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.  

There is a genuine issue of material fact as to whether DT’s cut-away design for removing the USB flash drive from the PlumbBob object is sufficiently non-functional and non-trivial to warrant copyright protection. A reasonable jury could decide these questions in either party’s favor.

(Opinion pdf page 4).

EA holds a copyright for the PlumbBob icon in The Sims game.  The Sims game allows players to create virtual people known as “Sims” and direct these virtual people through their housing and neighborhood choices, relationships, careers and social interactions.  The PlumbBob icon carries special significance in The Sims game.

The Ninth Circuit defined the copyright question as “whether DT’s 3-D rendition of the PlumbBob as a USB flash drive is entitled to copyright protection as a derivative work.”  DT alleged that it made two original contributions to the PlumbBob-shaped flash drive: 1) DT’s USB drive has 12 equal sides, whereas EA’s version has 20 unequal sides and 2) the USB drive DT designed fits into the PlumbBob at a unique angle with a futuristic cut away look.

We have established a two-step inquiry for determining whether a derivative work is original enough to receive copyright protection. First, courts address the question whether any aspects of the work seeking copyright protection are purely functional, utilitarian or mechanical. If so, any differences in appearance between a derivative work and the preexisting work which are not conceptually separable from any utilitarian, functional or mechanical purposes are set aside and excluded from the determination whether sufficient artistic differences exist to constitute ‘originality.’

Second, when addressing originality, courts apply the two Durham factors from the Second Circuit: First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the original aspects of a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material. The amount of creative input by the author required to meet the originality standard is low but not negligible.

(Opinion pdf pages 9 – 10).

Addressing the first step of the inquiry, functionality, the Ninth Circuit held that there was a genuine issue of material fact regarding whether DT’s design for the way the USB flash drive fit into the PlumbBob was merely functional or utilitarian.  That the USB drive fits into the PlumbBob object is not copyrightable.  But DT’s cut away design may be non-functional and thus copyrightable.

In the second step of the inquiry, originality, the Ninth Circuit examined whether the difference between DT’s 3-D design and EA’s 2-D design was non-trivial. 

The Ninth Circuit rejected DT’s argument that its PlumbBob drive has 12 sides, as opposed to EA’s 20 sided PlumbBob, and therefore warrants protection.  Some images of EA’s PlumbBob show only 12 sides.  EA’s PlumbBob evolved over time.  Copyright protects a character’s distinctive traits and attributes, even if the character’s physical appearance is not the same in every context.

On the other hand, if a jury determines that the manner in which DT designed the USB drive to fit into the PlumbBob object is artistic and non-functional, we hold that there is a genuine issue of material fact as to whether DT’s USB drive is sufficiently original to warrant copyright protection. That aesthetic feature is something recognizably the artist’s own, and a reasonable jury could determine that it meets the low standard for originality.

(Opinion pdf pages 15 -16).

The Ninth Circuit ruled that the question of joint authorship is also one for the jury.  The question for the jury is whether DT sufficiently controlled its artistic contribution to qualify as a joint author in the creation of the USB drive prototype.

This case is Direct Technologies, LLC v. Electronic Arts, Inc., Nos. 14-56266, 14-56745, Ninth Circuit Court of Appeals.

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