Posted On: December 12, 2012

Ivanka Trump Sued For Copying Sandals By Mystique Footwear - Copyright Infringement

copyright-attorney-infringement-shoes-sandals-ivanka-trump-mystique-lawsuit.jpgMystique, a shoe and sandal manufacturing company, filed a copyright infringement and unfair competition claim against Ivanka Trump for allegedly copying two sandal designs. Mystique created and registered with the US Copyright Office its ornamental designs affixed to sandals titled “By the Sea – Style 3323” and “Starry Eyed – Style 4179.” Mystique contends that Trump’s “Pia” and “Pandra” sandals are substantially identical copies of Mystique’s shoe designs: “Defendants’ acts are willful, deliberate and committed with prior notice and knowledge of Plaintiff’s copyrights. At a minimum, Defendants were willfully blind and in reckless disregard of Plaintiff’s copyrights.”

This isn’t the first time Trump’s been accused of pilfering another company’s shoe design. Fashionista covered Derek Lam’s scandalous sandal copying allegations against Ivanka Trump, but it appears the response to Lam’s cease and desist letter was to go pound sand because Lam did not have proper intellectual property protection and the shoe design had been previously produced by numerous third parties. My loyal readers will say: “Wait a minute, you’ve told us that copyright law views fashion products, for example pursues and shoes, as useful articles that cannot be copyrighted. So how was Derek Lam supposed to protect his sandal design.”

Other loyal readers will – I hope – respond with DESIGN PATENTS! Unlike UGG shoes, however, many fashion designers are unaware that fashion designs can be protected through design patents, which must be filed within one year of the design’s public disclosure. Without a design patent, it appears that Derek Lam was attempting the tougher climb of proving trade dress infringement against Trump.

Some loyal readers will now state: “Wait another minute, if sandals are useful articles not protectable through copyright law, how in the world is Mystique filing a copyright infringement complaint against Trump?” As you can see from the sandal pictures, the stars and sea horses are separable design elements that are copyrightable subject matter and form the basis of the copyright infringement complaint. See Chosun Int'l v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005) (“individual design elements of useful articles are afforded some level of protection under the Copyright Act, so long as those design elements are physically or conceptually separable from the article itself.”)

The takeaway for new readers should be to patent clothing and shoe designs that lack separable design elements. And if you’ve failed to do so within one year from the date of public disclosure, your fallback position is a trade-dress infringement claim as filed by Givenchy v. BCBG and Marc Jacobs v. Christian Audigier.

In addition to the copyright infringement claims, Mystique asserts a cause of action for unfair competition under California law, which appears to be preempted by the Copyright Act because it is based on the same set of copyright infringement facts. Xerox Corp. v. Apple Computer, Inc., 734 F.Supp. 1542, 1550-51 (N.D.Cal.1990). Mystique is seeking unspecified monetary damages and a permanent injunction.

The case is Mystique, Inc. v. Ivanka Trump Marks, LLC et al., CV12-10217 RGK (C.D. Cal. 2012).

Posted On: December 6, 2012

NBC’s Animal Practice TV Show Sued For Copyright Infringement

copyright-infringement-script-tv-show-animal-practice-nbc.jpgDuckHole, Inc. is the copyright assignee in a treatment for a television series entitled “Pets,” created by Paul J. Andre in 2010. Mr. Andre, however, did the unthinkable: he registered his treatment with the Writers Guild of America. WRITERS, repeat after me: I WILL NOT WASTE MY MONEY REGISTERING MY WRITTEN WORK WITH THE WGA or SAG. I WILL FILE A COPYRIGHT REGISTRATION APPLICATION INSTEAD.

Why pay for a WGA registration when it affords no significant protection in court? In fact, the WGA shreds your submission after five years and is absolutely useless if the infringement begins in the sixth year.

  • To avail yourself of the advantages available under the law, you must register your screenplay, treatment, or script with the U.S. Copyright Office.

  • In order to file a lawsuit to prevent copying of your work, you MUST have registered the work with the U.S. Copyright Office.

  • In order to recover statutory damages and attorneys’ fees from infringers, the work must have been registered with the U.S. Copyright Office before the commencement of the infringement or within three months from the date of publication. 17 U.S.C. § 412.

  • In order to establish evidence of ownership of the screenplay, treatment, or script, the work must have been registered with the U.S. Copyright Office.

I cannot emphasize the importance of filing your work of authorship with the U.S. Copyright Office. In fact, if you can only afford to register the work with one entity, it should be the U.S. Copyright Office in order to avail yourself to the advantages afforded by a copyright registration certificate.

Judging from the absence of a copyright registration number in the complaint, DuckHole probably only recently filed the copyright application in order to bring suit. DuckHole alleges that NBC’s Animal Practice TV series is “substantially identical and, at best, a derivative work of PETS, which is based on an original copyrighted PETS treatment owned and registered to Plaintiff.” For example, Plaintiff claims that Animal practice’s “concept of centering on a veterinarian that is good with animals but not so good with people, and the setting in a veterinarian clinic are substantially identical, and at least derivative of the concept and setting” in the treatment. The complaint continues:

The supporting characters in the copyrighted PETS treatment include: (i) David- the veterinarian's colleague and "best 'human' friend" who "is woefully inadequate at the dating scene," (ii) Peg- the "hard-as-nail" employee of the clinic, (iii) Brenda- a "clueless" assistant at the clinic, and (iv) Bud- the resident pet at the clinic. The supporting characters in the Series Animal Practice include: (i) Doug- the veterinarian's colleague and "closest 'human' friend" who is "hapless in matters of the heart," (ii) Juanita- the "take-charge" clinic employee, (iii) Angela- an "eccentric" assistant at the clinic, and (iv) Dr. Rizzo- the resident pet at the clinic. The Series supporting characters are substantially identical, and at least derivative of the supporting characters in PETS.

Assuming NBC had access, without reviewing the treatment and the series in their entirety, it is difficult to predict whether these references are unprotectable general themes of a veterinarian’s office or whether they share articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.

The case is DuckHole, Inc. v. NBCUniversal Media LLC, et al., CV12-10077 JAK (C.D. Cal. 2012).