger v. Doe, et al., No. 09-CV-5095 (S.D.N.Y.). Salinger’s claims center around the anticipated publication in the U.S. of a book called, 60 Years Later: Coming Through the Rye.

According to the Complaint, the author of the book calls it a “Sequel,” telling the story of Holden Caulfield at the age of 76, leaving a nursing home to wander around New York City. Salinger alleges numerous similarities to his original Catcher in the Rye -- in terms of style and narration of the book, as well as the use and further development of his character, Holden Caulfield, about whom Salinger apparently did not write again after the original book was published. Salinger Complaint ¶ 37 (“J.D. Salinger has not published or authorized the publication of any new narrative for Holden Caulfield since the first publication of The Catcher in the Rye in 1951, and has expressly and publicly stated that he will not do so.”).

Salinger has apparently been approached several times over the years to seek his permission for the right to create other stories based on the Holden Caulfield character, and has declined the requests. A. G. Sulzberger, “Holden Caulfield, a Ripe 76, Heads to Court Again,” New York Times, June 16, 2009. He similarly refuses to grant the right to create any film version of the story. Salinger Complaint ¶ 39 (referencing requests by Harvey Weinstein and Steven Spielberg for the film rights and quoting his 1980 public statement: “There’s no more to Holden Caulfield. Read the book again. It’s all there. Holden Caulfield is only a frozen moment in time.”)

The two copyright claims in the Complaint allege that any further story about Holden Caulfield – especially when told in an environment in which the sequel’s author conceded that he’s telling the story of the same Holden Caulfield, simply older – is copyright infringement of the statutorily-protected character. Id. ¶¶ 66-75. In a similar vein, the Complaint alleges that telling a new story based on the old book is an unauthorized derivative work (a separate violation of the Copyright Act), infringing Salinger’s exclusive rights to create derivative works from his original text. Id. ¶¶ 76-83.

The particularly unique aspect about this case is that during the hearing seeking the temporary restraining order, the Court was apparently receptive to recognizing copyright rights in a character who is depicted in a single novel. See Mark Hamblett, “Federal Judge Mulls Copyright Status for Salinger’s Holden Caulfield,” New York Law Journal, June 18, 2009 (available at http://www.law.com). According to the article, the Judge said the following during the TRO hearing: “It is hard to separate Holden Caulfield from the book. . . . It would seem that Holden Caulfield is copyrightable. . . . Let’s imagine taking Holden Caulfield out of the book – there’s nothing left.” Hamblett, at 2.

Prior Rulings (Nationwide)

Fictional characters who are depicted consistently in graphic form (as well as through the narrative of the story) receive more protection from copying than those who are merely described in text. By way of example, consider a 1970s case in which defendants had created adult comic books featuring the Disney characters in ways that were clearly unauthorized. Disney sued, claiming copyright infringement of the characters. The Court conceded that while literary characters were not copyrightable (they “were merely vehicles for the story” to be told), comic book characters were different and could achieve copyright protection. Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978) (considering the potential infringement of seventeen Disney characters, including Mickey Mouse); compare with Warner Bros. Pictures, Inc. v CBS, Inc., 216 F.2d 945 (9th Cir. 1954) (concluding that Sam Spade and other literary characters were not protectable by copyright law because they were “mere vehicles” to tell the story). Specifically, the court explained:

“[I]t is difficult to delineate distinctively a literary character. . . . When the author can add a visual image, however, the difficulty is reduced. . . . Put another way, while many literary characters may embody little more than an unprotected idea . . . , a comic book character, which has physical as well as conceptual qualities, is more likely to contain some unique elements of expression.”

Id. at 755 (9th Cir. 1978) (citations omitted).

Moreover, courts considering these issues have also focused on repetitive appearances of the characters at issue – for instance, in stories that are part of a series in which the exact same character, described the same way, with the same name appears over and over with new adventures. This was true whether the story was captured in:

* a Sunday paper comic strip (Nat'l Comics Pub., Inc. v. Fawcett Pub., Inc., 191 F.2d 594 (2d Cir. 1951) – Superman versus Captain Marvel)
* a comic book series (Detective Comics, Inc. v. Bruns Pubs., Inc., 111 F.2d 432 (2d Cir. 1940) ­– Superman versus Wonderman)
* a series of movies highlighting the exploits of a master spy (Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., Inc., 900 F. Supp. 1287 (C.D. Cal. 1995) – James Bond); or
* a series of TV episodes devoted to the antics of a reluctant superhero (Warner Bros. Inc. v. ABC, Inc., 720 F.2d 231 (2d Cir. 1983) – The Greatest American Hero, Ralph Hinkley/Hanley).

