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Off the leash - Design copyright case gets another life

June / July 2022 IP Newsletter

A common phrase such as “I love you” written in a lower-case cursive, italicized font on garments can’t possibly be copyrightable, right? Probably not, but a ruling from the U.S. Court of Appeals for the Fifth Circuit in Cat and Dogma, LLC v. Target Corp. demonstrates how a design using such a phrase could gain copyright protection.

The claws come out

Cat and Dogma LLC (Dogma), is a Texas-based children’s clothing company. In 2015, it published a two-dimensional design for pajamas consisting of the phrase “i love you” displayed in a cursive, italicized font, all in lowercase typeface. The phrase is arranged in 25 rows of repeating text, repeating three to five times in each row. The company registered the design with the U.S. Copyright Office, effective September 19, 2019.

In 2017, multinational retailer Target Corporation began selling a line of children’s clothes, sheets and blankets that incorporated the phrase “i love you,” written in a cursive, italicized font and all-lowercase typeface. Target’s clothes also display the phrase in rows of repeating text.

Dogma filed a copyright infringement lawsuit against Target in October 2019. The trial court dismissed the case before trial.

Court establishes boundaries

On appeal, the Fifth Circuit primarily focused on whether Dogma adequately alleged the substantial similarity between the two designs necessary to get its case to trial. To evaluate substantial similarity, it explained, a side-by-side comparison is done to determine whether a layperson would view the designs as substantially similar.

The Fifth Circuit noted, though, that when the original design contains elements that aren’t protectable under copyright law, a court must first distinguish between the protectable and unprotectable elements. The court then determines whether the allegedly infringing design is substantially similar to the original design’s protectable aspects.

Dismissal paws-ed

Dogma didn’t claim that any elements of the design (the selection of the phrase, the font and the lowercase typeface) constituted original, protectable expression individually. Rather, it argued that the protectable aspect was the selection and arrangement of those elements. Dogma further asserted that, in issuing Dogma a certificate of copyright registration, the Register of Copyrights necessarily had determined that the design possessed the requisite degree of originality to merit copyright protection.

The appellate court held that Dogma’s claim sufficiently alleged originality in its selection and arrangement of the unprotectable elements to move to the trial phase. While Target raised several arguments challenging the degree of originality, those arguments couldn’t be appropriately assessed before trial.

Next up for consideration was whether Dogma alleged substantial similarity between the protectable selection and arrangement of the design and Target’s allegedly infringing products. Comparing the designs in the light most favorable to Dogma (as required when weighing a pre-trial dismissal), the court noted that the designs appear to be similarly arranged.

It therefore determined that a reasonable jury could find the designs substantially similar based solely on the similarity of the selection and arrangement of the underlying elements. However, the ultimate determination, the Fifth Circuit said, should be left to a factfinder at trial, whether a judge or jury.

Not a purr-fect ending yet

The ruling isn’t the end of the story. As noted by the Fifth Circuit, the trial court or a jury could find the similarities between the designs to be insubstantial. But the court found the allegations deserve their day in court.

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