PlumbBob Flash Drive Design May Be Protected by Copyright

Electronic Arts (EA) creates a variety of online games, including The Sims.  The Sims game includes a gem-shaped icon called a “PlumbBob.”  To promote a Collector’s Edition of The Sims, EA contracted with Lithomania to produce a USB flash drive shaped like a PlumbBob.  Lithomania contracted with Direct Technologies (DT) to produce a PlumbBob-shaped flash drive prototype.  EA approved the prototype created by DT, but Lithomania shipped DT’s prototype to a company in China to make the same flash drives for $0.50 less per drive than DT’s quoted price.  Even though DT signed an agreement with Lithomania to produce the flash drives, Lithomania never informed DT that DT lost the deal.  DT settled its lawsuit against Lithomania.

DT sued EA for violating the Copyright Act.  The district court ruled that DT’s flash drive was not sufficiently original when compared to the PlumbBob icon to qualify for copyright protection and granted EA’s motion for summary judgment.  The Ninth Circuit ruled that the district court erred by concluding as a matter of law that the flash drive was not copyrightable.  

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Gimme a “V” for Cheerleader Uniform Design Copyright Validity!

Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks? That is the question that strikes at the heart of this appeal.

(Opinion pdf page 2).

Varsity Brands and its affiliates registered a number of graphic design copyrights for designs appearing on the cheerleading uniforms and warm-ups they sell.  Varsity sued Star Athletica for copyright infringement for selling cheerleading gear with designs substantially similar to Varsity’s copyrighted designs.  Star Athletica argued that Varsity’s copyrights were invalid because they were unprotectable designs of useful articles.  The district court agreed with Star Athletica that Varsity’s copyright registrations were invalid, concluding that “a cheerleading uniform is not a cheerleading uniform without stripes, chevrons, zigzags, and colorblocks.”  The necessity of stripes, chevrons, zigzags and colorblocks meant that Varsity’s designs were for useful articles and not protectable by copyright.

The Sixth Circuit further refined its initial statement of the issue:    

When can the pictorial, graphic, or sculptural features that are incorporated into the design of a useful article be identified separately from, and be capable of existing independently of the utilitarian aspects of the article?

(Opinion pdf page 2).

The Sixth Circuit reversed the district court’s ruling and remanded.

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Laminate Floor Competitors Go to the Mat Over Copyrighted Design

Mannington Mills manufactures and sells laminate wood flooring.  Laminate wood flooring consists of several layers.  The “décor paper” layer goes underneath the transparent overlay, which is the top layer.  Mannington designers created Mannington’s Glazed Maple design to replicate what they thought a floor might look like after twenty or thirty years of wear.  The Mannington team created the Glazed Maple design by starting with new wood, gauging and staining the boards, taking digital photos and retouching digital photos until they arrived at the 120 inch by 100 inch Glazed Maple design.  Mannington obtained a copyright registration for its Glazed Maple design in November 2010.

Home Legend, a Mannington competitor, started selling a laminate floor design that was virtually identical to Mannington’s Glazed Maple design.  When Mannington requested Home Legend to stop selling the design, Home Legend filed a declaratory judgment action against Mannington.  The district court granted Home Legend’s motion for summary judgment.  The district court ruled that Mannington’s Glazed Maple design was ineligible for copyright protection because 1) Mannington’s Glazed Maple design lacked originality; 2) the Glazed Maple design could not be separated from the functional element of the flooring; and 3) the Glazed Maple design was directed to an idea or process.  The Eleventh Circuit Court of Appeals reversed the district court’s ruling that Mannington’s copyright was invalid.

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Distinctively Shaped Hookah Water Container Copyright Smoked

Under what circumstances can copyright protect the shape of a useful article?  In Inhale, Inc. v. Starbuzz Tobacco, the Ninth Circuit Court of Appeals faced the question of whether the distinctive shape of a hookah water container affects its copyrightability.  The Ninth Circuit ruled that the hookah water container was not protected by copyright, even though it had a distinctive shape.

Inhale Inc. obtained a copyright on a hookah water container depicting a skull-and-crossbones design.  Starbuzz Tobacco allegedly sold a hookah water container with the same shape as the copyright registered Inhale hookah container, but without the skull-and-crossbones design.  Inhale sued Starbuzz for copyright infringement.  The Ninth Circuit concluded that the Copyright Office issued the registration for the skull-and-crossbones design, without considering the shape of the container.

