Who knew Katy Perry’s goofy dancing Super Bowl shark would become the focus of an intellectual property battle?
Following on the instant sensation of pop star Perry’s halftime show sidekick — a blue shark with his own agenda, which became known as “Left Shark” — U.S.-based 3-D printing artist Fernando Sosa seized on the Internet buzz and created small versions of the shark as figures for sale.
But before the characters could surface to consumers, last week CBC reported Perry’s lawyers sent a cease-and-desist letter to the company — New York-based Shapeways — and its printing artist Fernando Sosa. The orders were cancelled and customers got their money back.
Sosa apparently didn’t think it was an item that could be copyrighted. His lawyer told the CBC the Internet, not Perry, popularized the Left Shark.
“It may seem like a Teenage Dream gone wrong to some people, but the designer of the shark character and outfit created a copyrighted work that Katy Perry could take ownership of,” says Noel Courage, an intellectual property lawyer with Bereskin & Parr LLP in Toronto.
Courage says a useful article, like clothing per se, cannot be copyrighted in the U.S. However, certain pictorial and shape aspects of a character and its outfit are copyright protected. Therefore, he says, the “knock-off seller won’t be the one that got away.”
“To me it’s a pretty innocuous character and it’s not really something they probably had big plans for, but it’s still a character. If you think of bigger examples of commercial characters like Mickey Mouse, there’s a lot built up around the costumes. But whether it’s a costume or an appropriation of the character, Disney would crush you like a bug,” says Courage.
Courage says a “low-end” copyright exists for the shark.
“This is just a different type of character and nobody really cared about it until it became an Internet hit, but someone designed it and created the character and if you draw something you have some copyright — and certain elements of the styling with the costume — you could enforce that.”
The question in play, says Courage, is who actually designed the shark because Perry probably wasn’t the one to come up with the concept.
“Since she is the one issuing the cease-and-desist letter then she has probably taken ownership of it from someone else through an assignment,” he says.
In 2013, television network HBO blocked Sosa from the 3-D printing of a Game of Thrones iPhone dock. The network, which owns the rights to the popular TV series, also sent Sosa a cease-and-desist letter.
According to Wired magazine, Sosa had reportedly modeled the throne in Autodesk Maya based on still images from the series and was going to sell it on his web site.
HBO called it a “pretty straightforward intellectual property infringement.”
While there are some unique issues in the Katy Perry shark case, many are the same basic issues faced in every copyright case, says John Cotter, a partner in the IP practice at Osler Hoskin & Harcourt LLP.
Those issues include: Does copyright subsist? Who owns it? Has it been infringed?
“Copyright is owned by the creator,” says Cotter. “If it is an employee it’s owned by their employer and whoever owns it can always assign their copyright. In any case like this those are always the questions the lawyers are asking,” he says. “Where is the chain of title? You would need to see that to assess whether she’s got the ownership in the copyright to assert.”
He says it’s another example of new technology that makes copying easy and affordable, and as a result there will be issues.
“We see it every time there is a new form of technology that comes along that facilitates making copies. In the past it has been music, movies — now it’s 3-D printing, and it will allow people to make copies of a whole host of different objects.”
However, when looking at music or movies the issues are primarily copyright. When you look at 3-D printing it involves copyright and other types of intellectual property as well.
“The issues that come into play will really depend on what the item is, and what sort of IP rights the IP owner has,” says Cotter.
For example, if an item is protected by a patent, no one can manufacture the item. There can also be a case for trademark infringement.
“That will impact how people deal with it and what remedies are available.”
That means brand owners need to think about what they are doing to protect their rights and should create a strategy.
“They might want to think about how, as a company, they are going to protect their intellectual property,” notes Cotter.
“You need to have the rights if you want to enforce them and is it going to be a question of enforcement or commercialization for the IP owner? In the past with new technologies there has been a lot of focus on enforcement early on and commercialization later. The question now might be is there a way to facilitate the use of the technology in a way that makes money for us and gives people an alternative?”