When Unprotected Elements In Trademarks And Copyrights Get You In Hot Water

Trademark and Copyright Issues to Consider With Sales of Athletic Goods and Apparel

When can a generic design rise to an infringement of intellectual property rights? A common and growing occurrence comes when one takes an attribute of a famous athlete (like a number), puts it with that athlete’s team color scheme, and the next thing you know, someone is claiming a likelihood of confusion. Such apparel that strive to simply use generic designs, but combine well-known elements that might implicate the rights of a famous athlete or clubs best beware that they are touching on issues that go into the realm of copyrights, trademarks, and rights of publicity.

First off, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. 15 U.S.C. § 1114. So, if you are looking to simply place a jersey number on a shirt or sweatshirt, such use would most likely not constitute trademark infringement.

However, if you elect to add additional elements such as a color scheme associated with a certain team or player, this may constitute trademark infringement and is a much tougher call. In a 2008 case regarding t-shirts that used the color schemes of several universities, the Fifth Circuit agreed to the existence and successful enforcement of non-traditional and unregistered trademark rights in color schemes when combined with “other identifying indicia.” Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., (2008) 550 F.3d 465, 476. Here, the t-shirts did not mention the universities by name, but rather combined their respective color schemes with indirect references to the universities by using geography, bowl championships, and/or allusions to rival teams. Therefore, when making such apparel, one should think twice before including elements which may infringe on someone else’s mark.

Copyright law can be a bit more complex when it comes to the issue of apparel. Copyright law protects original works of authorship that are fixed in any tangible medium of expression. 17 U.S.C. § 102. Copyright protection is limited if the expression is considered a “useful article” and as the term suggests, a useful article is something that has an intrinsic utilitarian purpose and is not merely aesthetic in nature. Clothing and shoes are considered useful articles because they serve the useful purpose of covering the body in addition to expression aesthetic design. Unsurprisingly, copyright tends to be more geared toward literary and artistic works while courts have historically found it difficult to determine which items should be barred from copyright protection as useful articles.

However, in 2016, the Supreme Court developed a two-part test for determining when the aesthetic elements of a useful article are protected by copyright law. This test determined 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 tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.” Star Athletica L.L.C. v. Varsity Brands, Inc. (2017) 137 S.Ct. 1002, 1007. In this case, the court held that the designs on the uniforms created by Varsity Brands were not integral to the functionality of the uniform, so were protected by copyright law even though the design could not be separated from the article. Star Athletica has therefore opened the copyright protection doors to industries that have typically been excluded from considering such protection. Therefore, one must be more careful when entering such territory. It is important to remember, however, that works must still meet the requirements of copyright law to receive protection.

Unlike copyrights and trademarks, rights of publicity is not created by federal law but by the laws of each individual state. Specifically, in California, “[a]ny person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods” may be sued for injunctive and monetary relief. California’s statute also protects the rights of the deceased, both famous and obscure. California statute allows the heirs or survivors of a deceased “personality” to continue to control the deceased person’s right of publicity for 70 years after death, provided they register with the Secretary of State and pay a small fee. Cal. Civ Code § 3344.1. Therefore, before selling apparel that bears the number of a famous athlete in combination with other elements that may implicate them as an individual, it would be advisable to obtain permission from all proper parties or consult an attorney.

Of course, there are many defenses and every situation is unique. At Cartee, LC, we are familiar with such intricacies and would be happy to talk over your issues with you. We are your Orange County trademarks, copyright, and business attorneys, here to help.