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Validity of Copyrights for Mannequins Requires Discovery

To what extent is the creation of mannequins to model clothing copyrightable?  Copyright law does not protect useful articles, i.e., articles that have an intrinsic utilitarian function.  Useful articles can receive copyright protection if their design incorporates pictorial, graphic, or sculptural features that can be separated from the utilitarian aspects of the article.  Are mannequins always useful articles?  Evidence on the design process and the nature of the work must be presented to determine whether the designer exercised artistic judgment independent of functional influences.

Animal mannequins, such as those used in taxidermy, can be protected by copyright, if they reflect such things as gestures, poses, attitudes, muscle structure, facial expression and skin wrinkles that represent the artists’ expression and are not required by the function of mounting the skin to the mannequin.  But when expression of an idea is limited to a few ways, the merger doctrine prohibits copyright protection.  The expression is said to merge with the idea.  Copyright does not protect ideas.

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Batmobile Not Excluded From Copyright Protection As a Matter of Law, Rules District Court

DC Comics, owner of registered copyrights in the Batman comic book character, sued Mark Towle, dba Gotham Garage, for copyright infringement for reproducing and distributing unauthorized and counterfeit Batmobile vehicles.  Judge Ronald S.W. Lew, U.S. District Court, Central District of California, recently denied defendant Towle’s motion to dismiss DC Comics’ copyright claim

The defendant filed a Federal Rules of Civil Procedure 12(b)(6) motion to dismiss for failure to state a claim upon which relief can be granted.  A Rule 12(b)(6) motion can be granted for “the lack of a cognizable legal theory or the lack of sufficient facts alleged under a cognizable legal theory.”  (Order pdf page 2).

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Copyright, Lanham Act and Some State Law Claims Survive Motion to Dismiss in Floral Art Case

Plaintiff Susan Tierney Cockburn filed suit (pdf) in the Western District of Washington against five out of state defendants – one manufacturing defendant and four retail defendants.  The defendants filed motions to dismiss the complaint for lack of personal jurisdiction and to dismiss plaintiff’s Lanham Act (federal trademark) and state law claims for failure to state a claim upon which relief can be granted under Fed. R. Civ.P. 12(b)(6).  The defendants also questioned whether plaintiff’s works were copyrighted, although that does not appear to have been part of the formal motion.  Judge Robert S. Lasnik granted the motion to dismiss in part and denied it in part.

Facts.  Plaintiff is a professional author and artist in Redmond, Washington.  She creates floral art with paper and three dimensional paper flowers for use in crafts and hobbies.  She “developed a unique line of paper punches to enhance her paper floral art and three dimensional paper flowers.”  (Order pdf page 2).  Plaintiff registered copyrights for two books:  Paper Bouquet and The Paper Garden – Summer Blooms.

Defendant SWS Industries, Inc. is an Illinois corporation that manufactures punches used in office products, industrial supply/hardware and crafts.  An SWS representative contacted plaintiff in 2009, asking whether plaintiff would work with it on augmenting its existing paper punches.  SWS later presented plaintiff with a contract to purchase and manufacture her floral designs, but the parties failed to come to an agreement.  Plaintiff alleges that SWS created infringing works which it sold to Internet and retail customers all over the United States.  Plaintiff alleges that the retail defendants sold SWS’s infringing products either online or through retail stores.  The retail defendants are Archiver’s, a Minnesota corporation, Notions, a Michigan corporation, Moore, a Florida corporation, and CreateForLess, LLC, an Oregon limited liability company.  The defendants are not licensed to do business in Washington state and do not have employees or a physical presence in Washington.

Plaintiff claimed copyright infringement, violation of the Lanham Act, 15 USC §1125(a), violation of Washington’s Consumer Protection Act, and violation of Washington trade dress and trade name protection.  She sought a constructive trust and an accounting, both of which are state law claims.

Personal Jurisdiction.  The court undertook the same analysis described in my June 1, 2011, post Personal Jurisdiction Found Lacking in Copyright Infringement Action.  Washington State’s long arm statute extends to the limit of the Due Process Clause. 

For a forum state to have personal jurisdiction over an out-of-state defendant, that defendant must have certain minimum contacts with the forum state, such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.

(Order pdf page 5).

The court set out the three-part test used in the Ninth Circuit to analyze specific jurisdiction:

  1. The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;
  2. the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
  3. the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

(Order pdf page 5).

The court indicated that “[i]n tort cases, courts typically inquire whether a defendant purposefully directs his activities at the forum state, applying an ‘effects’ test that focuses on the forum in which the defendant’s actions were felt, whether or not the actions themselves occurred within the forum.”  (Order pdf page 6).  Tort claims include a claim for willful copyright infringement. 