Generic Character Components

Under U.S. Copyright Law, generic story components – such as a damsel in distress, a villain, or a dashing hero – are not capable of copyright protection. They are merely ideas, and not copyrightable expression; anyone can create new stories about them without fear of infringing a prior work. Also referred to as “scenes à faire,” this doctrine “in general, excludes from copyright protection material that is ‘standard,’ ‘stock,’ or ‘common’ to a particular topic, or that ‘necessarily follow[s] from a common theme or setting.’” Madrid v. Chronicle Books, 209 F. Supp. 2d 1227, 1242 (D. Wyo. 2002) (quoting Autoskill v. Nat’l Ed. Support Sys., Inc., 994 F.2d 1476, 1494 (10th Cir. 1993)).

The statute also makes it clear: copyright protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). This was true even before the current version of the Copyright Act was passed. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir.1936) (“Generalized themes and ideas lie in the public domain and are not copyrightable.”).

As a result, it is arguable whether many of Holden Caulfield’s characteristics that Salinger claims in his Complaint are protectable. Given the Court’s ruling from the bench on June 17, it will be interesting to see how the Court characterizes the following features of the Holden Caulfield character that Salinger claims are unique:

* Being “a disaffected 16-year old boy” who is “kicked out of prep school” (Salinger Complaint ¶ 16)
* Lacking a particular goal (Id. ¶ 18);
* Narrating the story in an “extremely casual” tone, “filled with slang” (Id. ¶ 19);
* Addressing the reader directly, “leaning toward a stream of consciousness” (Id. ¶ 20);
* “Prone to digressions” (Id. ¶ 22);
* Being an “angst-filled cynic” (Id. ¶ 24);
* Having a “slang-peppered vocabulary” (Id.);
* Being a liar (Id.);
* Being “quick to criticize” (Id. ¶ 25);
* “Feel[ing] disconnected from most of those around him” (Id. ¶ 26); and
* “Fixat[ing] on many ideas” and “repeat[ing] himself” in the narration of the story (Id. ¶ 27).

See also id. ¶¶ 57, 59 and 61 (comparing characteristics of the protagonist in the Sequel with Holden Caulfield). Perhaps the Court will opine that collectively, these features form a single, recognizable and unique character capable of separate protection under the Copyright Act.

If the Court’s opinion sets forth a strong basis for protecting a literary character that appears in a single work of fiction (instead of merely holding that this character qualifies for protection), it will undoubtedly be an interesting read.

Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security

On June 4, 2009, the House passed H.R. 2200, the Transportation Security Administration Authorization Act, which authorized various programs of the TSA. There are at least two House Reports that analyzed the impact and scope of the bill, but the minute details of each are largely beyond the scope of this post. See H.R. Rep. No. 111-123 (May 19, 2009); H.R. Rep. No. 111-127 (May 21, 2009).

Instead, of particular importance was Amendment No. 10 (H. AMDT. 172), introduced on June 4, 2009, by Rep. Jason Chaffetz (R-UT). Cong. Rec. H6206 (daily ed. June 4, 2009); see also id. H6208 (Rep. Chaffetz’s arguments in further support of the Amendment). The Amendment proposed limitations on the use of Whole Body Image (WBI) scanners at airport security checkpoints as a primary screening method, and recommended that travelers be given the option to have a pat-down search instead, unless other primary screening methods identify the person as a potential security risk.

Key Provisions (from a Privacy Perspective) of the Amendment

The key sections of this Amendment are:

(2) PROHIBITION ON USE FOR ROUTINE SCREENING.—Whole-body imaging technology may not be used as the sole or primary method of screening a passenger under this section. Whole-body imaging technology may not be used to screen a passenger under this section unless another method of screening, such as metal detection, demonstrates cause for preventing such passenger from boarding an
aircraft.

(3) PROVISION OF INFORMATION.—A passenger for whom screening by whole-body imaging technology is permissible under paragraph (2) shall be provided information on the operation of such technology, on the image generated by such technology, on privacy policies relating to such technology, and on the right to request a pat-down search under paragraph (4) prior to the utilization of such technology with respect to such passenger.

