Yeezy Boost 350 shoes may be registered, says US Copyright Office Review Board

Are trainers, even those with somewhat an iconic status, be eligible for copyright protection? Katfriend Riana Harvey (University of Southampton) takes a look at a recent decision of the US  Copyright Office Review Board which answered this question in the affirmative.

Here’s what Riana writes:

Yeezy Boost 350 shoes may be registered, says US Copyright Office Review Board

by Riana Harvey

Given the success of the Adidas + Kanye West partnership, with its Yeezy footwear selling fast (and counterfeits being made even faster), it is indubitable that copyright would be another useful form of protection for the famous shoes. Adidas finally saw this happen in May, when the United States Copyright Office Review Board (‘the Review Board’) reversed the earlier refusal of the Registration Policy and Practice division to register the 2-D artwork and sculpture copyright claims for the Works: “Yeezy Boost 350 Version 1” and “Yeezy Boost 350 Version 2”.

Background

The design for Yeezy Boost 350 Version 1 consists of “irregular black lines of various lengths and shapes on a grey fabric with a black semi-circle in the arch and an orange dotted stripe on an off-white heel loop” (pictured below).

Yeezy Boost 350 Version 1

Alternatively, the design for Yeezy Boost 350 Version 2 includes “several grey lines in a wave pattern with a thick orange stripe on the outsole that fades towards the heel of the sneaker” with an inner orange layer underneath the outer cloth layer, “add[ing] intermittent orange colouring” (pictured below).

Yeezy Boost 350 Version 2

The first application made by Adidas had been rejected on the basis that the Works were ‘useful articles’ and did not possess the necessary “copyrightable authorship”. Furthermore, whilst the Work consisted of separate designs, they were not viewed to have fulfilled the originality requirement, as they were “simple shapes arranged into common, expected patterns in very simple colour schemes”. 

“Useful articles” 

Under Section 101 of the U.S. Copyright Act (17 U.S.C. § 101) a ‘useful article’ is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”, and will consider an article that is normally part of a useful article as also being a useful article. 

The Review Board drew on the test set out in Star Athletica LLC v Varsity Brands Inc (137 S. Ct. 1002 (2017)), regarding the eligibility of cheerleading uniforms for copyright protection, reported here and here), setting out that the artistic feature applied on or incorporated may be eligible for copyright protection if it: “(1) can be perceived as a two- or three-dimensional work of art separate from the useful article; and (2) would qualify as a protectable pictorial, graphic, or sculptural work — either on its own or fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.” 

The Review Board also considered the principles set out in Mazer v Stein (347 U.S. 201 (1954), which allowed a dancer-shaped lamp base to be protected under copyright), and found that the test was fulfilled in the present case as the designs could be perceived as separate from the useful article, the sneaker. 

Original works of authorship 

The Review Board set out that its decision was based on the “low standard of copyrightability” set out in Feist Publications v Rural Telephone Service Co., (499 U.S. 340 (1991), requiring a “minimal creative spark”). 

However, the Review Board was keen to emphasise that this would only relate to the work as a whole, and that it would not extend to the individual standard and common elements of the Works, as under 37 C.F.R. § 202.1(a) (“works not subject to copyright…familiar symbols or designs”). The Review Board identified that, when looked at as a whole, the elements would be “combined in a distinctive manner indicating some ingenuity” (Atari Games Corp. v Oman, 888 F. 2d 878, D.C. Cir. 1989), and so would satisfy the necessary original and creative authorship requirements to be registrable. 

Comment 

Protection for a footwear design has typically fallen under design law, specifically design patents, in the US. However, the Review Board’s decision to allow the copyright registration of the Works on the basis of Star Athletica does provide another option for those with designs that can fulfil the above criteria. Looking solely at costs, it does appear as though fees for US copyright registration are significantly lower than that for design patents, which has obvious appeal. Whether this will result in more companies flocking to the U.S. Copyright Office with footwear designs in hand is unclear at present. Nonetheless, this does provide useful insight into the impact that Star Athletica will continue to have on cases in the future.