Citing a recent U.S. Supreme Court decision on copyright protection for artistic elements of everyday products, a Southern District judge has ruled that a light set’s decorative covers deserve protection because they are “sculptural works … capable of existing apart from the utilitarian aspect of the light set.”
U.S. District Judge Katherine Forrest’s decision, which focused largely on a “separability analysis” among the set’s artistic features and its intended use, denied defendant Advance International Inc.’s cross-motion for summary judgment. Advance International and related defendants had partially argued the light set couldn’t be copyrighted because it was a “useful article” containing artistic elements not sufficiently separable from its use.
The decision also denied, on other grounds, plaintiff Jetmax Limited’s summary judgment motion; and Forrest said she’ll soon issue a “near-in trial schedule.”
The opinion applied this year’s U.S. Supreme Court decision in Star Athletica v. Varsity Brands, 137 S.Ct. 1002 (2017). Forrest had asked both parties to submit additional briefing addressing the decision from March.
In Star Athletica, the high court “resolved widespread disagreement over the proper test for determining whether the design of a useful article is entitled to copyright protection under Section 101 of the Copyright Act, 17 U.S.C. §101,” Forrest wrote in her Aug. 28 opinion and order.
Hong Kong-based Jetmax, which designs, manufactures, and sells furniture, lighting and home décor items, sued New York-based Advance Limited in 2015 for copyright infringement. It claimed an Advance light set was substantially similar to Jetmax’s “Metal Wire Wrapped Tear Drop Light Set.” The suit also named as defendants Big Lots Inc., a retailer selling Advance’s sets, and Herbert Feinberg, an Advance president.
Forrest described Jetmax’s light set as an “ornamental light set comprised of a series of molded, decorative tear shaped covered lights with a wire frame over the covers.”
The federal copyright act sections at issue, 17 U.S.C. §§101, 102(a), protect “pictorial, graphic, or sculptural features” of the “design of a useful article” as long as the features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article,” Forrest wrote.
In Star Athletica, the Supreme Court “rejected various forms of previously applied separability analysis,” according to Forrest, who also indicated that the court’s test was streamlined when compared to certain other ones. The justices said that design features in a useful product will be protected if they “(1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated,” Forrest wrote.
“A party need not show that the extracted element is solely artistic, that it was designed free from considerations of utility, or that it would be marketable once separated,” she added.
In then applying the Supreme Court’s test to Jetmax’s product, Forrest found in Jetmax Limited v. Big Lots, 1:15-cv-09597, that its decorative covers could exist independently from its utilitarian aspects.
“The first requirement—separate identification—is not onerous,” Forrest wrote. “The decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. The Tear Drop Light Set undoubtedly has three-dimensional decorative covers that have sculptural qualities.
“The second requirement is ordinarily more difficult to satisfy,” Forrest continued, but here “the decorative covers [of the Jetmax set] are sculptural works that are capable of existing apart from the utilitarian aspect of the light set, i.e., the light bulbs and other components that cause the Tear Drop Light Set to light a room.
“The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string,” she said.
Forrest knocked down Jetmax’s summary judgment motion by ruling that “there are genuine disputes of material fact concerning whether plaintiff owns a valid certificate of copyright registration … and whether the Tear Drop Light Set is sufficiently original to warrant copyright protection,” meaning that it had to be “independently created … and possess at least some minimal degree of creativity.”
Neil Mark Zipkin, a partner at Amster, Rothstein & Ebenstein representing Jetmax, said he was pleased with Forrest’s opinion but declined to comment further. Harlan Mitchell Lazarus, of Lazarus & Lazarus, who represented the defendants, could not be reached.