(4) PAT-DOWN SEARCH OPTION.—A passenger for whom screening by whole-body imaging technology is permissible under paragraph (2) shall be offered a pat-down search in lieu of such screening.

(5) PROHIBITION ON USE OF IMAGES.—An image of a passenger generated by whole-body imaging technology may not be stored, transferred, shared, or copied in any form after the boarding determination with respect to such passenger is made.

Cong. Rec. H6207 (daily ed. June 4, 2009). These amendments were proposed as modifications to 49 U.S.C. § 44901.

House Reports Analyzing Proposed Legislation & Amendments

House Report 111-127 discusses the various amendments to the Bill, and provides another source of the text of the amendment. H.R. Rep. No. 111-127 (May 21, 2009). House Report 111-123 is also available and worth reading for its concise summary of the purpose of the bill. H.R. Rep. No. 111-123 (May 19, 2009).

Arguments in Support of the Amendment

Rep. Carol Shea-Porter (D- NH) co-sponsored the amendment and spoke in support of its adoption:

“When this full-body imaging technology was first introduced, the TSA said that it would only be used as a secondary screening method for those people who set off the metal detectors. Now it has become very clear that the TSA intends for this technology to replace metal detectors at airports all over the country. The New York Times reported as much in an April 7, 2009, article.

“The Chaffetz/Shea-Porter amendment would ensure that full-body imaging remains a secondary screening method. It would also ensure that the people who do go through it are well informed and are given the option of a pat-down.

“Mr. Chair, we do not take this amendment lightly. As a member of the Armed Services Committee, I am very aware of the security threats that are facing our country. We, too, want to ensure that the Department of Homeland Security and the TSA have the tools they need to prevent future terrorist attacks. However, the steps that we take to ensure our safety should not be so intrusive that they infringe upon the very freedom that we aim to protect.

“Two weeks ago, I went to Washington National Airport to view one of these machines. I saw how the technology is being used. I saw the pictures it produces and the inadequate procedures TSA has put into place to protect our privacy. The images are incredibly revealing as I will show you here. This is a gross violation of a person's right to privacy. It is also illogical because, if we allow this intrusion into our lives, then there should be this same scan at every single train station, at every building that we enter and on every single bus that we board.

So I ask that my fellow Members join me in voting for this resolution and for this amendment.”

Cong. Rec. H6207 (daily ed. June 4, 2009).

In response to the opposition raised during the session (quoted in detail below), Mr. Chaffetz argued in favor of the Amendment:

“Whole-body imaging does exactly what it's going to do. It takes a 360-degree image of your body. Now, I want to have as much safety and security on the airplanes I'm flying every week, but there comes a point in which in the name and safety and security we overstep that line and we have an invasion of privacy. This happens to be one of those invasions of privacy.

“Now I understand why the gentleman from California expressed his concern. Let me be clear that this amendment on whole-body imaging only limits primary screening. It can be used for secondary screening. You may get people with artificial hips or knees or something else, and they may elect this kind of screening. It's perfect for them.

“But to suggest that every single American--that my wife, my 8-year-old daughter--needs to be subjected to this, I think, is just absolutely wrong. Now, the technology will actually blur out your face. The reason it does this is because there is such great specificity on their face, that they have to do that for some privacy. But down in other, more limited parts you could see specifics with a degree of certainty that, according to the TSA as quoted in USA Today, ‘You could actually see the sweat on somebody's back.’ They can tell the difference between a dime and a nickel. If they can do that, they can see things that, quite frankly, I don't think they should be looking at in order to secure a plane. You don't need to look at my wife and 8-year-old daughter naked in order to secure that airplane.

“Some people say there is radio communication. There is distance. Well, it's just as easy to say there is a celebrity or some Member of Congress or some weird-looking person. There is communication.

“You say you can't record the devices. Many of us have mobile phones or have these little cameras. There is nothing in this technology that would prohibit the recording of these. With 45,000 good, hardworking TSA employees, 450 airports, some two million air traffic travelers a day, there is inevitably going to be a breach of security. And I want our planes to be as safe and secure as we can, but at the same time, we cannot overstep that bound and have this invasion of privacy.

“I urge my colleagues to vote in support of this amendment.”

Cong. Rec. H6208 (daily ed. June 4, 2009).

