Are they rubber bands or jewelry? Silly Bandz, those ubiquitous colorful silicone bands being donned by children in schoolyards across the country, lie at an important intersection of intellectual property law. They are similar to rubber bands but are worn like bracelets and when removed they revert to their original shapes – which can include superheroes, animals, athletes, sports team logos, numbers, letters, and so on. Kids wear them on their forearms by the dozen and there is a burgeoning underground market of playground band-trading among even the youngest of capitalists.
Silly Bandz are distributed by Ohio-based BCP Imports, LLC ("BCP"), which also offers a variety of related products, such as Silly Ringz and SillyBandz Necklaces. For fashionable mountain climbers, they even offer SillyBandz Caribinerz. Silly Bandz are generally sold in packages grouped by subject matter. For example, BCP offers packs that include "princess" "western" and "dinosaur" themes, as well as scores of licensed characters and other subjects.
BCP has been selling Silly Bandz for the last two years. It claims its groupings of bands has qualified them for copyright protection. BCP also has obtained a trademark registration for its word mark SILLYBANDZ (registered as a single word) and alleges that it has secured trade dress rights for its packaging. (Trade dress is an offshoot of trademark law.) BCP describes this packaging as "clear plastic 'pillow-shaped' packages with a generally rectangular label located near the top of the package" with a label that "bears a 'wave' background design." (BCP does not appear to have obtained a registration for its package design.)
The vast popularity of its products has led to frequent copying by competitors. The latest result: BCP is now suing defendants Wal-Mart Stores, Inc. ("Wal-Mart") and Crimzon Rose International, LLC ("Crimzon") for copyright infringement, trade dress infringement and unfair competition based on allegations that Wal-Mart and Crimzon are selling knockoffs. As a result, BCP claims it has lost sales and profits and suffered harm to its business.
BCP has alleged a claim for copyright infringement under section 501 of the Copyright Act, asserting that the defendants improperly are selling copies of its copyrighted products, including its packs of "Princess," "Rain Forest" and "Rocker" bands. Presumably BCP is asserting that its selection, coordination, or arrangement of the individual bands into the different collections is original and creative enough to qualify for copyright protection as a collective work. However, the complaint is not explicit on this point. (At this stage Wal-Mart could argue that, as alleged, the subject works do not meet the minimum threshold for originality to qualify for copyright protection in the first place, and that merely grouping the bands according to their subject matter does not constitute an original work of authorship.)
BCP has also alleged that the defendants have engaged in trade dress infringement, under section 43(a) of the Lanham Act, asserting that BCP's pillow-shaped package is widely recognized by consumers and has become a valuable indicator of the source and origin of Plaintiff’s products. BCP further alleges that the defendants use of a similar pillow-shaped packaging is confusingly similar to BCP's packaging and likely to cause confusion among consumers.
Surely there is a functionality argument to be made on this point, as trademark protection is generally not afforded to functional product designs. In a trade dress case, the plaintiff must show that it owns a protectable trade dress that is not functional; that the trade dress is either inherently distinctive or has acquired distinctiveness through secondary meaning (meaning that consumers have come to associate the product's design with a particular company); and that the defendant's trade dress creates a likelihood of confusion as to the source, affiliation, connection to or sponsorship of the product. At the very least, there appear to be several functional arguments that Wal-Mart could assert as to the Silly Bandz packaging.
Interestingly, BCP is not suing for infringement of the design of the individual bands - at least at this point. But that is likely because the copyrights of the licensed logos and characters probably are not BCP's to protect. Moreover, BCP would face an uphill battle on that front for its other designs, given the limited intellectual property protection generally afforded to fashion products.
Copyright protection is generally not afforded to fashion designs because they are considered "useful articles" that are not protected unless the creative elements can be conceptually separated from the utilitarian nature of the product; trademark protection is generally not afforded to fashion designs - as opposed to the labels themselves - because trademark law does not ordinarily protect functional products and there is a public policy interest of encouraging competition in the clothing of humans; there is some limited design patent protection that has traditionally been afforded to sneaker manufacturers, but BCP has not alleged it has obtained any design patents for its products.
However, BCP's complaint shies away from using the word "bracelet" and characterizes its products as "elastic bands". It may be employing an overall strategy of characterizing its products as something other than fashion in preparation for the day when it asserts trade dress protection for some of its individual designs, either in this case or another lawsuit.
Unfortunately for BCP, Wal-Mart has a history of vigorously defending against allegations of trade dress infringement. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (in which Wal-Mart battled its way to the U.S. Supreme Court, which ultimately found that Wal-Mart's copying of a competitor's clothing design did not violate the competitor's trade dress rights because product design can never be inherently distinctive and the competitor had not proved the necessary element of secondary meaning). Unlike that case, however, here it is the product packaging that is at issue - rather than the design of the product itself - which at least offers a potentially viable theory of recovery for BCP. (One of my recent posts about trade dress in product packaging is available here.) Moreover, BCP might argue it has obtained secondary meaning for its products and its packaging by this point.
