Jul 5, 2019 Uncategorised


Description: The Tommy Hilfiger Flag Logo – A two-dimensional graphic of a rectangle.  Within the rectangle are four smaller rectangles; two identically sized navy rectangles and two identically sized red and white rectangles.  The red and white rectangles are sandwiched between the navy rectangles.)

On February 14, 2017, Tommy Hilfiger filed an application to register a copyright claim in the Work.In a November 30, 2017, letter, a Copyright Office registration specialist refused to register the claim, finding that it “lacks the requisite authorship necessary to support a copyright claim.”

In a letter dated February 28, 2018, Tommy Hilfiger requested that the Office reconsider its initial refusal to register the Work. This was the “First Request”.


Tommy Hilfiger argued that the Work:
(i)  is more than just geometric shapes, and a significant amount of creativity, thought, ingenuity, and authorship was involved in selecting, combining, and arranging the elements of the Flag Logo Design to form an original and unique design.” 

(ii)   “consists of four different rectangles arranged in a unique manner so as to collectively comprise one larger rectangle and includes a combination of different colors, different shapes, and different size elements.”

(iii) “location and arrangement of the shapes is unique in that it is a creative combination of the letters ‘T,’ ‘J,’ and ‘H’ of the nautical flag alphabet to create a unique flag, which represents the initials of Thomas J. Hilfiger.”

Decision of the Board on the “First Request”:

The U.S Copyright Office after reviewing the Work in light of the points raised in the First Request, concluded that the Work “does not contain a sufficient amount of original and creative graphic or artistic authorship to support a copyright registration.” The Office explained that there are no elements or features embodied in the Work, alone or combined, that are eligible for copyright protection.

Tommy Hilfiger made a second request pursuant to Regulation 37 of the Code of Federal Regulation [C.F.R. § 202.5(c)], 


Tommy Hilfiger argued that the originality present in the work exceeds the standard set forth in Feist Publications, Inc., v. Rural Telephone Service Co. (a landmark case in U.S. copyright law laying down the principles of registration of copyright and dealt hereinbelow): 

(i)   That the “four rectangles of two different shapes are arranged in a unique way to form one larger rectangle, transforming four rectangles into five.”

(ii)    That the rectangles are sized so that the long and short rectangles form the top and bottom to the “nearly square” rectangles within, and to this “unique” arrangement of shapes are added three colours.

(iii)   That the arrangement has meaning—mimicking the letter “H” when turned 90 degrees and displaying the letters “T,” “J,” and “H” in the nautical flag alphabet for Thomas J. Hilfiger. 

(iv)   Finally, Tommy Hilfiger noted that the flag means “going home” in the yachting world because the red on the right side of the Work denotes returning from one’s voyage.

Decision on the “Second Request”:
On 15th March,2019, after reviewing the the arguments in the second request, the Board affirmed the Registration Program’s denial of registration.

Grounds of refusal –

Legal framework governing Copyright in U.S.A:  
According to 17 U.S.C. § 102(a), A work may be registered if it qualifies as an “original work of authorship fixed in any tangible medium of expression.” The term “original” has 2 components i) sufficient creativity and ii) independent creation and explained the same as follows:

1.     Unoriginal geometric shapes and colours are not acceptable by the Office:
To begin with, the Work is a combination of four rectangles and three colors: two equally sized blue rectangles and two equally sized red and white rectangles between the blue horizontal blue bars.  The Office cannot register common geometric shapes or coloring w.r.t 37 C.F.R. § 202.1(a) which says “examples of works not subject to copyright and applications for registration include familiar symbols or designs and coloring”; noting that familiar symbols and designs cannot be registered.  Thus, the individual elements of the overall Work are not independently copyrightable.  Tommy Hilfiger acknowledges that “color alone and a standard shape alone are not registrable.”

2.     Lack of originality
Tommy Hilfiger correctly stated that “the Office should consider the work at issue in its entirety.”  However, as the Ninth Circuit explained in Satava, “a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.” Indeed, some combinations of common or standard design elements may contain sufficient creativity to support a copyright, but not every combination will meet this threshold (like in the Fiest case).  Based on this standard, examination of the Work as a whole revealed a lack of copyrightable authorship.  The Work falls squarely into the Copyright Office’s regulations barring registration of a simple combination of basic geometric shapes and mere variations of coloration(37 C.F.R. § 202 “The Copyright Act does not protect common geometric shapes . . . .”).  Essentially, the Work is one large rectangle divided into two equally sized blue rectangles and two equally sized red and white rectangles.  The arrangement of four rectangles to create a larger rectangle, even if one among many possibilities, is not sufficiently creative to warrant copyright protection.  Additionally, the red, white, and blue colors added to the arrangement of shapes do not raise the Work into copyrightability; they are exceedingly common for flag designs. 

3.     Intent of author is irrelevant
Tommy Hilfiger argues that the “location and arrangement” of the rectangle shapes and colors “is a creative combination of the letters T, J, and H of the nautical flag alphabet representing the initials of Thomas J. Hilfiger (the founder of the Tommy Hilfiger brand).” The Board does not find this explanation persuasive.  First, to the extent that Tommy Hilfiger asks the Board to consider the symbolic meaning of the Work, the symbolic meaning or impression that a work conveys is irrelevant to whether a Work contains a sufficient amount of creativity.  [COMPENDIUM (THIRD) § 310.3].  Equally irrelevant is the intent of the author.(“The fact that a creative thought may take place in the mind of the person who created a work . . . has no bearing on the issue of originality unless the work objectively demonstrates original authorship.”). 

4.     Lack of creativity
The combination of pre-existing flags from the Nautical Flag Alphabet does not exhibit sufficient original authorship.  Compiled by the British government in 1857, the Nautical Flag Alphabet, also known as the International Code of Signals, consists of internationally agreed upon flag signals that are used to prevent incidents at sea. 
As discussed above, works composed of pre-existing elements may be copyrightable, but only if the selection, coordination, and/or arrangement of those elements reflect authorial discretion that is not so obvious or minor that the “creative spark is utterly lacking or so trivial as to be virtually non-existent.”  (Feist case). In this case it appears that the author principally employed the “J” and “H” flags to compose the Work, replacing the white rectangle in the “J” flag with the white and red rectangles from the “H” flag.  The combination of the two pre-existing flags was too trivial to support a claim to copyright. [e.g. Case- Homer Laughlin China Co. v. Oman (upholding refusal to register chinaware design pattern composed of simple variations of geometric designs due to insufficient creative authorship to support copyright registration). {COMPENDIUM (THIRD) § 905 (“Merely bringing together only a few standard forms or shapes with minor linear or spatial variations does not satisfy this requirement.”)}]. The Work is simply too basic in form.

——  Sreemoyee Majumdar, Student 4th year, Hazra Law College, Calcutta University currently interning in A.Sinha & Associates,Advocates 

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