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.

The Glazed Maple Design is Sufficiently Creative to Merit Copyright Protection.

Under 17 U.S.C. 102(a),

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression. 

Originality is required, but the work produced need only show a modicum of creativity.  The originality requirement bar is low.

The district court thought that the Glazed Maple design merely copied elements found in nature.  The Eleventh Circuit disagreed.

The Mannington designers did not, however, scan raw wooden planks. Instead the evidence, viewed in the light most favorable to Mannington, shows that they imagined what a deeply stained maple floor might look like after years of wear, and then they used stain, paint, hand tools, and digital photo retouching to express their concept first on wood and then as digital images.  Ideas alone are not protectable.  But if the expression of an idea is sufficiently creative, that expression is protectable. And when the level of creativity in an expression is at issue, testimony about the ideas that informed the expression is evidence of that creativity. Mannington’s idea of a distressed maple floor is not protectable, but Mannington’s testimony about that idea shows that the idea’s expression in the Glazed Maple design was the product of creativity, not a slavish copy of nature. Perhaps that expression is not highly creative, but it does not need to be. The decisions Mannington made in the location and character of the marks it added to the boards render its contributions creative enough to hurdle the low bar of copyrightable originality.

(Opinion pdf pages 10 – 11).

The creation of the Glazed Maple design was also not uncopyrightable “sweat of the brow” labor.

The effort that creative labor requires does not render the labor uncreative. Drafting and editing a novel usually requires months or years of toil over a keyboard. A masterpiece painting may require many preliminary studies and countless hours of exacting brushwork. Carving or assembling a sculpture may involve backbreaking physical exertion. All of those are examples of creative labor that is creative. So is Mannington’s selection and preparation of raw maple planks to express the rustic-floor idea in the Glazed Maple design.  It involved more than mere sweat-of-the-brow labor. The design did not lack copyrightable originality.

(Opinion pdf pages 12 -13).

The Glazed Maple Design is Not Inseparable from a Useful Article.

The district court ruled that the Glazed Maple design was not copyrightable because it was inseparable from a useful article.  Specifically, the district court thought that the laminate flooring would not be marketable without the Glazed Maple design and that the Glazed Maple design would not be marketable without the laminate flooring.  The Eleventh Circuit found some flaws in the district court’s analysis.

First, the conclusion was based not on evidence but on conjecture. Second, the facts of this case, viewed in the light most favorable to Mannington, disprove the non-marketability conjecture. Mannington’s evidence is that Home Legend sold flooring decorated with a virtually identical copy of Mannington’s Glazed Maple design. If that is true, the design has some value; otherwise Home Legend would not have copied it. The only obstacle to Mannington demanding payment for the use of its design on other flooring is the district court’s ruling that Mannington lacks protectable rights in its design.

(Opinion pdf page 15).

The Copyright Act protects pictorial, graphic and sculptural works, including two dimensional works of applied art, such as the Glazed Maple design.  Under §101, 

the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

The Eleventh Circuit ruled that the Glazed Maple design could exist independently of the laminate flooring.

Separability for the purpose of assessing copyright eligibility of a useful article’s design means that the design is either physically severable from the utilitarian article or conceptually severable. The Glazed Maple design at issue here meets both tests: it is both physically and conceptually severable from the Time Crafted Maple flooring to which Mannington applied it. The flooring and the design are physically severable: the evidence shows that Mannington sells otherwise identical flooring that uses décor paper other than the Glazed Maple design. The interchangeability of the paper designs in the manufacturing process necessarily implies that the design and the flooring to which Mannington applies it are physically separate objects. The Glazed Maple design is also conceptually severable from use as a decoration on Mannington’s flooring. The design might as easily be applied to wallpaper or as the veneer of a picture frame. Because the design is both physically and conceptually severable from the flooring to which Mannington applied it, the district court erred when it determined the design was an uncopyrightable useful article.

(Opinion pdf pages 16 – 17).

The Glazed Maple Design Copyright is Not for a Process or Idea.

The district court thought that because Mannington devoted so much of its argument to describing how it created the Glazed Maple design, that Mannington was trying to protect an uncopyrightable idea or process.

Mannington focused its evidence and arguments on its process for creating the image because Home Legend’s primary challenge to the validity of Mannington’s copyright was the contention that the design lacked copyrightable originality. Mannington showed copyrightable originality by presenting evidence about how it created the design by altering the natural appearance of the wood. That does not mean that Mannington tried to copyright the process through which it produced the design. The copyright protects only the specific two-dimensional digital artwork design that Mannington registered, a design that it created by combining digital images of fifteen maple planks, stained to appear time worn and combined in a specific design.

(Opinion pdf page 18).

The Eleventh Circuit Concluded that Mannington Owns a Valid, But Thin, Copyright in the Glazed Maple Design.

Mannington owns a valid copyright, even if the protection that copyright affords it is not particularly strong. Because much of the expression in Mannington’s finished Glazed Maple design still reflects the uncopyrightable features of each plank—features like the shape of the natural underlying wood grain and the plank’s shape, both of which are in the public domain — Mannington’s copyright gives it the limited protection of a derivative work.  A creative work is entitled to the most protection, followed by a derivative work, and finally by a compilation. The copyright protects only the original elements contributed by Mannington.  The copyright in a derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work. This limited protection and the restricted opportunities for creativity inherent in the genre of faux-aged floorboards mandate a copyright that extends (as Mannington concedes) only to identical and near-identical copies of the Glazed Maple design—to copies made, for example, by photographing the design from Mannington’s Time Crafted Maple flooring and making trivial color alterations. Mannington would have no copyright-infringement claim against someone who used processes like Mannington’s to make his own aged-maple designs, so long as those final designs were his own expressions, not copies of Mannington’s work.

(Opinion pdf pages 19 – 20).

What I like most about this opinion is that the Eleventh Circuit made it clear that creativity is a process, incorporating some intermediate steps to achieve the end result, but that the copyright registration covers the end result, not the process.  Another important point is that some artistic works require physical exertion, but the physical exertion aspect does not make those works less creative.

This case is Home Legend, LLC v. Mannington Mills, Inc., No. 14-13440, Eleventh Circuit Court of Appeals.

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