On March 22, 2017, the Supreme Court issued a ruling in Star Athletica, L.L.C. v. Varsity Brands, Inc., et al, No 15-866, clarifying that the Copyright Act protects applied artistic elements appearing on utilitarian objects, including apparel. In a ruling authored by Justice Clarence Thomas, the Court held that: “[a] feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three- dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”
Michelle Mancino Marsh
Michelle Mancino Marsh has built an impressive track-record practicing in the areas of trademark, copyright and patent law, unfair competition/false advertising, anti-counterfeiting/anti-piracy, internet law and fashion and wearable technology law.
Her clients span a broad range of industries including fashion and retail, alcoholic beverage, computer software and hardware, educational services, financial and consulting services, pharmaceutical, and media and entertainment. Michelle is distinguished not only by the victories she has achieved for her clients but also for the wider influence and interest her cases have generated. She represents clients in state and federal courts, at the U.S. Patent and Trademark Office and before the International Trade Commission. She has also successfully obtained preliminary injunctions and ex parte seizure orders on behalf of her clients, and works closely with U.S. Customs and Border Protection and law enforcement in coordinated anti-counterfeiting efforts. She has argued and won numerous federal and state court appeals, including the Second Circuit's seminal famous marks case of ITC Ltd v. Punchgini, Inc., 373 F.Supp. 2d 275 (S.D.N.Y. 2007). Michelle has also successfully represented numerous companies in connection with design patent disputes in industries ranging from consumer products to industrial products.
Complementing her litigation work, Michelle’s practice also includes counseling and opinions, trademark and trade dress prosecution, devising cost-effective brand protection programs, negotiating licenses, IP acquisitions, and co-branding agreements on behalf of clients.
Michelle has received recognition for excellence in practice from a number of external organizations. Notably, she won “Best in Copyright” at the 2015 Euromoney Legal Media Group’s Americas Women in Business Law Awards; awards which recognize women lawyers who are influential and leading professionals in a practice area. She has also received recognition from a number of legal publications, including the 2015 edition of World Trademark Review 1000 which notes that she is an “outstanding” trademark litigator whose “role in securing crucial federal court victories has attracted much admiration.” She has also been recognized by The Legal 500 United States (2014), The International Who’s Who of Trademark Lawyers (2014), and the 2014 edition of Benchmark Plaintiff which named her one of the “Top 150 Women in Litigation.” Benchmark Plaintiff also named Michelle as a “Local Litigation Star (2014) – New York, Plaintiff.” Additionally, Michelle has been recognized as a New York “IP Star” by Managing Intellectual Property (2014). Her previous recognitions include being named to Benchmark Plaintiff’s “Top 30 IP Litigation Stars” in the United States and “Top Local Litigation Stars” in New York (2012), as well as being recognized by IP Law and Business Magazine as one of the “Top 50 IP Attorneys” under the age of 45. In 2011, she was selected as an “Attorney of the Year” for growing businesses by The New York Enterprise Report.
Michelle has presented numerous speeches to industry professionals on a wide variety of topics, including the impact of the gTLD expansion, famous marks protection in the United States, avoiding litigation in the footwear industry, legal trends in social media, and non-traditional trademark protection.
Blog Posts by Michelle Mancino Marsh
Exclusivity and uniqueness are the cornerstones of the fashion industry. From Louboutin’s iconic red-soled pump to Burberry’s famed trench, brands pride themselves on creating exceptional albeit timeless pieces. So what prevents a rival company from simply replicating success? Which begs the age old (and hotly debated) question – can clothing be copyrighted? The answer is anything but black and white.
A case filed by Burberry Ltd. earlier this year against JC Penney Corp Inc. in the Southern District of New York for trademark infringement, and related state and federal unfair competition claims over JC Penney’s use of a checkered pattern on coats appears to have quickly been resolved. Burberry Ltd. et al., v. J.C. Penney Corp. Inc., No. 1:16-cv-00982 (S.D.N.Y. 2016). In addition to state and federal trademark infringement, Burberry also asserted the more serious claims of trademark counterfeiting, which carries with it statutory penalties.
The check patterns at issue were as follows:
Burberry Check Pattern:
JC Penney Scarf Coat:
ABOUT ARENT FOX LLP
Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.