US copyright registration for the Tommy Hilfiger Flag denied due to insufficient originality

Originality is a key requirement for copyright protection to arise. Although the relevant threshold is not particularly high, it is not said at all that any work would be deemed sufficiently original. Tommy Hilfiger realized that when it (unsuccessfully) tried to register its iconic flag logo as a copyright work with the US Copyright Office.

Riana Harvey, a soon-to-be graduate of the University of Southampton, explains what happened.

Here's what Riana writes:

US copyright registration for the Tommy Hilfiger Flag denied due to insufficient originality

by Riana Harvey

When it comes to matters of flags and intellectual property rights, the use of flags in trade marks may come to mind initially. However, a number of cases involving flags and copyright seem to have arisen in recent months, and on a worldwide basis too. One such instance arose in the U.S, where Tommy Hilfiger tried to register its flag as a 2-D artwork copyright claim, only to be rejected by the US Copyright Office Review Board in March.

Background

On February 14 2017, Tommy Hilfiger filed an application for the Tommy Hilfiger Flag (‘the Work’, pictured below) to be registered for copyright protection. The Work is described as a “two-dimensional graphic of a rectangle. Within the rectangle are four smaller rectangles; two identically sized navy rectangles and two identically sized red and white rectangles. The red and white rectangles are sandwiched between the navy rectangles.” 

The US Copyright Office rejected the application, on the basis that it “lack[ed] the requisite authorship necessary to support a copyright claim”.

In its first reconsideration request (February 28, 2018), Tommy Hilfiger explained how the arrangement of the shapes was unique “in that it [was] a creative combination of the letters ’T’, ‘J’ and ‘H’ of the nautical flag alphabet to create a unique flag”, one that represented the initials of Thomas J. Hilfiger. This too was rejected, with the US Copyright Office stating that there were no elements embodied in the work, alone or combined, that would be eligible for copyright protection.

In its second reconsideration request Tommy Hilfiger restated the earlier claims, and added that the originality of the Flag Logo Design exceeded the standards set out in Feist Publications v Rural Telephone Service Co., 499 U.S. 340 (1991), due to the “unique” arrangement of the rectangles, mimicking the letter ‘H’ when rotated 90 degrees. It also noted that the flag means “going home” due to the placement of the red rectangle on the right side, denoting returning from one’s voyage. 

Originality in US law

Under s102 of US Copyright Act (17 U.S.C. §102(a)), a work may be registered for copyright protection if it is “an original work of authorship fixed in any tangible medium of expression”.

Originality is considered in the context of the landmark US Supreme Court decision in Feist, which established 2 fundamental requirements for originality: independent creation and sufficient creativity. It was held that the work only needed to “possess more than a de minimis quantum of creativity”, and no copyright could be found in a work where “the creative spark is utterly lacking or so trivial as to be virtually non-existent.”

The Flag: a combination of shapes and colours

The Board began by highlighting how registration of certain shapes for copyright is prohibited. This includes “familiar symbols or designs… [and] colouring” (37 C.F.R. § 202.1(a)) as well as “geometric shapes… including rectangles” (Compendium (Third) § 906.1).

However, it was questioned whether a combination of common or standard design elements - as in the case of the Work - contained sufficient creativity to support a copyright claim (Feist). The Board drew upon the instructive language of Satava v Lowry, 323 F.3d 805 (9th Cir. 2003): 

… a combination of unprotectable elements may qualify for copyright protection. But it is not true that any combination… automatically qualifies… only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.

In the present case, the Board held that the Work was ultimately “a simple combination of basic geometric shapes and mere variations of coloration”. The arrangement of 4 rectangles to create a larger rectangle was not sufficiently creative enough to warrant copyright protection, and the colours used were “exceedingly common for flag designs” (Compendium (Third) § 906.1: “Merely… combining expected or familiar pairs or sets of colours is not copyrightable”).

Tommy Hilfiger also tried to rely on earlier works to support its claim for copyright registration. The Board emphasised that it considers each work on its own merits, not by comparing other works that had been through the registration process in the past. However, it still concluded that, unlike the other works raised (a glass sculpture as in Runstadler Studios, and an irregular polka dot design in Prince Group), the Work’s elements were not arranged in an original way such as to warrant protection.

The role of the author

Another point of contention involved the combination of the letters ‘T’, ‘J’ and ‘H’ of the nautical flag alphabet and its relation to the location and arrangement. The Board was quick in pointing out that the symbolic meaning, impression that a work conveyed, or the intent of the author were irrelevant to whether the Work contained a sufficient amount of creativity (Compendium (Third) §310.3). As set out in §310.5: “the fact that a creative thought may take place in the mind of the person who created a work… has no bearing on the issue of originality unless the work objectively demonstrates original authorship”.

Drawing again on Feist, the Board stated that the author’s combination of the preexisting ‘J’ and ‘H’ flags meant the author’s role was “so trivial as to be virtually nonexistent”, as the Work was simply too basic in form. It thus reestablished their refusal of the reconsideration - the level of creative authorship in the configuration of the elements of the Work was at best de minimis, and too trivial to support copyright registration.

Comment

Originality in copyright has been considered as a fairly low threshold to reach. However, this decision shows that it is most definitely present, emphasising the need for a combination of shapes and colours with sufficient creativity that does not reduce the role of the author to a trivial one. This case could also be used to highlight the disparity between the ‘popular’ understanding of copyright and creativity, and that as understood in copyright law. Artistic intent plays no role in the determination of creativity in a Work. On the contrary, as aptly set out in the UK case of Sawkins v Hyperion [2005] EWCA Civ 565 (a country that traditionally envisaged originality as a low threshold and as requiring just skill, labour or effort):

A work may be complete rubbish and utterly worthless, but copyright protection may be available for it, just as it is for the great masterpieces of imaginative literature, art and music. A work need only be “original” in the limited sense that the author originated it by his efforts rather than slavishly copying it from the work produced by the efforts of others. (Mummery LJ, [31]). 

Thus, in light of U.S copyright law (and the worldwide standard of originality), the outcome was only to be expected.

But what about flags in general? This case obviously is not a catch-all for all copyright claims involving flags - the originality threshold would be the greatest challenge to overcome in order to obtain copyright protection in the US.

And what happens when a flag does attain copyright protection? This leads on rather well into another unique issue that has occurred involving copyright law and flags which has emerged in Australia …