Trademark Examiner Not Swayed By Katy Perry's Attempt To Trademark The Left Shark

from the shake-it-off dept

We've written a few times about the so-called left shark, the internet meme that took off after one of singer Katy Perry's backup dancers (in a shark costume, naturally) looked a little "off" during her Super Bowl performance earlier this year. The internet went crazy and created all sorts of memes around "left shark." A guy named Fernando Sosa started selling 3d printed Left Shark figurines -- and then Perry's lawyers freaked out and basically claimed ownership to all things "left shark."

Thankfully, the guy selling those 3D printed left sharks, Fernando Sosa, was able to retain lawyer Chris Sprigman, who pointed out that there is no copyright in costume design. Soon after that, we noted a bizarre twist on the story, in that Perry's legal team made a quick effort to go and trademark left shark, while (amazingly) using one of Sosa's photos of his own 3D printed models as the photo they submitted showing what they were trademarking.

Either way, Perry's legal team has been working on a few different trademarks related to "left shark" but apparently trademark examiner David Collier has some concerns about Perry's trademarking attempt:

David Collier, the trademark examiner, isn't yet impressed by the attempt to register the design, which, he wrote, "identifies only a particular character; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services."

In other words, there's not enough evidence submitted yet that consumers look at "Left Shark" and think of a Katy Perry music performance.

The examiner also noted the differences between a photograph of Perry dancing with "Left Shark" and the drawing of "Left Shark" submitted as the design.

"Specifically, the [photograph] displays the mark as a stylized depiction of a forward leaning shark in nearly a front profile with a portion of a dorsal fin, two pectoral fins and two legs and feet substituted for the caudal fin on the tail," he wrote. "The shark has five gills, a full mouth with teeth and round eyes with eyelids; however, the drawing displays the mark as a stylized depiction of an upright shark in full front profile with no dorsal fin, two full pectoral fins and two legs and feet; the shark has three gills and the shark's mouth appears without teeth; the shark also has oval eyes without eyelids."

Of course, we feel obliged to go back to a point that Sprigman made early on in these discussions: while Perry may have had something to do with creating Left Shark, she had basically nothing to do with the reasons why Left Shark became "Left Shark" rather than "random dancing character in a big show that everyone forgets soon after." As Sprigman noted:

No one knew that one of the sharks dancing next to Katy Perry during the Super Bowl halftime show was Left Shark until the Internet told us so. The Internet decided that Left Shark’s flubbed dance moves were hilarious. It gave Left Shark his name, and then it made him into a meme. Left Shark isn’t really about Katy Perry.

So if anyone deserves a trademark on it, it should be "the internet." Or we can just make this simple and not trademark it at all.

Filed Under: katy perry, left shark, trademark

Bonobos Issues 'Cease & Insist' To Katy Perry After It Promised To Sell Left Shark Suits

from the legal-marketing dept

So the saga of the Left Shark and Katy Perry's lawyers keeps getting more and more strange. We've already covered the legal threat from Perry's lawyers to the guy who was offering a 3D printed figurine of the Left Shark, followed by the response explaining to Perry's lawyers that there is no copyright in left shark, leading to Perry's lawyers to issue a uh huh there is... while also using the figurine maker's own photo of his 3D printed shark in their (now abandoned) trademark application.

So, what could make this situation stranger? Bonobos. You know, the hip and trendy pants company? Right, so back during the Superbowl, their social media folks tried to get in on some of that sweet sweet free Super Bowl advertising, and tweeted, asking if they should crowdfund a project to start selling a Katy Perry shark costume: And, apparently, the company felt there was at least enough interest to set up a site for people to express interest, if not a full crowdfunding campaign: But, now, the Bonobos people have read about the legal threat over the 3D figurine, and rather than recognizing that there is no copyright interest at all here, have decided to try to milk this advertising opportunity go the safe, boring route of "asking for permission" in a rather public way, sending a "cease and insist" letter to Perry. In the tweet announcing it, they ask people to retweet "so we can make this damn suit." If you can't read it, the letter says:

NOTICE to Cease listening to your lawyers and Insist you let Bonobos make the shark suit.