Arguments in Opposition to the Amendment

Rep. Charles Dent (R-PA) argued in opposition to the amendment, but noted that his opposition was reluctant – favoring the heightened need for security over a slight risk to an individual’s privacy rights:

“Just yesterday, I visited Reagan National Airport and took a look at the whole-body imaging machines over there, and I just have to say a couple of things about this.

“I was impressed by the technology. It seems that we have a great deal of satisfaction from passengers who utilize that type of screening. There are limitations to the magnetometer. A magnetometer can pick up metallic items, like keys, but other prohibited items, like liquids and C4 for potential explosives, will be detected under the whole-body imaging technology but not under a magnetometer. So I do believe that this technology is valid.

“As for the privacy concerns that have been raised, while I understand them, I think they have been overstated. There are strong, strong restrictions in place to make sure that those individuals, the transportation security officers who actually help the passengers go through the whole-body imaging scanning, are not in contact with the person who is actually viewing the image. Those people are in a separate room, so they're separated. The face of the individual is also blurred, so that's another protection.

“So I do think that this technology is very valuable. It will help make us safer. Again, I think it is a step in the right direction. So I would reluctantly oppose the amendment. I understand the concerns expressed, but nevertheless, I feel that this technology is valuable and that it enhances security.”

Cong. Rec. H6207 (daily ed. June 4, 2009).

Rep. Daniel E. Lungren (R-CA) opposed the amendment, but without suggesting any reluctance in his opposition:

“I happen to be one of those people who happens to have an artificial hip. Every time I go through, I set off the screener. Every time I go through, I get hand-patted down, and even though they do it in a very nice way, frankly, that's far more intrusive than going out to the Reagan National Airport and going through that particular system that we're talking about with those pictures.

“We have been working for many years since 9/11 to try and come up with devices which will allow us to be able to detect those kinds of things that, if brought on airliners, would be a threat to all passengers. The whole-body imaging technology, which this amendment seeks to stop in terms of its application as a primary means of screening, can detect many things such as small IEDs, plastic explosives, ceramic knives, and other objects that traditional metal detection cannot detect. Let me underscore that: this device that this amendment seeks to take off the table as a primary means of screening can detect small IEDs, plastic explosives, ceramic knives, and other objects that traditional metal detection cannot detect. That ought to be enough for us to understand this.

“If you look at the privacy questions, let's be clear: the person who actually is there, the employee of TSA who is there when you go through this machine, is not the one who reads the picture. That person, he or she, is in another room--isolated. They never see you. They actually talk to one another by way of radio. So this idea that somebody is sitting in this little room, waiting to see what you look like, frankly, is sort of overblown.

“All I can say is this: I have been through many, many pat-downs because I happen to have an artificial hip. Going through this at Reagan National Airport was so much quicker so less intrusive of my privacy than what we go through now. For us to sit here now and to pass an amendment which is going to stop this development and application, frankly, I think, is misguided.

“With all due respect to the gentleman from Utah, who I know is sincere about that, and to the gentlewoman, who is also sincere, I would ask you to rethink this. From my experience, this is far more protective of my privacy than what I have to go through every time I go to the airport, number one; but more importantly, it protects me and every other passenger to a greater extent than any other procedure we have now. We aren't doing this because we want to do it. We're doing it because we have people around the world who want to kill us, who want to destroy our way of life, and they have utilized commercial airliners for that purpose in the greatest attack in our Nation's history since Pearl Harbor.

“This is a device which helps us take advantage of our technological know-how to gain an advance on the enemy. I would hope we would not do this by way of this amendment.”

Cong. Rec. H6207 – H6208 (daily ed. June 4, 2009).

Current Status of the Bill and Amendment

Initially, the Amendment failed – as recorded by voice vote at 3:00 p.m. on June 4, 2009. (Cong. Rec. H6208). Mr. Chaffetz demanded a record vote, and the vote was postponed until later the same day. Id. Shortly after 4:00 p.m, the amendment passed by a vote of 310 - 118.

The full text of the Amendment can be found in the following places: Cong. Rec. H6206 (daily ed. June 4, 2009); and H.R. Rep. No. 111-127 (May 21, 2009). Text of the bill and the amendments can also be found by checking the current status of either one – they are cross-linked.

The full Bill (H.R. 2200), as amended, passed the House by a record vote of 397 – 25. Cong. Rec. H6216 (daily ed. June 4, 2009). Presumably, this Bill will now travel to the Senate for re-introduction under a new Bill number and further debate.