Are Women’s Boots a Form of Intellectual Property?

You might think copyright is something you only have to worry about if you are in the publishing or media industry. But copyright can affect retail businesses as well. A recent decision by a federal appeals court illustrates the potential legal pitfalls of infringing copyrights in product design.

Olem Shoe Corp. v. Washington Shoe Corp.

Washington Shoe sells women’s boots. It claims copyrights on two specific designs, one a black boot with Zebra-type striping, and the other a black boot with white polka dots. Both copyrights were registered with the U.S. Copyright Office.

In late 2009, Washington Shoe sent a cease-and-desist letter to a competitor, Olem Shoe, claiming the latter was selling boots identical to the two Washington-copyrighted designs. Olem’s attorney replied, seeking additional information in support of Washington’s copyright claims. Dissatisfied with Washington’s response, Olem then filed a lawsuit in Miami federal court, asking a judge to declare it had not violated Washington’s copyrights. Washington counter-sued for copyright infringement.

The trial court agreed with Washington that Olem infringed its copyrights. The court went on to say the infringement was not “willful.” This is an important distinction in copyright law. A copyright holder can recover higher damage awards if it can prove the offender deliberately infringed the copyright.

A jury ultimately awarded Washington about $28,000 in damages for Olem’s (non-willful) copyright infringement. Both sides appealed to the U.S. Eleventh Circuit Court of Appeals in Atlanta. In January 2015, a three-judge panel affirmed the trial court’s outcome.

With respect to copyright infringement, the Eleventh Circuit said Washington met its burden of proof. Although federal law does not require registration—a copyright is established the moment an original work is “fixed in a tangible medium”—the fact Washington did register its copyrights created a “rebuttable presumption” they were valid. Olem failed to overcome this presumption in the trial court. Furthermore, the appeals court said, the trial judge examined both companies’ boots and found them “strikingly similar,” which created a legal presumption that Olem copied Washington’s designs, which were widely known.

All that said, the appeals court agreed with the trial judge that Olem did not “willfully” infringe Washington’s copyrights. There was no evidence, the Eleventh Circuit said, “Olem actually knew it was infringing Washington Shoe’s copyrights.” Just because Olem produced boots with a similar design, that did not mean it deliberately stole Washington’s designs. Willful infringement, the appeals court said, requires some proof of “specific” knowledge, such as that Olem had access to actual samples of Washington’s boots.

Protecting Your Own Copyrights

But as this case demonstrates, even accidental or unintended copyright infringement is against the law. If you manufacture or sell goods that too closely mirror a competitor’s designs, you may find yourself in the same position was Olem Shoe. Conversely, if you operate a business that relies heavily on unique designs, it is important to register and protect any legally valid copyrights in your own work. As noted above, registering a copyright creates a legal presumption of validity, which makes it much easier to prove infringement later on. If you need advice on this or any other legal matter, contact Florida business attorney John S. Sarrett today.

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