Dear Katy Perry:

We're impressed. Like, really impressed. First, you tamed a creepy lion-robot thing, and then you conquered Marine Biology. Neither Jacques Cousteau nor Taylor Swift ever discovered a sea creature as adorable as Left Shark! In the history of pop music and oceanic sciences, this is a first. And maybe a last. Sigh.

Look, Katy. We have a problem. Our marketing team got amped up on Skittles and did something reckless. During a popular Sunday football game we promised the Internet shark suits, because duh. But then came Monday morning, and our lawyers gave us the shame stare. You know, the "we'er not angry, just disappointed." Except they were also angry. Mostly angry, actually.

Apparently, we cannot sell shark costumes without your permission. In addition to being an esteemed marine biologist, you are also, it appears, a legal guardian for sharks. With that in mind, this is our humble offer: allow us to sell shark suits, and we'll donate all profits to the charity of your choice. You have 10 days to respond, or we'll wait longer.

Sincerely,


Bonobos

Of course, while the letter is a mocking advertisement more than any actual legally sound statements, the claim that Perry has any legal claim over the shark costume is highly questionable, though it is entirely possible that in a fit of liability avoidance that Bonobos lawyers legitimately said the company should try to get permission -- even if none is actually needed.

Either way, what Perry should do is exactly what lawyer Chris Sprigman originally suggested in his letter to her lawyers over the 3D printed Left Shark: just let it go. The Left Shark is an internet meme, and Perry should celebrate it, not try to claim made up intellectual property claims over it.

Filed Under: copyright, katy perry, left shark
Companies: bonobos

Can't Make This Up: Katy Perry's Lawyers Use Left Shark Photo Taken By Guy They're Threatening In Trademark Application

from the wait,-isn't-that-copyright-infringement? dept

The story of Katy Perry and the 3D printed Left Shark keeps getting more and more bizarre. If you don't recall, Perry's lawyers threatened legal action over plans that were made available online for a 3D printed version of "the Left Shark." This was the internet meme that became a thing after one of Perry's backup dancers (dressed in a shark costume) looked a bit off during the Super Bowl. As we discussed, Perry's copyright claim seemed more than a bit off. Then the guy who made the 3d printed shark, Fernando Sosa, retained law professor and copyright expert Chris Sprigman, who responded to Perry's lawyers, explaining how there was no copyright interest here and how it would probably be best for everyone to just walk away slowly. Or quickly.

But, you know, these are lawyers we're talking about. High-powered, high-paid entertainment industry lawyers. They're not ones to just back down when someone points out that their copyright argument is bullshit. No, they double down. And thus, we get Perry's pricey Greenberg Taurig lawyers' response to Sosa and Sprigman [pdf] in which they try, desperately, to create a magical copyrightable shark costume out of pixie dust and words. But, as Sprigman explains in response [pdf], their argument is not convincing.

Perry's lawyers argue that Perry's team designed the shark and thus it's theirs, theirs, theirs. They even made drawings. They also admit that, while costumes aren't copyrightable, other elements of the costume are, as being "separable." Basically, if there are unique creative elements, those are copyrightable. But that's a stretch. As for the drawings, so what?

First, you claim that the Left Shark costume is copyrightable because it is based on the “multiple shark drawings” you say were produced by Katy Perry’s team. The drawings are irrelevant. Sketches of Left Shark may be copyrightable, but that doesn’t make the Left Shark costume copyrightable. A design sketch of a ladies’ dress is copyrightable. And yet as anyone in the U.S. fashion industry will tell you, the dress on the rack is a useful article, which, like a costume, cannot be copyrighted. The drawings of Left Shark would be relevant only if my client had copied them in preparing his sculpture. But he didn’t copy the drawings – not least because he’s never seen them. My client saw only the Left Shark costume. As I explained in my previous letter, the Left Shark costume is an uncopyrightable useful article, and my client is free to copy it.

As for the "separable elements"? Sprigman does a nice job with the lawyerly version of "WTF are you talking about?"

Second, you suggest that “conceptually separable elements” of the Left Shark costume may be copyrightable. Would you please tell me which elements of the Left Shark costume you believe to be conceptually separable from the costume as a whole? The dorsal fin, perhaps? The gills? The teeth?

