During Katy Perry’s half-time show of Super Bowl XLIX, backup performer Left Shark danced his way into the hearts of viewers across the nation. Left Shark’s fame grew as his moves were memorialized in memes after the game ended. Therefore, it is not surprising that entrepreneurial individuals wanted to capitalize on Left Shark’s fame.
Designer Fernando Sosa sculpted a miniature Left Shark figurine. He then posted an electronic file that allows others to print a 3D Left Shark of their very own on a 3D printing site, Shapeways. The figurine version of Left Shark sells for $25. Unsurprisingly, Perry’s attorneys quickly sent Sosa a cease-and-desist letter ordering the company to stop the sale of the figurine, alleging that the sale of figurines was infringing on Perry’s “exclusive rights to reproduce, display, and distribute its copyrighted images under the United States Copyright Act as set forth in 17 U.S.C. § 106.”
In order to prove a copyright claim, Perry must show (1) she owns a valid copyright and (2) the infringer copied her protected material. Here, it is unclear if Perry can establish either of these factors. First, Federal Courts and the United States Copyright Office have made clear that, generally speaking, costumes are not copyrightable because they are “useful articles” that copyright law does not protect. A costume is copyrightable only if it contains “pictorial, graphic, or sculptural elements that can be identified separately from, and are capable of existing independently of, the utilitarian aspects” of the costume. Second, it is unclear if Perry is the owner of a copyright in Left Shark. There is no copyright registered to Perry’s name, and there are other possible owners. For example, the costume’s potential copyright owner may be the designer of the costume if it was not created as a work-for-hire.
Further, this issue brings to light an interesting question – can a company, such as Shapeworks, that offers 3-D printing-on-demand be held liable for the infringements of its users? Federal law offers a safe harbor for services that provide a means for users to publish their own works, e.g., YouTube. Therefore, the 3D printing-on-demand services like Shapeworks could be considered under this safe harbor provision. However, the safe harbor provision is not always applied to all service businesses. For instance, in 2014, a federal judge denied summary judgment for CafePress, a service company that offers printing-on-demand for t-shirts, mugs and other items. The judge ruled that CafePress did not qualify for the safe harbor provision and permitted a photographer’s infringement claims against CafePress to proceed.
Taking a different approach to protecting their intellectual property, Perry’s attorneys have now filed trademark applications on the phrases “left shark,” “right shark,” “drunk shark,” “basking shark,” as well as on images of the sharks. Unlike copyrights, which protect original works of authorship, trademarks protect words, phrases, symbols, and/or designs that identify and distinguish the source of the goods of one party from those of others. It remains to be seen if Perry’s attorneys will send a second cease-and-desist letter to Sosa and Shapeworks, this time asserting their potential trademark rights.
Sosa, who has now retained an attorney, has resumed selling his Left Shark figurines online, proving he is willing to continue fighting for his right to print 3D miniature sharks. This battle may continue long after Left Shark’s fifteen minutes of fame are up.