BLOGS: Furniture Law Blog

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Thursday, January 12, 2012, 11:30 AM

No Copyright Coverage of Digital Images of Useful Items (Furniture)

Copyright covers original, non-useful works of authorship; including pictoral, sculptural and graphic works, fixed in a tangible medium of expression.  So shouldn't a digital image of a useful item, say high-end designer furniture, be afforded copyright protection?  A digitially created image is really no different than a photograph and photographs of useful items have long been afforded copyright protection.  Unfortunately, the plaintiff in a December 22, 2011 decision from the United States Disrict Court for the Southern District of New York failed to present the right question to the court and wound up defeating its copyright claims.

In Heptagon Creations, Ltd. v. Core Group Marketing LLC, et al., No. 11 Civ. 01794 (S.D.N.Y. Dec. 22, 2011), the court granted defendants' Rule 12(b)(6) motions to dismiss for failure to state a claim.  In Heptagon, plaintiff filed an amended complaint alleging copyright infringement under 17 U.S.C. § 501, unfair competition and trade dress infringement under 15 U.S.C. § 1125(a), and common law unfair competition.  Heptagon's claims were based on defendants' use of images of plaintiff's "Andre Joyau" modern designer furniture in marketing material for the sale of an unfurnished $5.9 million condominium in New York City.  The rub here is that defendants, a real estate firm and interior design firm, originally requested to use actual pieces of furniture to furnish the condominium in exchange for the publicity the furniture would receive as a result of the condominium being featured in Home and Garden Television's ("HGTV") show "Selling New York."  When defendants refused to purchase an insurance policy for plaintiff's furniture, plaintiff refused to provide the furniture.  However, plaintiff had already provided defendants with images of the furniture so defendants used the image to create marketing materials with images of the furniture depicted as within the condominium.

In ruling on defendants' motion to dismiss for failure to state a claim, the court held that Heptagon failed to properly plead that it owns valid copyright.  First, the court noted that the Copyright Office rejected Heptagon's application for copyright certificates for the several items of furniture depicted by defendants because "the objects are utilitarian and contain no seperable authorship."  However, because Heptagon now asserted copyright in the furniture, the court had to independently assess the copyrightability of the furniture.  The court turned to the amended complaint to see if Heptagon adequately pled factual allegations sufficient to support a finding of copyrightability for each of the nine asserted pieces of furniture.

The Court found that Heptagon's complaint failed to adequate allege facts sufficient to demonstrate that the design elements of the furniture are physically or conceptually separable from the furniture's utilitarian elements.  Essentially, the complaint failed to distinctly identify the non-utilitarian design elements that are either physically or conceptually separable from the utilitarian elements.  For example, arched base and arm rest elements in the "Cocoon Chair" could not be removed from the seating area without adversely affecting the utility of the chair.  The court also held Heptagon failed to adequately describe its trade dress, describe the non-functional elements, plead secondary meaning, or a likelihood of confusion.

Cocoon Chair

Did the court get it wrong?  Not necessarily; the court was really given the wrong question.  Heptagon would have been much better off claiming copyright in the images it gave to defendants, not in the designs of the furniture.  The court dove headlong into a complicated "separability" analysis when it truly wasn't necessary.  Moreover, Heptagon likely ruined the chances for ever protecting this furniture by pursuing the wrong type copyright claim.  The lesson here is to properly assess the medium in which copyright can be claimed, whether there are multiple media to claim, and to assert those that are most likely to succeed, keeping in mind that sculptural works may be protected by other forms of media, such as photography and digital images.

Tuesday, January 10, 2012, 11:25 AM

Don't Forget The Unfair and Deceptive Trade Practices Claim

In a straight forward copyright infringement case the plaintiff cannot usually also assert a claim under North Carolina Gen. Stat. 75-1.1 because the claim is preempted by federal copyright law.  See, e.g., Iconbazaar, L.L.C. v. Am. Online, Inc., 308 F. Supp. 2d 630, 636-37 (M.D.N.C. 2004); Vogel v. Wolters Kluwer Health, Inc., 630 F. Supp. 2d 585, 593 (M.D.N.C. 2008).  For a state unfair competition claim to survive, it must usually be based on conduct not related to the allegations of copyright infringement, for example, fraud.  However, when the tables are turned and the lawsuit is a declaratory judgment ("DJ") action, then the claim is likely appropriate.

Take for example the recently filed case of Culp, Inc. v. Design Legacy by Kelly O'Neal, Case No. 1:12-cv-22 (M.D.N.C. Jan. 5, 2012).  It its complaint, Culp accuses Design Legacy of threatening copyright litigation over Culp's alleged infringement of a Design Legacy copyright protected design.  The complaint alleges Design Legacy accused Culp's "Birdsong" fabric pattern of infringing the copyright in Design Legacy's "Blue Heron" design, which is the subject of a pending copyright application.  Culp filed a DJ action seeking a declaratory judgment its Birdsong fabric did not infringe any of Design Legacy's copyrights.  Culp also lodged a claim for unfair and deceptive trade pratices under North Carolina Gen. Stat. 75-1.1, et seq.  Because Culp is not bringing an infringement claim, and the conduct Culp complains of consists of Design Legacy's threats to Culp's business, there is a good chance the unfair competition claim would survive a motion to dismiss based on federal preemption.

What's the benefit of such a claim?  The statutory cause of action provides for possible treble damages and attorneys' fees should Culp be successful.  It is a powerful weapon to wield in the face of copyright infringement claims.

Monday, January 9, 2012, 4:43 PM

When Is A DJ Action Appropriate For Trademark Infringement?

Many are familiar with a declaratory judgment action in the context of patent infringement.  The typical scenario involves demand letters from a patentee and the desire of another person or company to develop, market, and sell a product that is the subject of those letters.  This often results in a declaratory judgment or "DJ" action filed by the recipient of the letters seeking an order that the accused product does not infringe the asserted patent.  The action may also seek an order that the patent asserted is invalid and unenforceable.

The same scenario can unfold with respect to trademarks although the occurence of DJ actions involving trademarks appears to be less than with patents.  One reason for that may be that it is often easier to determine priority of use with respect to trademarks instead of complicated claim construction and infringement analyses involved with patents.  However, there are situations where the parties do not contest priority and that issue is not dispositive of the dispute.  The parties likely dispute whether there is a likelihood of confusion with respect to the relevant consuming public.  When that is the case, the party receiving demand letters may be well off to file a DJ action seeking to clear the air over whether they can continue to use a mark.

In a case filed January 4, 2012 in the Middle District of Georgia, Turner Furniture Holding Corp. ("TFH") filed a DJ action after receiving multiple demand letters from Turner Furniture Company of Tifton, Inc. ("TFCT") (Civil Action No. 7:12-cv-0004).  This case involves descendants of the original "Mr. Turner" both claiming rights to the Turner name in conjunction with furniture. TFH brought the DJ action after (it alleges) TFCT began issuing demand letters to TFH's clients and business contact and thus interfering with its business relationships.  If such situations arise, that might be the tipping point at which a threatened party begins to notice a real-world effect of the demands and a DJ action is approrpriate.  In the Turner Furniture case, the DJ complaint seeks a declaration that the plaintiff's rights are valid and enforceable while the defendant's rights are invalid and not enforceable.  The complaint also seeks a declaratory judgment that the plaintiff TFH's use of the Turner name does not infringe any of defendant's rights, to the extent they exist. 

Thus, when a company needs to "clear the air" on the use of its trademark, a DJ action may the right course of action.
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