Gifford v. Sheil (Case No. 1:24-cv-423) presents some tricky issues for content creators.
Can you prevail in a lawsuit accusing someone of stealing your “aesthetic” or “vibe”? Normally, no. But two beige enthusiasts are apparently testing the boundaries of the well-established understanding that copyright law only protects the specific expression embodied in a work. This case also tests what it means to remove copyright management information or “CMI” within the Fifth Circuit under 17 USC § 1201.
Let’s look at the counts
I was incredibly skeptical of the merits when I first read the coverage on this case. But let’s take a count-by-count deep dive into the claims from the Amended Complaint, filed December 11, 2024. If Sheil’s lawyers are reading this, you’re welcome.
Count 1: Federal Copyright Infringement under 17 USC § 501
Generally, copyright law does not protect the mere idea of a type of expression. In other words, you cannot protect the “vibes” of a work. Rather, copyright law only protects the actual expression of that work and enables a plaintiff to sue someone for selling or distributing a work that’s “substantially similar” to the original. To establish copyright infringement in the Fifth Circuit, “a plaintiff must prove ownership of a valid copyright and copying of constituent elements of the work that are copyrightable. Copyright ownership is shown by (1) proof of originality and copyrightability and (2) compliance with the applicable statutory requirements.” Compaq Comput. Corp. v. Ergonome Inc., 387 F.3d 403, 407-08 (5th Cir. 2004) (citations and quotations omitted).
My hot take: some of this is trial worthy
Based on what we know so far, I think parts of this claim will make it all the way to trial. What has not been reported is the fact that the Plaintiff registered copyrights on the copied photos. This is a big deal because this takes the case from an amorphous “she stole my vibe” claim to “she is copying the artistic expression behind each particular photo” (my words, not hers).
70 shades of beige
To make it to trial, Gifford will have to steer clear of amorphous allegations and stick to arguing that the creative aspects of her particular photos were infringed. The Amended Complaint does a fair job of showing seventy (70) A:B comparisons and it will be her burden that the specific artistic elements were copied, not just her (over)use of beige.
Most, but not all baseless
In my view, most of these examples assert unprotectable elements (i.e., “a vibe”), but a few of them aren’t totally baseless. Given that this will be a highly fact-intensive inquiry, and a summary judgment motion will only win if there “are no genuine issues” of fact, this means a few of the claims will probably go to trial. If I were representing Sheil, I would knock out as many of the works as possible by either arguing they’re invalid and/or not infringed. Hopefully that will make the damages award very minimal, thereby removing some incentive to push the case to trial.
Count 2: Vicarious Copyright Infringement under 17 USC § 501
My hot take: It’s a loser
From what I can gather, I think this claim is a loser. Why? Vicarious liability first requires a finding of direct infringement. In addition, the plaintiff must show that the defendant (1) had a direct financial interest in the infringing activity and (2) had the right and ability to supervise the infringing party’s acts which caused the infringement. Importantly, knowledge of the infringing activity is not required. See, e.g., Zenimax Media, Inc. v. Oculus VR, LLC, 166 F. Supp. 3d 697, 704 (N.D. Tex. 2015).
One could also call it bonkers
This claim is bonkers because you must have the right to control the other person who is the other direct infringer. To rule otherwise would totally gut the purpose of having vicarious liability in the first place. What Gifford argues here is that Sheil is vicariously liable for something she herself did. I can’t even. Motion to dismiss, please and thank you.
Count 3: Digital Millennium Copyright Violation under 17 USC § 1201
My hot take: Nope
I think this is a despicable attempt to shoehorn a baseless allegation under § 1201, but it’s based on a baffling split in authority within the Fifth Circuit. See ADR Int’l Ltd. v. Inst. for Supply Mgmt. Inc., 667 F. Supp. 3d 411, 417 (S.D. Tex. March 30, 2023)(discussing split). So … have to deal with it.
Throwing the baby out with the bathwater mark
This statute was enacted to punish those who alter or remove “copyright management information” (“CMI”) on creative works. This includes, for example, water marks, usernames and artist names. Throwing common sense out the window, some federal courts have held that, because the statute does not explicitly require the infringing work be “identical” to the original, then infringing works that are “substantially similar” to the original can run afoul of this statute too.
In other words, also bonkers
This too is bonkers. Why have a separate statute dedicated to punishing alteration of CMI, when according to this claim, nearly every instance of copyright infringement will inherently involve some form of removing the identity of the author? Following Gifford’s logic here would render superfluous all of 17 U.S.C. § 501 for plain ol’ infringement.
As a result, if she wins on any of the copyright infringement claims, she’ll also win on the Section 1201 claims. What a world.
Count 4: Trade Dress Infringement.
“Trade dress infringement is established by showing that: (1) the dress qualifies for protection, which requires considering functionality, distinctiveness, and secondary meaning; and (2) that the dress has been infringed, which requires considering the likelihood of confusion.” Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1117-18 (5th Cir. 1991)
My hot take: Let’s call it absurd
Based on what we know so far, this claim is absurd and should never see a jury. Why? Trade dress, like trademarks, must operate to uniquely identify the source of a product or service. Think the John Deere® green color, or the McDonald’s red and yellow. Trade dress has to be distinct. Is the color beige distinct for an influencer who sells stuff online? God, I hope not.
These things take time, a lot of time
It takes time to develop secondary meaning, and the more generic the aesthetic, the more time it takes. You cannot roll out of your beige bed and immediately get trade dress protection. Even John Deere and McDonald’s didn’t get their trade dress registrations overnight. It usually takes years of consistent use in commerce to build up consumer association and typically requires a well-crafted survey to prove that you have such association. Yet the Amended Complaint says Gifford has only been at this for five years – and it’s still an open question as to when she actually started using beige as a source identifier in interstate commerce.
Thus, Gifford has to argue that in five short years, this beige aesthetic has become widely known as uniquely identifying her and whatever services she provides. In a crowded online world, this claim is a stretch.
Count 5: Misappropriation
My hot take: not totally frivolous
On this claim, Gifford may have some standing. It’s not totally frivolous. Misappropriation of Name, Image, and Likeness (“NIL”) is probably the closest thing the law has on “protecting vibes.” But here again, Gifford has to show that these generic arrangements point to her identity. So, if she wins, I guess that will be her legacy?
This article originally appeared on LinkedIn
