T-Shirt's Short, Pun-Filled Phrase Is Not Protected by Copyright; Hipsters Mourn

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By Tamlin H. Bason    

July 18 --The phrase “lettuce turnip the beet” contains no protectable elements, the Northern District of California said July 16, dismissing a copyright infringement claim based on “infringing” sales of t-shirts featuring the phrase.

The plaintiff, an individual who has sold “lettuce turnip the beet” emblazoned clothing online since 2011, owns a copyright on a t-shirt design featuring the phrase. However, the court said that the only similarities alleged in the complaint, asserted against popular children's clothier Gymboree, focused on how both parties' t-shirt designs used the same phrase. Since short phrases, however clever, are not protected by copyright the court granted Gymboree's motion to dismiss. The plaintiff will be allowed to file an amended claim asserting other elements of the copyrighted design.

Gymboree was less successful in its fair use defense in relation to the plaintiff's trademark infringement claim. The court found that Gymboree had failed to demonstrate that its use of the federally registered phrase constituted either classic fair use or nominative fair use. The court thus called the fair use defenses premature.

Lettuce Litigate

Elektra Printz Gorski claims that she first began selling t-shirts featuring the phrase in 2011. She has sold the clothes in the SoHo neighborhood of New York and through online websites such as www.etsy.com.

Gorski owns two trademark registrations on the phrase. She also has a copyright registration for a t-shirt design featuring the mark. The deposit for that registration included eighteen pictures containing two-dimensional t-shirt designs that featured the phrase on the front.

In her complaint, Gorski claimed that Gymboree Corp. began selling a children's t-shirt called the “Lettuce Turnip the Beet Tee” in more than 300 of its retail outlets in 2014. Gorski claimed that the shirts were also sold online at www.crazy8.com. The complaint asserted claims of copyright and trademark infringement. Gymboree moved for a dismissal of all claims.

Phrase Not Protectable

Courts in the Ninth Circuit apply both an extrinsic and intrinsic test to determine if two works are similar. The extrinsic test considers the objective similarities between the protected ideas in the copyrighted work and the work that is alleged to be infringing. The intrinsic test is a subjective comparison of the two works through the eyes of an ordinary observer that focuses on whether the two works, compared as a whole, are “virtually identical.”

Gorski's copyright infringement claim was unable to get past even the extrinsic test and so the court said it need not consider the intrinsic test. Specifically, the court said that Gorski had not alleged in her complaint that any of her protected ideas were infringed. Indeed, Judge Lucy Koh determined that the complaint appeared to only be asserting that Grymboree arranged the phrase in a similar manner than did Gorski. But, “ Short phrases, no matter how distinctively arranged, are not protectable elements,” the court said.

 “Because all of the similarities between the two products that Gorski alleges in her Complaint relate only to an arrangement of a short phrase, the allegedly similar features are not protected by copyright,” the court said. It thus dismissed the copyright claim, although it granted Gorski leave to amend her complaint in order to allege that Gymboree's design infringed protectable elements of her copyright.

Fair Use Defense Fails, for Now

Gymboree claimed that it was making a nominative fair use of the marks on the grounds that it was not using them as a source identified. The court said the fair use defense was premature.

“Gorski has alleged in the Complaint that Gymboree's use of 'lettuce turnip the beet' has appropriated the cachet of Gorski's products and has created consumer confusion,” the court said. It concluded that those allegations were sufficient at this time to defeat Gymboree's motion to dismiss.

Gorski is represented by Jeffrey E. Faucette of Skaggs Faucette LLP, San Francisco. Gymboree is represented by Annette L. Hurst Orrick of Herrington & Sutcliffe LLP, San Francisco.

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com  

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Gorski_v_Gymboree_Corporation_The_Docket_No_514cv01314_ND_Cal_Mar

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