Dress designer counter sues paparazzi for copyright infringement. SPLASH NEWS v. MOSCHINO

A copyright is a set of exclusive rights granted to the creator of an original work of art when the art is fixed in a tangible form. The creator of an original work of art is granted the exclusive right to reproduce, distribute, display, perform, transmit and make derivative copies. Registering the work with the United States Copyright Office will strengthen the exclusive rights granted by copyright law, but is not necessary for a copyright to be granted. If someone other than the copyright owner exercises one of the exclusive rights granted by copyright law, that is considered copyright infringement. A copyright owner can sue to stop copyright infringement with an injunction and to get monetary damages for infringement which has occurred.

A paparazzi is a photographer that makes their living by following around and photographing celebrities in public. Paparazzi are typically viewed with contempt by celebrities because the paparazzi focus on catching celebrities in unflattering positions. There is an emerging trend of celebrities downloading photographs of themselves taken by paparazzi, publishing the photographs on the celebrities’ social media accounts. The paparazzi then sues the celebrity for copyright infringement. The paparazzi has a valid claim to the copyright on the photograph, and copyright law does not grant the subject of a photograph any claim to the photograph, even if it was taken without permission.

In one case however, a defendant in a paparazzi copyright infringement lawsuit has come up with a novel theory. The United States Supreme Court opinion STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., No. 15–866 (U.S. 2017) grants clothing patterns copyright protection in certain circumstances. In that case the Plaintiff created cheerleader uniforms and the Defendant created copies. The Plaintiff sued for copyright infringement. The Defendant claimed that clothing is a useful article and therefore copyright protection is not available.

The United States Supreme Court held that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.

The United States Supreme Court held that the surface decorations on the Plaintiff’s cheerleader uniforms are separable and therefore eligible for copyright protection. First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities. Second, if those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under 17 U.S.C. §101. Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uniform itself.

This precedent is now being used to fend off copyright infringement claims from paparazzi. The case which presents this issue is SPLASH NEWS AND PICTURE AGENCY, LLC v. MOSCHINO S.P.A., 19-cv-09220 (C.D.CA 2019). The plaintiff in this case is a picture agency that manages the copyright on behalf of various photographers. The plaintiff published a paparazzi photo which depicted the celebrity Cardi B wearing a dress designed by the defendant. The defendant republished the photograph without permission on the defendant’s social media account. The plaintiff sued for copyright infringement.

The defendant responded with a copyright infringement claim of its own. The defendant claims that the dress worn by Cardi B is an original work of authorship entitled “When Spring Is In Bloom”. The work was registered to Moschino with the U.S. Copyright Office with Registration No. VA 2-181-038 (eff. June 18, 2018). The defendants claim that the plaintiff’s photographs unlawfully depict the Work, thereby rendering the photographs unauthorized derivative works that, among other things, lack their own copyright protection and constitute copyright infringements. The defendant requests that statutory damages of $150,000 per infringement be imposed on the plaintiff.

The defendant has a valid legal theory. Whether the theory is strong is enough to convince a judge is another question. Most likely the case will settle quickly because it is unlikely that the plaintiff wants to risk the possibility of a judge agreeing with the defendant.

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