Pet clothing seller sued for infringing on wrapping paper copyright. RIFLE PAPER v. PETCO

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 copy distribute and sell the copyrighted work, among other things. 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.

Not every artistic expression can be copyrighted. The distinction between what can and cannot be copyrighted has been determined by whether the object is a useful article. Useful articles are excluded from copyright protection by United States Copyright Law to the degree that ornamental features can be distinguished from functional features. This means that the design of a fork or a flashlight cannot be copyrighted as a sculpture. However, if the ornamental features of a useful article can be separated from the functional features of a useful article than the ornamental features can be copyrighted.

The United States Supreme Court case STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., No. 15–866 (U.S. 2017) articulated an expanded rule for what ornamental features can qualify for copyright protection. 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.

RIFLE HOLDINGS, LLC v. PETCO ANIMAL SUPPLIES STORES, INC., 6:20-cv-01646 (M.D.FL 2020) is an example of a case which will apply the rule articulated in Star Athletica.

Plaintiff in this case is a designer of greeting cards, stationery and other printed material which embody original artwork. Plaintiff licenses the designs it owns to other manufactures in exchange for royalties. One of PLaintiff’s designs it titled Tapestry Design and is shown above on the left. The Tapestry Design is duly registered with the United States Copyright Office, as evidenced by Certificate of Registration No. VAu 1-230-328 (the “Copyright Registration”), dated January 13, 2016.

Defendant operates animal and pet supply retail stores and a website. Defendant sells pet clothes, accessories, and other products under its “Bond & Co.” brand. One of the products sold under the Bond & Co brand bears a design which is very similar to Plaintiff’s Tapestry Design. An example of Defendant’s product is reproduced above on the right. Plaintiff sent Defendant a cease and desist letter which Defendant refused. Plaintiff filed suit against Defendant for copyright infringement in September 2020.

While the two designs are not identical, there is a striking similarity between the designs. Assuming that Plaintiff commissioned the creation of the Tapestry Design from scratch, Defendant will have a difficult time explaining how its design does not infringe. One thing is clear, the fact that Plaintiff’s Tapestry Design is applied to useful articles like wrapping paper or stationary will not provide a defense. We will have to wait and see how the Defendant answers the complaint.

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