The first part of the above three-part test, purposeful availment, has its own three part test:  “the defendant allegedly must have (1) committed an intentional act, which was (2) expressly aimed at the forum state, and (3) caused harm, the brunt of which is suffered and which the defendant knows is likely to be suffered in the forum state.”  (Order pdf page 6). 

The Ninth Circuit has approved a sliding scale analysis in addition to the effects test:  “[T]he likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet.”  (Order pdf page 6). 

The court ruled that the defendant retailers conduct with Washington involved the sale of a small number of non-infringing products and was “insufficient to show that they directed their activity towards Washington in a substantial way.”  (Order pdf page 7).  The retail defendants’ conduct was also found not to have been expressly aimed at the forum, as the retail defendants did not previously know of plaintiff’s existence, her dispute with SWS or her residence in Washington state.  The court granted the retail defendants’ motion to dismiss for lack of personal jurisdiction.

SWS argued that exercising personal jurisdiction over it would be unreasonable.  “Defendant must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.”  (Order pdf page 8).  The seven factors for determining reasonableness are:

  1. the extent of the defendants’ purposeful contacts;
  2. the burden on defendant of having to defend in Washington;
  3. the extent to which jurisdiction conflicts with the sovereignty of the defendant’s resident state;
  4. Washington’s interest in adjudicating the dispute;
  5. which forum is the most efficient for resolution of the dispute;
  6. plaintiff’s interest in choosing the Washington forum; and
  7. the existence of an alternative forum to adjudicate plaintiff’s claims.

The court discussed the factors one by one.  It found that factors one, three, four and six weigh in favor of the plaintiff and factors two, five and seven weigh in favor of the defendant.  SWS did not present a compelling case that jurisdiction in Washington State is unreasonable.  The court denied SWS’s request to dismiss for lack of personal jurisdiction.

Copyright.  The defendants questioned whether plaintiff’s works were copyrighted, but did not provide support for that argument.  Defendants next argued that plaintiff’s designs become a useful article when used with a paper punch.  However, the designs can be cut with scissors or drawn.  The court did not think they were useful articles.  Defendants also argued that plaintiff’s floral designs are scenes a faire, since their origins are objects of nature.  The court ruled that this doctrine is inapplicable, since plaintiff did not claim copyright protection for the shape of certain flowers, but only for the designs of those flowers as rendered in her books. 

Lanham Act claim.  Plaintiff argued that SWS’s products used a trade dress confusingly similar to her products, in violation of the Lanham Act, 15 U.S.C. §1125(a).  Defendants argued that plaintiff’s Lanham Act claims duplicated her copyright claims and failed as a matter of law.  The court stated that “parallel copyright and Lanham Act claims are not per se improper” and that courts limit the application of trademark law when copyright laws “provide an adequate remedy.”  (Order pdf page 12).  The court indicated that plaintiff’s Lanham Act claim includes other elements that are not necessarily compensable under copyright law, such as a false designation of origin and/or sponsorship and SWS passing off its products as plaintiff’s.  The court stated that “courts typically resolve the issue of whether the Lanham Act and copyright claims overlap at the summary judgment stage rather than on a motion to dismiss.”  (Order pdf page 13).  The court denied defendants’ motion to dismiss the Lanham Act claim.

State law claims.  The defendants argued that plaintiff’s state law claims are preempted by the Copyright Act.  Preemption was discussed in my May 10, 2011, post Ninth Circuit Upholds Script Writer’s Implied Contract Claim under California State Law.  The two part preemption test adopted by the Ninth Circuit is

  • courts must first determine whether the subject matter of the state law claim falls within the subject matter of copyright as described by 17 U.S.C. §§102 and 103, and
  • courts must determine whether the rights asserted under state law are equivalent to the rights contained in 17 U.S.C. §106.

To survive preemption, the state law claim must include an extra element that is not protected by the Copyright Act.  The court ruled that plaintiff’s Consumer Protection Act (CPA) claim does not include the required extra element and dismissed that claim as preempted.  Of note to attorneys practicing in the Western District of Washington, the court stated that

[P]laintiff’s response does not address her CPA claim, which the Court construes, pursuant to Local Rule 7, as a concession that defendants’ arguments regarding that claim have merit.

The court found that plaintiff’s Washington State trade dress claims are not preempted, for the same reason the Lanham Act claims are not preempted.

The court found that plaintiff’s state law trade name claim based on words used by plaintiff in her copyrighted works is preempted by copyright law. 

Plaintiff’s state law trade name claim based on the alleged misuse of her name by the defendants is not preempted by copyright law.  “A person’s name or likeness is not a work of authorship within the meaning of 17 U.S.C. §102.”  (Order pdf page 15).