When I look at the Left Shark costume, I don’t see “conceptually separable elements.” I see a shark costume. I am obliged to admit that, unlike any shark I’ve seen, the Left Shark costume has legs (and a quick Google search reveals that many other shark costumes have legs). But that doesn’t make the Left Shark costume copyrightable. The Left Shark costume has legs because the person inside of it has legs. The legs are not “conceptually separable” from the Left Shark costume. They are integral to its function as a costume.

Finally, rather than just "drop" the issue, Perry's lawyers said that Sprigman could call them up and they could discuss a license. But, of course, without a copyright there is nothing to license. This gets back to the mistaken belief by some that someone must own everything and thus you absolutely have to get permission. That's not true.

Perry's lawyers build on this to argue that the only reason the Left Shark is valuable is because of Perry, and thus she should be able to control all the benefits from Left Shark. Except, as Sprigman points out, that's almost entirely bullshit. Perry didn't make the Left Shark a thing, but rather the internet made it a thing.

Likewise, I disagree with your suggestion that Katy Perry owns rights in Left Shark because any commercial value my client’s sculptures may have “derives solely from the public’s association of them with Ms. Perry.” That statement misunderstands the source of whatever (probably scant) commercial value Left Shark may possess. No one knew that one of the sharks dancing next to Katy Perry during the Super Bowl halftime show was Left Shark until the Internet told us so. The Internet decided that Left Shark’s flubbed dance moves were hilarious. It gave Left Shark his name, and then it made him into a meme. Left Shark isn’t really about Katy Perry.

There's even more in Sprigman's letter, but I actually wanted to focus on something else, which Fernando Sosa mentioned in his post about all of this. You see, after all of this blew up, Perry's lawyers also tried to file for a trademark on Left Shark. They pretty quickly gave that up (filed on February 6th and abandoned on February 10th). But here's the really crazy thing: they used Fernando Sosa's own image of his 3d printed shark as a part of their trademark application. In other words, you could argue that, while Perry has no copyright (or trademark) in Left Shark, it's conceivable that Perry's lawyers could have violated Sosa's copyright in the image of his 3D printed item in using it as part of their trademark application. Now I could make a fairly strong argument for fair use for Perry's lawyers to use Sosa's image, but still... When you're arguing that the model is infringing on a potentially non-existent copyright, it seems to be quite a show of hubris to use the image created by the guy you're threatening and use that in your own trademark application.

Oh, and Sosa is now back to offering his 3d printed shark for sale, as he seems confident that Perry's lawyers have no leg to stand on.

Filed Under: 3d printing, copyright, fernando sosa, katy perry, left shark, trademark

Left Shark Bites Back: 3D Printer Sculptor Hires Lawyer To Respond To Katy Perry's Bogus Takedown

from the jumping-the-shark dept

Did you think Katy Perry's lawyers sending a questionable cease & desist letter over 3d printable plans for "the left shark" backup dancer in Katy Perry's Superbowl Halftime routine would be the end of that story? It turns out that the guy who originally created the 3d printed figurine, Fernando Sosa, has now gone out and retained law professor/lawyer Chris Sprigman (the same Chris Sprigman we quoted in our original article detailing why a costume is a "useful article" and thus not copyrightable) to send a response to Perry's lawyers explaining copyright 101 to them.

Mr. Sosa is not especially eager to be fighting over copyright, but the legal merits of your claim seem very weak. (We also wonder what Katy Perry could possibly stand to gain from declaring war on an Internet meme, but that's her business.) Mr. Sosa has a few questions that he wants answered before he will remove Left Shark from the other online stores in which it is available.

First, can you tell me why you believe the costume of a shark that you claim Katy Perry owns is copyrightable? As you likely know, federal courts and the United States Copyright Office have made clear that costumes are generally not copyrightable. Please tell me why you think the Left Shark costume should be treated differently.

Second, what is the basis for your claim that Katy Perry, and not some other person, owns the copyright? Did Katy Perry design the Left Shark costume? If so, when? If not, who did? Did that person transfer any copyright interest he or she might have (in reality, very likely none) to Katy Perry? If so, when?