Neither Wal-Mart nor Crimzon has yet answered the Complaint, and it is not clear if BCP has yet served them. Watch this space for further developments.
The complaint in BCP Imports, LLC v. Wal-Mart Stores, Inc. et al. can be found here.
Silly Bandz are distributed by Ohio-based BCP Imports, LLC ("BCP"), which also offers a variety of related products, such as Silly Ringz and SillyBandz Necklaces. For fashionable mountain climbers, they even offer SillyBandz Caribinerz. Silly Bandz are generally sold in packages grouped by subject matter. For example, BCP offers packs that include "princess" "western" and "dinosaur" themes, as well as scores of licensed characters and other subjects.
BCP has been selling Silly Bandz for the last two years. It claims its groupings of bands has qualified them for copyright protection. BCP also has obtained a trademark registration for its word mark SILLYBANDZ (registered as a single word) and alleges that it has secured trade dress rights for its packaging. (Trade dress is an offshoot of trademark law.) BCP describes this packaging as "clear plastic 'pillow-shaped' packages with a generally rectangular label located near the top of the package" with a label that "bears a 'wave' background design." (BCP does not appear to have obtained a registration for its package design.)
The vast popularity of its products has led to frequent copying by competitors. The latest result: BCP is now suing defendants Wal-Mart Stores, Inc. ("Wal-Mart") and Crimzon Rose International, LLC ("Crimzon") for copyright infringement, trade dress infringement and unfair competition based on allegations that Wal-Mart and Crimzon are selling knockoffs. As a result, BCP claims it has lost sales and profits and suffered harm to its business.
BCP has alleged a claim for copyright infringement under section 501 of the Copyright Act, asserting that the defendants improperly are selling copies of its copyrighted products, including its packs of "Princess," "Rain Forest" and "Rocker" bands. Presumably BCP is asserting that its selection, coordination, or arrangement of the individual bands into the different collections is original and creative enough to qualify for copyright protection as a collective work. However, the complaint is not explicit on this point. (At this stage Wal-Mart could argue that, as alleged, the subject works do not meet the minimum threshold for originality to qualify for copyright protection in the first place, and that merely grouping the bands according to their subject matter does not constitute an original work of authorship.)
BCP has also alleged that the defendants have engaged in trade dress infringement, under section 43(a) of the Lanham Act, asserting that BCP's pillow-shaped package is widely recognized by consumers and has become a valuable indicator of the source and origin of Plaintiff’s products. BCP further alleges that the defendants use of a similar pillow-shaped packaging is confusingly similar to BCP's packaging and likely to cause confusion among consumers.
Surely there is a functionality argument to be made on this point, as trademark protection is generally not afforded to functional product designs. In a trade dress case, the plaintiff must show that it owns a protectable trade dress that is not functional; that the trade dress is either inherently distinctive or has acquired distinctiveness through secondary meaning (meaning that consumers have come to associate the product's design with a particular company); and that the defendant's trade dress creates a likelihood of confusion as to the source, affiliation, connection to or sponsorship of the product. At the very least, there appear to be several functional arguments that Wal-Mart could assert as to the Silly Bandz packaging.
Interestingly, BCP is not suing for infringement of the design of the individual bands - at least at this point. But that is likely because the copyrights of the licensed logos and characters probably are not BCP's to protect. Moreover, BCP would face an uphill battle on that front for its other designs, given the limited intellectual property protection generally afforded to fashion products.
Copyright protection is generally not afforded to fashion designs because they are considered "useful articles" that are not protected unless the creative elements can be conceptually separated from the utilitarian nature of the product; trademark protection is generally not afforded to fashion designs - as opposed to the labels themselves - because trademark law does not ordinarily protect functional products and there is a public policy interest of encouraging competition in the clothing of humans; there is some limited design patent protection that has traditionally been afforded to sneaker manufacturers, but BCP has not alleged it has obtained any design patents for its products.
However, BCP's complaint shies away from using the word "bracelet" and characterizes its products as "elastic bands". It may be employing an overall strategy of characterizing its products as something other than fashion in preparation for the day when it asserts trade dress protection for some of its individual designs, either in this case or another lawsuit.
Unfortunately for BCP, Wal-Mart has a history of vigorously defending against allegations of trade dress infringement. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (in which Wal-Mart battled its way to the U.S. Supreme Court, which ultimately found that Wal-Mart's copying of a competitor's clothing design did not violate the competitor's trade dress rights because product design can never be inherently distinctive and the competitor had not proved the necessary element of secondary meaning). Unlike that case, however, here it is the product packaging that is at issue - rather than the design of the product itself - which at least offers a potentially viable theory of recovery for BCP. (One of my recent posts about trade dress in product packaging is available here.) Moreover, BCP might argue it has obtained secondary meaning for its products and its packaging by this point.
Neither Wal-Mart nor Crimzon has yet answered the Complaint, and it is not clear if BCP has yet served them. Watch this space for further developments.
The complaint in BCP Imports, LLC v. Wal-Mart Stores, Inc. et al. can be found here.
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