The Super Bowl halftime show is nearly as big an event as the Super Bowl itself. Millions of people – many who are less than enthusiastic about football – tune in every year, so it is no surprise that the Left Shark during Perry’s “California Gurls” number received much recognition.
Perry had two dancing sharks behind her while she sang, and unfortunately, the Left Shark, found on “stage right,” seemed to have no idea what was going on, dancing off-tempo and making up its own moves in the background. Left Shark became an instant internet sensation, dancing into jokes, memes, and .gifs. And because the internet is a wonderful medium for the entrepreneurial spirit, Left Shark merchandise began appearing almost immediately afterward.
Fernando Sosa created a 3D printed model of Left Shark through the company Shapeways, a 3D printing service and marketplace. However, on February 3, 2015, a mere two days after Super Bowl XLIX aired, he received a demand letter from Perry’s attorneys, alleging that he was infringing her exclusive rights to the copyrighted Left Shark, and warning of the consequences should he continue. After receiving the letter, Shapeways took the Left Shark figurine down, and Sosa submitted the 3D print design to Thingiverse, a community for “discovering, making, and sharing 3D printable things” allowing its download for free. Not long after this exchange, Sosa retained an attorney who claims that costumes cannot be copyrighted and that Perry has no protectable rights in Left Shark. Sosa resumed selling his figurine on Etsy, and Perry’s attorneys have sent yet another demand letter.
Perry’s attorneys claim that there is a copyright in Left Shark based on its concept drawings, though they do not elaborate how this transfers to rights in the costume. Secondly, in response to Sosa’s questions about the true owner of the copyright, Perry’s attorneys merely claim that she is the owner “pursuant to the terms of multiple agreements,” without providing any documentation. Lastly, they claim Left Shark’s value derives solely from its association with Ms. Perry. The second demand letter closes by inviting Sosa to negotiate for a licensing agreement. Interestingly, it appears that Ms. Perry’s attorneys jumped the shark and filed a trademark application (Ser. No. 86/527730) for Left Shark using an image of Sosa’s allegedly infringing product on February 6, 2015, but abandoned it a mere four days later.
Unsurprisingly, Mr. Sosa has chosen not to negotiate a license, and his attorney responded to the second demand letter by questioning (1) exactly what protectable elements there are in the Left Shark costume, (2) Perry’s ownership considering the lack of documentation, and (3) alleging that Left Shark’s value has nothing to do with Katy Perry, but rather the whims of the Internet.
Protectable Rights in Costumes?
So, the real question is whether Perry can even have protectable rights in Left Shark? Although choreography can be copyrighted, it seems the crux of the threatened suit is the design of the Left Shark costume. A party cannot bring a suit in Federal Court under the Copyright Act until the work is registered, and it is debatable whether Left Shark is capable of registration. The Copyright Office released a policy decision in 1991 stating that costumes are “useful articles, and will be registrable only upon a finding of separable artistic authorship.” COPYRIGHT OFFICE, Vol.56-214, p.56530 (1991). Since that decision, courts have examined costume registrability several times, fluctuating between finding that costumes are unregistrable useful articles, and other times finding separate artistic expression. 1 2 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHTS § 2.08[F] (2014). In short, costumes must meet the requisite “modicum of creativity” to be considered an original work of authorship, excluding what is necessary to allow a person to wear them as “useful articles.” The amount of creativity required to be original is historically a low bar, but the question remains, are there any original elements of expression that take Left Shark out of the public domain?
Original Elements of Expression
The idea/expression dichotomy limits the scope of copyright protection by separating an idea from the expression of an idea. An idea itself is not protectable by copyright, however, its expression is. This strikes a balance between the First Amendment and the Copyright Act by allowing the free communication of facts and ideas while still protecting an author’s personal expression. However, if an idea and its expression are “inextricably intertwined,” such that there is only one conceivable way or a severely limited number of ways to express the idea in a work, then it may not be copyrighted because it is primarily an idea. This is known as the merger doctrine, where an idea and its expression merge. Considering the minimalist nature of the costume, the merger doctrine may apply to Left Shark.
Legal Rights Holder
Furthermore, even if Left Shark is copyrighted, Perry may not be able to claim the shark as “Part of Her.” Left Shark could be a derivative work, a work based on a preexisting copyrighted work that recasts, transforms, or adapts the original work so that, on the whole, the new work is an original work of authorship. Depending on how old the copyright is, Left Shark could already be in the public domain, or its rights could belong to a third party. If Perry retained someone to create the shark costumes, the designer would own the copyright unless it was a work for hire.
A work for hire may be created (1) by an employee within the scope of their employment, or (2) by an agent retained on behalf of their client, with a written agreement specifying that it is a work for hire. In either case, the legal author is the hiring party, even if the work is attributed to the person who physically created it.
Considering the dubious nature of the copyrightability of Left Shark, the legitimate questions about the rights holder of the alleged copyright, and the amount of press this controversy is getting, Katy Perry’s personal “brand” may be more harmed by the aggressive defense of her alleged IP than if she had just let this slide. This could serve as a lesson to others about the dangers of overaggressive protection when strategizing about protecting IP rights and preserving goodwill.
So, is the Left Shark protectable? This author has her doubts, although it may end up being a “Dark Horse.”