We ask about ownership not least because Katy Perry herself suggested that she didn't have control over the content of her halftime show, but rather the NFL did. See, for example, her recent interview with Ell magazine:

"In my show, I am boss daddy. I am bossy mommy. They call me Boss. Everything goes through my eyes; I call all the shots, 100 percent of it. With the NFL, I have to be accountable to several levels of red tape. There are many committees I have to go through for my costumes, the budgets of my show, every interview--everything, I have to report to somebody. So I am no longer the boss; I have to relinquish that control."

At the very least, Katy Perry's own account raises questions about what, if anything, she owns. If she wasn't the boss of her halftime show, she's also unlikely to be the copyright owner.

Sprigman also ends his letter with some quite sane advice: perhaps Katy Perry's lawyers should just drop this:

I'll end my letter with a simple request: Just drop this thing. My client wants to get back to his business, and he (and I'd wager pretty much everyone else) would be grateful if you'd just back off. Going ahead with these very dubious copyright claims will not benefit Katy Perry. But if you're determined to press on, please do respond to my legal questions, and we can try to work it out from there.

This may be some of the best advice given to opposing lawyers. Now the question is whether or not Perry's lawyers will take it.

Filed Under: 3d printing, chris sprigman, copyright, costumes, fernando sosa, katy perry, left shark, useful articles

There's Something Fishy With Katy Perry's Left Shark 3D Printing Takedown

from the you-can't-copyright-that dept

I spent this past Sunday spending time with my family and some friends not watching the Super Bowl, so I missed all the commercials and the exciting finish to the game... and the half-time show and the wonder that is the left shark. Still, I heard plenty about it on the internet because apparently the people I follow on Twitter couldn't get enough of the whole shark thing. If you were lucky enough to avoid it entirely, apparently Perry had some shark dancers, and the one on the left appeared to be somewhat... less coordinated than the right one (though Perry's team now claims that the choreography went off exactly as planned).

Either way, the left shark has become a thing. And, so, of course, someone had to go make a 3D printable version of it -- and uploaded plans to Shapeways. Well, until Perry's lawyers stepped in and said nuh uh. Her big time lawyers are claiming that the plans violate Perry's copyright and demanded that Shapeways cease and desist, and provide a "full accounting" of any money they made from it.

Our client recently has learned that you have been involved in the manufacture, sale, marketing and distribution of merchandise featuring a shark sculpture which embodies and uses the IP, and that you have displayed this product on your website, www.shapeways.com, in connection with such sale and distribution.

As you are undoubtedly aware, our client never consented to your use of its copyrighted work and IP, nor did our client consent to the sale of the infringing product. Your unauthorized display and sale of this product infringes our client's exclusive rights in numerous ways, including, but not limited to, infringement of our client's exclusive rights to reproduce, display, and distribute its copyrighted images under the United States Copyright Act as set forth in 17 U.S.C. §106.

Your infringing conduct entitles our client to significant legal relief against you, which may include actual damages, statutory damages, and punitive damages, as well as immediate and permanent injunctive relief.

Shapeways has apparently consented, but it's worth noting that almost all of the above is a bunch of hogwash. As law profess Chris Sprigman pointed out, a shark costume is almost certainly a "useful article" and thus, is not subject to copyright protection:

For purposes of copyright registration, fanciful costumes will be treated as useful articles. Costumes serve a dual purpose of clothing the body and portraying their appearance. Since clothing the body serves as a useful function, costumes fall within the literal defdtion of useful article. In addition. the case law consistently treats I costumes as useful articles, and a Copyright Office decision to differ substantially from these court decisions would appear difficult to justify.

But, for now the files have been taken down, because, really is it worth a lawsuit over the left shark?

We've been pointing out for years that there are going to be a number of intellectual property questions raised by 3D printing. And while this one isn't particularly deep in terms of raising new issues of law, considering it some bizarre foreshadowing of legal disputes to come.

Filed Under: 3d printing, cease & desist, copyright, katy perry, left shark, takedowns, useful articles
Companies: shapeways