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.

Maurices Inc. is a retail clothing chain.  Maurices sent out a Request for Proposals (RFP) for two female mannequins, a junior size and a plus-size.  Oz Mannequins, a mannequin design and production company, won the bid and designed the two female mannequins for Maurices.  Maurices agreed to a limited license to use the design and that Oz would own the intellectual property rights.

Maurices later sent out another RFP for junior and plus-size female mannequins.  Oz alleges that Maurices asked companies to copy the Oz mannequins, breaching its agreement with Oz.  This time, RPM Displays, Inc. was the successful bidder.  Oz thought RPM copied Oz’s design.  Oz registered its copyright and sent RPM a cease and desist letter.  RPM sued Oz for declaratory judgment, asking the court to declare that Oz’s copyrights on the mannequins are invalid and moved for summary judgment.  RPM filed its motion before discovery was completed.

At issue before the court was whether Oz’s copyrights in the mannequins were valid, as opposed to whether RPM was an infringer of Oz’s copyrighted works.  Courts prefer to examine the merger doctrine at the infringement stage, when the copyrighted work is juxtaposed against the infringing work, rather than at the validity stage, when the question becomes whether any expression of that idea is copyrightable.  A broad base of evidence is usually required to conclude that the number of ways to express something, such as a fish mannequin, are so limited that such expression can never receive copyright protection. 

The district court ruled that it was premature to grant RPM’s summary judgment motion that the Oz mannequins are useful articles and should not receive copyright protection.  The district court refused to make dispositive rulings on summary judgment until discovery was completed. 

More evidence is needed to determine how much artistic judgment went into the creation of the Oz mannequins and to what extent the mannequins serve a purpose beyond displaying clothing. A determination of whether copyright protection is precluded under the merger doctrine here is also surely premature. At this early stage, the record does not even include the Oz mannequins in admissible form. There has been no occasion to view plaintiffs’ or defendants’ mannequins. Conducting a merger analysis on so little evidence would be in direct contradiction of Hart [Hart v. Dan Chase Taxidermy Supply Company, the most relevant case]. In addition to consideration of plaintiffs’ and defendants’ mannequins, it is likely that other modern junior and plus-size mannequins will need to be viewed to determine whether there are so few ways to express the ideas of junior and plus-size mannequins that copyright protection is precluded.

(Opinion pdf pages 15-16).

This case is RPM Displays, Inc., v. Oz Mannequins International, No. 5:12-CV-686, United States District Court, Northern District of New York.

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