The Curious Case of Russian Doll Copyright as a Defense
by Intellectual Property Attorney Bill Honaker, the IP Guy
The recent case of Carlos Vila v. Deadly Doll is an amazing example of Russian Doll Copyright Infringement that involves a fictitious Deadly Doll and an actual Russian “doll”, Irina Shayk, a Russian model. It also involves the use of Russian Doll Copyright infringement as a defense to copyright infringement.
Carlos Vila is a professional photographer. On February 7, 2020 he took a photograph of a Russian model, Irina Shayk. In the photo (similar shown to the right) Ms. Shayk is wearing pants with a cartoon image (similar below) of a woman wearing a bikini holding a skull in her right hand.
The image was created for Deadly Doll, a Los Angeles-based clothing company. Deadly Doll sells clothing with graphics incorporated into them.
Both Mr. Vila and Deadly Doll registered their copyrights with the United States Copyright Office.
Deadly Doll posted Vila’s picture on Instagram, and the photographer Vila sued for copyright infringement in the United States District Court Central District of California. Posting a photograph infringes the photographer’s copyright even if the subject of the photo posts it, see my article Can You Post Your Own Photo.
Deadly Doll countersued for copyright infringement. They argued that the photographer infringed their copyright in their artwork because the photo is a derivative work; that is, a work based upon one or more preexisting works. The copyright laws give copyright owners a number of exclusive rights, including the right to make derivative works. The Copyright Office requires that in order for the derivative work to be copyrightable, it must be different enough from the original to be regarded as a “new work” or must contain a substantial amount of new material.
The photo taken by Vila is protected by copyright. Deadly Doll’s artwork is also protected by copyright. The artwork is a Russian Doll copyright because it is a copyright within a copyright; an image within a picture.
This isn’t the first time Russian Doll copyright has been asserted as a defense. Katy Perry used it in her defense of a copyright infringement lawsuit filed by Backgrid. She was sued for posting a photo of herself online. The image, and its copyright, are owned by Backgrid, a global celebrity news agency that provides photo and video content. The Backgrid photo of her showed her dressed as Hillary Clinton. Katy posted it on her social media, but she didn’t get a license to use the photo. Ms. Perry argued that her costume was copyrighted and Backgrid infringed her copyright by taking the picture.
Deadly Dolls’ argument that their copyright was infringed is not unlike other Russian Doll cases. See my article Beware of Russian Doll Copyright Infringement. In that article, I talk about graffiti artists suing advertisers for using photos of their products with the artists’ graffiti in the background. Mr. Vila’s photo shows a copyrighted image. One commentator has argued that this is different because the picture is reproduced in a useful article. The copyright law provides an exception to copyright infringement if the artwork is on a useful article (pants in this case) and is used in connection with advertisements or commentaries related to the distribution or display of such articles. I disagree that this exception would apply in this case because it isn’t related to the distribution of the display of such articles, which is an element of the exception.
We will never know whether the Russian Doll Copyright defense worked for Ms. Perry. The case was settled, as most of these do.
This case is pending. The decision will be very interesting. Unfortunately, these cases tend to settle. At a minimum. Deadly Dolls has created a defense that gives them leverage in any settlement negotiations. They were successful in defending against Mr. Vila’s motion for summary judgment on the pleadings. The Court held that there were factual issues that needed to be tried, and that the case must go forward. The Judge encouraged both parties to settle.
About the Author:
Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.