Trademark’s Cousin: Copyright

Trademarks are my passion, but when cool stuff happens in copyright, I just have to write about it. [1]

What Happened?

Robert Davidson is the creator of the Lady Liberty statue at the New York-New York Hotel & Casino in Las Vegas.

In 2010 the United States Postal Service inadvertently selected a photograph of Davidson’s statue to use on its Forever® stamp. The Postal Service thought it was a picture of the actual Statue of Liberty.[2]

Davidson sued the Postal Service for infringing his copyright.

Everyone agreed that the image on the postage stamp was of Davidson’s statue but the Postal Service argued its use wasn’t infringing because:

  • Davidson’s statue isn’t entitled to copyright protection; and
  • The Postal Service’s use was “fair use” under the Copyright Act. [3]

The Statue is Entitled to Copyright Protection

The Copyright Act protects sculptural work derived from another work as long as its original and contains “nontrivial expressive variation.” [4] Davidson testified at length about how he had given the statue’s face a fresh look, modeling it on his mother-in-law.

The court found that the Postal Service used the image of Davidson’s statute specifically because of the differences Davidson made to the statue’s face.

The Postal Service’s Use is Not Fair Use

The Postal Service’s “use of the image on its . . . workhorse stamp, printing billions of copies and selling them to the public as part of a business enterprise . . . so overwhelmingly favors a finding of infringement that no fair use can be found.”[5]

This little mistake cost the Postal Service $3,554,946.95 + interest + legal fees.

Bottom line: Using someone else’s intellectual property is a really big no-no.



[1] Trademark rights protect your brand. Copyright protects original works of authorship.

[2] Judge Eric G. Bruggink of the U.S. Court of Federal Claims described the selection process like this: Terry McCaffrey, the manager of stamp development at the time, “initially narrowed his selection to . . . three images . . ., one of which was of plaintiff’s statue, a photograph of the [statue’s] face taken by Raimund Linke. Mr. McCaffrey . . . did the subsequent culling by himself over the course of a single afternoon. He then . . . obtain[ed] digital image files that he could work with to make his final selection. The photograph of plaintiff’s sculpture came from Getty Images (“Getty”). Mr. McCaffrey did not realize that it was not of the New York statue. The other two pictures, from other vendors, were of the original statue.” Opinion of the U.S. Court of Federal Claim, Case No. 13-942C at page 10 (July 29, 2018).

[3] 17 USC §107. Here’s a great way to understand “fair use”: Everyone always thinks their use is fair use but it almost never is. Literally, not once has it been fair use when one of my clients has used copyrighted materials thinking it was “fair use.”

[4] 17 USC §102(a)(5). Shrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th Cir. 2009).

[5] Here are the reasons the court gave for finding that the Postal Service’s use was not “fair use.”

  • The “purpose and character” of the Post Office’s use was commercial.
  • The “nature” of the copyrighted work as a “replica” favors neither party.
  • The “portion used” was only the face of the entire statue but that was the part that was most original.
  • The “effect of the use” did not result in any revenue lost to Mr. Davidson because there was no ready market for images of the statue’s face. For the Post Office.

Opinion at pages 21-24.


Featured image By user: Flicka [GFDL or CC BY-SA 3.0 ], from Wikimedia Commons

Battle of the Bottles

There are hundreds of registered trademarks for bottle shapes, but using a bottle shape as a trademark is subject to all the same issues as word trademarks: If other companies are using something the same or similar, then it’s not a trademark because it can’t serve to identify a single source of goods.

For example, these bottle design trademarks are distinctive:

Screen Shot 2018-06-05 at 12.05.24 PM.pngScreen Shot 2018-06-05 at 12.03.08 PM.pngScreen Shot 2018-06-05 at 12.04.11 PM.png

Drawing for bottlw

S’well’s bottle.

Contrast those distinctive designs with the registered bottle design of Can’t Live Without It, LLC, dba S’well Bottle, which is more pedestrian.

S’well has had some success enforcing its bottle-design trademark rights, but it recently lost a case. Here’s what went down.

S’well sued ETS Express, Inc. for infringing S’well’s bottle design. The jury found that ETS was not liable on any of S’well’s claims. It’s likely that ETS submitted evidence that it was able to purchase “S’well-like bottles from various stores and websites . . .”* which helped the jury conclude that S’well’s design is not distinctive enough to serve as a trademark.

In May 2017, ETS filed to have S’well’s registration for the bottle design cancelled. Now that the lawsuit is over, the cancellation proceeding can move forward. I’ll keep an eye on it and let you know how it turns out.


Not S’well’s bottle.

The moral of the story: If you want people to know you by your trade dress, pick something that really sets you apart. For long-time readers, you’ll no doubt recognize this as the same advice as I give for word marks and logos.



Thanks, Cody B. for another great sighting and for letting me use his photo!




*I’m quoting an Opinion and Order of District Judge Rakoff from January 2018, in which Judge Rakoff granted ETS’s motion for summary judgment on some of the claims brought by S’well and denied the motion for summary judgment on other claims.

Judge Rakoff denied ETS’s motion for summary judgment in connection with claims that would have required him to conclude that the shape of S’well’s bottle is generic. Those claims were then argued in front of a jury as part of the trial. I’m assuming that ETS submitted evidence at trial that was similar to the evidence ETS submitted in support of its motion for summary judgment.