In the afterglow of the spectacle of this year’s confusing yet captivating Super Bowl halftime show (Go Pats!), we mused about the art law ramifications of the unexpected birth of the visual Left Shark phenomenon, the costumed dancer who was famous within seconds for a certain lack of enthusiasm. The initial discussion focused on whether the dancer’s costume design within the show itself allowed Perry to control its use as a matter of copyright. The recipient of one cease and desist letter disagreed, both humorously and persuasively, principally based on precedents about costume designs, and on the nature of the use itself. Left unresolved were any arguments about fair use, but those seemed clear to us as well: a T-shirt, Twitter post, internet meme, SportsCenter commercial, etc., that evokes some level of post-modern world-weariness in contrast to Perry’s boisterous beach-party theme should be transformative enough even for the strictest of copyright constructionists. It is not clear on the public record though how much of a fight there has been over that point.
Now the other shoe has dropped on the very day that the Patriots visited the White House to honor their victory. Katy Perry's application to trademark has been turned away in part by the U.S. Patent and Trademark Office. Even if Perry didn’t own a copyright in Left Shark, it’s possible that she could own a protectable trademark or assert enforceable trade dress in it. As my Sullivan & Worcester LLP colleagues over at Trending Trademarks have explained eloquently in the past, “A ‘trademarked look’ is not just a popular saying. Developing and consistently using a distinctive look and lay-out for products and services” is the touchstone. As for trade dress, the fame and associations related to Left Shark’s appearance have developed not with respect to Perry’s music or the halftime show choreography, but as an independent and largely inexplicable phenomenon.
By this token, Perry's odds seem very long. “Left Shark” is an entirely satirical, silly Internet fad. No one could seriously claim that until that dancer got out of sync with the other shark, that the designers of the show actually meant to create an ironic meme.
The battle over Left Shark is not over yet! Last week’s denial involved only one of six classes (Class 41 for “live musical and dance performances”) covered in Perry’s application to register a front view of the Left Shark. The Patent and Trademark Office rejected the specimen she submitted to prove use of the image as a service mark. The specimen in question was a photograph taken from the Super Bowl performance. Despite this initial rejection all of Perry's applications are still very much in play.
Generally domestic applicants can file trademark applications based on either actual use of a mark or bona fide intent to use (ITU). An ITU application is examined in the same manner as a use-based application, but instead of obtaining a registration the applicant receives a “Notice of Allowance.” Before a registration will issue the applicant must use the mark in commerce in association with the good/services covered therein, and then submit the date of first use and a specimen showing proper trademark use to the PTO.
Here, all that happened was that Perry’s submission related to a claimed actual use in connection with live musical and dance performances was deemed insufficient as merely a photograph of the halftime show. Ms. Perry can respond to the office action by submitting an appropriate specimen of use. The office action does not affect the other classes covered in the application or her applications to register a side view of the shark, the word mark LEFT SHARK, or applications to register BASKING SHARK, DRUNK SHARK, or RIGHT SHARK.
So. the idea that Left Shark is fair game is not yet a reality, and no one should order any Halloween costumes quite yet. There will no doubt be further developments.