(Originally published March 26, 2015 in the Record Reporter.) The NFL’s Championship Game (the NFL does not want you to call it the Super Bowl, but that is a subject for an article on trademark law, not copyright protection) was played just over a month ago. While the NFL’s season concluded that evening with the Patriots defeating the Seahawks 28-24, one participant in that evening’s festivities was just getting started: Left Shark.
Katy Perry’s halftime show featured two individuals in shark costumes dancing to her musical medley of “Teenage Dream” and “California Gurls.” After appearing to be dancing aimlessly on stage, the shark on the left-hand side of the screen (now known as “Left Shark”) became an instant Internet sensation, generating hundreds of user-generated memes. In stark contrast, the shark on the right executed choreographed dance moves, receiving very little attention for his efforts. (Katy Perry’s manager now insists Left Shark’s antics were all part of the plan.) The day after the game, Left Shark generated as much water-cooler debate as the Seahawks’ foolish decision to pass from the one-yard line.
Entrepreneurs were quick to capitalize on Left Shark’s popularity, including Fernando Sosa, who designs 3D-printed figurines. Mr. Sosa designed a 3D Left Shark model that could be printed using a 3D printer and sold it for $24.99 through the 3D-printing marketplace Shapeways.
Within a week, Katy Perry’s attorneys demanded that Mr. Sosa cease and desist, asserting that “Katy Perry’s company is the owner of all relevant copyrights in the works at issue.” In response, Mr. Sosa did what most recipients of a cease and desist letter do: he complied. But then, a New York University law professor, Steven Pinio, publicly proclaimed that Ms. Perry held no copyright to Left Shark, and shortly thereafter, he began representing Mr. Sosa.
Mr. Sosa resumed selling his Left Shark figurines, launching a still-ongoing legal battle over whether Katy Perry can claim a copyright on Left Shark. At present, the parties have only exchanged letters—all of which are available on the Internet. But the dispute may lead to a federal court case with wide-ranging ramifications concerning the overlap between copyright protection and the growing capabilities of 3D printers.
3D printers work like inkjet printers, but, instead of layering ink on paper, 3D printers layer polymers, powders and alloys to create a physical object. 3D printing technology has been used for over thirty years, but recent advances in the technology have led to wider availability. These advancements allow enterprising individuals, like Mr. Sosa, to design, manufacture, and mass produce 3D products, including Left Shark figurines, with only a few hours work.
Duplication technology has always been the enemy of copyright law. This is because copyrights protect things like writings and drawings, which are now easily duplicated by even the most basic home copy machine. Copyrights also protect musical compilations and software code, which Internet file-sharing websites (think Napster) have rendered just as easy to copy as the printed word. Just as copying written works and music is relatively easy, in these mediums, so is determining copyright infringement. Either the work was copied or it was not. If it was, willful copyright violations carry a potential liability of up to $150,000.00 in statutory damages. This statutory penalty usually causes even the most sophisticated copier to cease and desist.
But 3D copying presents a particularly daunting challenge to copyright holders. Applying copyright laws to 3D objects is a nuanced inquiry. Copyright law does not protect the functional purpose of an object; you need a patent for that. This means that while a copyright can protect an original design, it cannot protect the functions that the design accomplishes. But how do you separate the design from the design’s function? Put another way, when does protecting the design (which is copyright protectable) cross the line into protecting the functional use of the object (which is not copyright protectable).
Almost all 3D objects have a functional purpose, making protection of these designs under copyright law an awkward fit. Left Shark provides a perfect example of the difficulty in determining “copyrightability” in the realm of 3D printing. Courts have generally found that costumes, like Left Shark, have useful functions and denied them copyright protection. But copyright protection does apply to costumes when the use of the costume can be “wholly separated” from the design. For example, in the seminal case in this area, the court held that the design of the Batmobile was protectable under copyright law because its design was wholly separate from the functional purpose of an automobile.
So how does the “wholly separable” standard apply to Left Shark? Is the Left Shark character “wholly separable” from the costume of a shark? Both sides can argue this point. On the one hand, Left Shark is not the most unique-looking shark costume (it has a dorsal fin and flippers, like any shark costume must). But on the other hand, the Left Shark design does differ from that of a generic shark; it’s bright blue with an odd grin. Reasonable people can disagree here just how much Left Shark’s form is dictated by function and how much of his form is wholly separable from his function. It is in these types of disputes that litigants incur considerable attorneys’ fees fighting protracted legal battles.
This is what makes the proliferation of 3D printers a scary proposition for copyright holders. While copyright protection of a written work is often undisputed, it will be the rare case that the “copyrightability” of a 3D object is beyond question. With 3D printers making it ever easier to copy any saleable product, businesses that rely solely on copyright protection may find themselves intertwined in protracted legal fights in an effort to curb the copying of their products. And the resolution of those fights could be just as unpredictable as Left Shark’s next dance move.
Greg Collins is a Managing Member of Kercsmar & Feltus PLLC and heads the firm’s intellectual property practice.