Grossman LLP | Kohl's Becomes The Latest Retailer To Face Accusations of Copyright Infringement
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  • Kohl's Becomes The Latest Retailer To Face Accusations of Copyright Infringement
    10/13/2016
    Over the summer, we wrote about a group of independent artists mounting a publicity campaign—and threatening legal action—against fast-fashion retailer Zara over the alleged unauthorized incorporation of the artists’ designs into some of Zara’s wares.  This autumn, a new federal lawsuit by artist Lili Chin levies similar accusations against a major department-store chain, Kohl’s, regarding its sale of garments adorned with drawings nearly identical to a series of copyrighted illustrations by Chin.

    Chin v. Kohl’s Corp., Docket No. 16-cv-07543 (S.D.N.Y.)

    Chin names as defendants not only Kohl’s, but also entities who played a role in designing, manufacturing, or distributing the allegedly infringing socks and shirts; some of these defendants have not yet been identified by name.  The suit, initiated on September 27, focuses on the defendants’ alleged infringement of her illustrated poster “Doggie Language,” which depicts whimsical drawings of Chin’s own dog, a Boston terrier, in more than two dozen different poses.  Since the poster’s creation in 2011, it has become very popular, prompting Chin to create other posters and products featuring illustrated dogs.  Chin has also sold (via her own website) tee-shirts and other merchandise bearing the illustrations; she further notes that she donates a portion of her proceeds from such sales to dog rescue organizations.  This spring, she learned that Kohl’s has been selling socks and tee-shirts depicting near-identical copies of several of the dog illustrations from the “Doggie Language” poster, without her permission and without compensating her.  The complaint contains compelling side-by-side comparisons of the original and allegedly-infringing illustrations, and alleges that the infringing versions were presumably created by “trac[ing] over” the originals and then slightly modifying them.

    The complaint’s primary claim is, of course, copyright infringement.  Chin also asserts a common-law claim of unfair competition, noting that she has lost goodwill and suffered damage to her reputation, and pointing out that consumers may mistakenly believe that she is affiliated with the Kohl’s goods.  Her final claim, for “removal of copyright management information” under 17 U.S.C. § 1202, focuses on Kohl’s intentional removal of her copyright notification from the poster illustrations.

    Chin seeks actual and punitive damages as well as disgorgement of Kohl’s profits, and her costs and legal fees.  She also asks the court to order injunctive relief to prevent Kohl’s from further infringement, and to order the impoundment of the infringing clothing.  Additionally, Chin will attempt to show that Kohl’s conduct was “willful,” which could increase the amount of damages a court might ultimately award; to bolster allegations of willfulness, she points to the facts that Kohl’s has continued to sell the infringing products despite multiple demand letters from Chin, and that her website contains “copious clear information about the copyrights in her work,” including “instructions for contacting her to inquire about commercial licenses,” yet none of the defendants sought to contact her about licensing the images.  Kohl’s has not yet responded to the complaint, but the parties are set to attend a scheduling conference later this month.

    Independent Artists Are Defending Copyrights Vigorously

    As we recently observed in the context of graffiti art, the prevalence of claims like this—against large consumer brands that have allegedly infringed the work of small independent artists—suggests that some corporations are gambling that, as a practical matter, independent artists lack either the wherewithal or the resources to protect their rights.  But as this case shows, such a gamble is increasingly risky.

    For one thing, as we’ve observed before, independent artists are increasingly taking their claims not only to the courts, but to the press and social media.  This case is no exception; here, the story of Chin’s battle has been covered by multiple media outlets, spawning, among other things, a Change.org petition and an article on popular dog-lover website Dogster about how its readers can support Chin.  Effective public-relations campaigns can impact how corporate defendants respond to such claims, since the “cost” to an infringing defendant may suddenly include not just legal fees and a plaintiff’s potential damages, but also the cost of negative publicity for a defendant’s brand, not to mention direct pressure from consumers.

    For another thing, Chin is a good example of a more copyright-savvy artist-plaintiff.  Importantly, Chin had registered the copyright to “Doggie Language” in 2013, and the poster has for years borne a conspicuous copyright notice.  The fact that she had taken these affirmative steps before the Kohl’s dispute arose may mean that she has more options for potential relief.  For example, should she prevail on her claim regarding the removal of copyright information under § 1202, she could be entitled to additional statutory damages.  And the fact that she had registered the copyright prior to Kohl’s alleged infringement may mean she is eligible for statutory damages (which can be an attractive option for plaintiffs where actual damages may be difficult to prove) and attorneys’ fees under 17 U.S.C. § 412.  Her claims have a long way to go, but Chin’s diligent copyright practices as an artist may increase the likelihood of a more satisfactory outcome for her.

    We’ll continue to follow the case as it progresses, but for now, it serves as a useful reminder to artists to be proactive about registering and protecting their copyrights; and a clear reminder that designers or companies wishing to “borrow” images or illustrations from other artists should seek legal guidance before doing so, to minimize public backlash, litigation, and liability.
    ATTORNEY: Kate Lucas
    CATEGORIES: CopyrightLegal Developments