Plaintiff’s state law constructive trust claim was dismissed as preempted, as it was based on defendants’ violation of plaintiff’s copyrights. 

This case is Susan Tierney Cockburn v. SWS Industries, Inc., et al., Case No. C10-1566 RSL, Western District of Washington at Seattle.

Copyright Infringement Suit Regarding Precast Concrete Vault Drawings Yields Summary Judgment Rulings

Western District of Washington Judge Marsha J. Pechman granted in part and denied in part Defendant’s motion for summary judgment, granted Plaintiff’s motion for summary judgment and granted Plaintiff’s motion to amend its complaint in Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc. (pdf) on March 2, 2011.

Facts.  Plaintiff Oldcastle Precast, Inc. began manufacturing concrete precast vaults in the 1960s and is considered the leader in the precast concrete vault market.  Defendant Granite Precasting & Concrete, Inc. is a competitor.  In 2006, Plaintiff became aware that Defendant was using drawings similar to those created by Plaintiff.  Plaintiff notified Defendant of the alleged copying, the parties met and Defendant agreed to change 12 sets of its drawings.  Defendant did not sign Plaintiff’s proposed settlement agreement.  Plaintiff did not follow up.

Plaintiff monitored Defendant’s website from 2007 through 2009 and found the continued infringing use of only one product.  Plaintiff believed that Defendant complied with the agreement, except for that one product.  Sometime in mid-2007, Plaintiff became aware that Defendant did not change all of its drawing and product numbers.  In 2009, Defendant submitted a bid for a Seattle City Light project using drawings that Plaintiff believed infringed its copyright.  Plaintiff sued Defendant for copyright infringement on February 24, 2010.

Defendant filed a summary judgment motion, arguing that the statute of limitations had expired on Plaintiff’s copyright and trademark claims, that its state law breach of implied covenant claim was barred by the statute of frauds and that Plaintiff’s copyright and trademark claims failed on the merits.  Plaintiff filed a summary judgment motion, too, to dismiss Defendant’s copyright misuse counterclaim. 

Plaintiff also filed a motion to amend its complaint.  Plaintiff’s previous amended complaint alleged that Defendant downloaded Plaintiff’s drawings electronically and used those drawings to create its own infringing drawings.  Plaintiff’s drawings were registered with the Copyright Office.  Testimony from a September 2010 deposition led Plaintiff to believe that Defendant copied some much older drawings that Plaintiff’s predecessor produced and published and that Defendant obtained from Seattle City Light.  Plaintiff believed that those drawings were registered under the Copyright Act of 1909, not the Copyright Act of 1976. 

Plaintiff undertook a laborious process of inspecting company records for the earliest publication of the documents, preparing the renewal registration and supplementing its registration under the 1976 Act.  Plaintiff submitted its documents to the Copyright Office on November 22, 2010.  On December 9, 2010, the Copyright Office granted the renewal and supplemental registrations.  Plaintiff filed its motion for leave to amend its complaint on December 22, 2010.  Defendant moved for summary judgment on all of Plaintiff’s claims on December 16, 2010, the discovery cut-off was November 26, 2010, the dispositive motion deadline was December 27, 2010 and trial was set for April 25, 2011.

Defendant’s Motion for Summary Judgment.  The court will grant a motion for summary judgment “when the moving party has shown an entitlement to judgment as a matter of law and there is an absence of genuine issues of material fact.”  (Order pdf page 4).

Defendant moved for summary judgment on the following bases:

  • The statute of limitations on the copyright claim expired.
  • The statute of limitations on the Lanham Act (trademark) claim expired.
  • The state breach of implied covenant claim was barred by the statute of frauds.
  • Plaintiff’s works were not copyrightable.
  • The Lanham Act claim fails on the merits.

Copyright Act statute of limitations.  The court found that the three year copyright statute of limitations expired regarding one drawing, but that the Plaintiff could not have discovered the alleged infringements regarding the other drawings through diligent research in the three years prior to the date the complaint was filed.  The court granted Defendant’s motion for one drawing.

Lanham Act statute of limitations.  The court noted that there is no express statute of limitations in the Lanham Act and applied the statute of limitations for the closest analogy under Washington State law – the common law tort of trade name infringement.  The applicable statute of limitations was three years.  The court ruled that Plaintiff’s Lanham Act claims were barred by the statute of limitations for one drawing.

Statute of frauds.  The statute of frauds requires that “any contract that by its terms is not to be performed in one year from the making thereof must be in writing.”  (Order pdf page 8, citing RCW 19.36.010.)  The court ruled that since the contract could not be performed within one year but required Defendant’s forbearance from copying Plaintiff’s work forever, Plaintiff’s breach of implied covenant claim was barred by the statute of frauds.

Defendant argued that Plaintiff’s works were not copyrightable on the following theories:

  • The works are outside the scope of copyright protection.
  • There is insufficient substantial similarity between Defendant’s drawings and Plaintiff’s drawings to establish copyright infringement.
  • Plaintiff’s copyright protection is “thin” and therefore protects only against copies that are virtually identical.
  • The idea of precast concrete vault drawings merges with the expression.
  • Plaintiff’s drawings are scenes a faire (a standard feature).

Scope of protection.  The court ruled that technical drawings such as Plaintiff’s are expressly included as works covered by the Copyright Act.  17 USC §§ 101 and 102(a)(5).  The court also ruled that a technical drawing is not a “useful article” under the Copyright Act.  The technical drawing of a precast concrete vault, a useful article, was not itself a useful article.  Useful articles are not protected by copyright law.

Substantial similarity.  Plaintiff has the burden of showing 1) access to the copyrighted work and 2) substantial similarity between the copyrighted work and the infringing work.  “Substantial similarity” has both an extrinsic test and an intrinsic test.  The court rules only on the extrinsic test on summary judgment, as the intrinsic test is for the jury to determine at trial.  The court found “Plaintiff to have shown adequate articulable similarities between the expressive elements of the drawings to satisfy the extrinsic test.”  (Order pdf page 12). 

Thin copyright protection.  Defendant argued that there is only a limited range of ways to express the idea of a precast vault, requiring Plaintiff to show “virtual identity” between its drawings and Defendant’s.  The court found that Defendant did not present enough evidence on this point to prevail.  The court also stated that “there is nothing inherent in the notion of precast concrete vaults that limits their range of expression.”  (Order pdf page 13).

Merger doctrine.  “When an idea and its expression are indistinguishable, or ‘merged,’ the expression will only be protected against nearly identical copying…..Merger means there is practically only one way to express an idea.”  (Order pdf page 14).  The court ruled that evidence that Plaintiff’s vault drawings are the industry standard does not satisfy the merger doctrine.

Scenes a faire.  “Scenes a faire holds that when similar features in the item claimed to be copyrighted are as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright.”  (Order pdf page 14).  The court ruled that the scenes a faire doctrine did not apply, as Plaintiff sought protection for only specific expressions of vaults, not for the expression of utility vaults in general.

Lanham Act claim merits.  Plaintiff claimed trade dress violations under 15 USC §1125(a)Trade dress is some physical aspect of the product that identifies it as coming from a particular source.  Plaintiff has the burden of proving “(1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.” (Order pdf page 16).  The court granted Defendant’s motion for summary judgment on this claim, as Plaintiff did not argue the first two points and did not provide competent evidence on the third point.

Plaintiff’s Motion for Summary Judgment.  The court granted Plaintiff’s motion for summary judgment on Defendant’s copyright misuse counterclaim.  “The party pursuing a copyright misuse claim must prove that the holder of the copyright is using its monopoly secured by the copyright to extend to areas not covered by the copyright itself.”  (Order pdf page 18).  “[T]here must be facts tending to show efforts to expand and extend rights secured by the Copyright Act beyond their proper scope.”  (Order pdf page 19). 

The court ruled that Defendant did not articulate a public policy reason to invalidate Plaintiff’s copyright and that it did not provide sufficient facts to support its claim of copyright misuse.  The court rejected Plaintiff’s argument that copyright misuse is a defense and not a cause of action and that therefore it was improperly pled as a counterclaim.  Plaintiff’s argument that Defendant’s copyright misuse counterclaim was barred by the statute of limitations was also rejected by the court, as the claim was based on Plaintiff filing the lawsuit in 2010 and not on Plaintiff’s actions in 2006.  The court ruled that Defendant could reassert its copyright misuse counterclaim in response to Plaintiff’s second amended complaint.

Plaintiff’s Motion to Amend its Complaint.  The factors to consider in granting a motion to amend are “(1) undue delay, (2) bad faith, (3) futility in amendment and (4) prejudice to the non-moving party.” (Order pdf page 20).  The court granted Plaintiff’s motion to amend, as it did not find evidence to establish any of these factors.  The court ruled that the amendment focused only on clarifying what copyrights apply and how Defendant obtained the drawings.  Plaintiff’s timing in filing its motion was not undue delay.

Plaintiff’s motion for reconsideration on the breach of implied covenant claim was denied on April 11, 2011.

This case is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., Case No. C10-322 MJP, Western District of Washington at Seattle.