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Form vs. Function: A Guide to IP Rights in Furniture and Fixtures
Recent SCOTUS decision provides clarification
Intellectual property protection for furniture and fixtures has always been a complex area of law because of how such items straddle the lines between protection for functional creations and protections that expressly exclude functional elements. Designers and manufacturers are left to attempt to create a web of protection, working around function, through multiple intellectual property doctrines.
The issue of function was just addressed by one of the most significant cases for copyright law in recent years. In Star Athletica v. Varsity Brands, the U.S. Supreme Court sought to "resolve widespread disagreement over the proper test" for determining whether a pictorial, graphic or sculptural feature of a "useful article," such as a piece of furniture, is eligible for copyright protection. No. 15-866, 2017 WL 1066261, at *4 (Mar. 22, 2017). The decision's impact for useful articles in general appears favorable for those seeking protection.
Copyright law protects "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. 102. Within the statute's list of copyrightable works are "pictorial, graphic, and sculptural works" (17 U.S.C. 102) which include "works of artistic craftsmanship" in their form, but not "their mechanical or utilitarian aspects." 17 U.S.C. 101.
A "useful article" is defined in copyright law as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. 101. Copyrightable works may include the design of a useful article, "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." Id. This statutory provision is referred to as "conceptual separability," and the test to make that determination was resolved by the Supreme Court in Star Athletica.
Since its incorporation in the 1976 Copyright Act, many different tests have been used for evaluating whether a feature of a useful article is conceptually separable from that article so as to be entitled to copyright protection. In Star Athletica, the Supreme Court held that "an artistic feature of the design of a useful article is eligible for copyright protection if the feature (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 in some other medium if imagined separately from the useful article." Star Athletica, 2017 WL 1066261, at *13.
Of perhaps greatest significance for furniture and fixtures, the court rejected several prior approaches which focused on the useful article's status after conceptual separation. For instance, the court rejected the argument that a feature of a useful article can only be protected as existing "independently" "if it can stand alone as a copyrightable work and if the useful article from which it was extracted would remain equally useful." Star Athletica, 2017 WL 1066261, at *10. The court held that the "focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction." Id. at *10-11.
Numerous other tests which focused on functionality of the useful article after "imaginary extraction" were also rejected, explicitly or implicitly, including those which required the copyrightable feature and the useful article to be perceptible side by side, those which prohibited the feature from being necessary to the utility of the article or required that the feature not be primary to the utilitarian aspects of article.
By rejecting tests which focused on the utility of the useful article, the Star Athletica decision arguably makes copyright protection for furniture and fixture designs more readily attainable and significant in view of the functional limitations on design patent and trade dress protection.
Non-functional aspects of furniture and fixtures can be protected through design patent protection, obtained for the ornamental design in or on all or part of an article. 35 U.S.C. 171.
A design that is dictated primarily by the function of an article is not protectable. Poly-Am. v. API Indus ., 74 F. Supp. 3d 684, 689 (D. Del. 2014). To make this determination, one analyzes the design in its totality, rather than by element. Where the function of the article could be accomplished in ways other than the design at issue, a design patent is more viable. This is similar to the approach with trade dress law, discussed below.
While a design which is not primarily functional is capable of design patent protection, when a design contains "both functional and ornamental elements," the scope of protection is limited to the ornamental aspects of the design. Sport Dimension v. Coleman Co ., 820 F.3d 1316, 1320 (Fed. Cir. 2016). Courts construe the scope of the design patent claims to determine which aspects are non-functional.
In view of the Star Athletica decision, the functionality limitations of design patent protection may now be less significant to the extent Star Athletica may provide protection under copyright law. For instance, while some courts had previously held that a design which contributed to the utility of an article could not be copyrighted, as with the patent law restrictions, under Star Athletica, copyright protection will not be precluded merely because the design contributes to utility.
Designs, including three-dimensional designs, on or incorporated into useful articles—trade dress—can benefit from trademark law protection if the design meets the traditional requirements for such protection. Wal-Mart Stores v. Samara Brothers , 528 U.S. 205, 209 (2000). Trade dress refers to the "total image and overall appearance" of a product, including size, shape, color, texture and graphics. Ashley Furniture Indus. v. SanGiacomo , 187 F.3d 363, 368 (4th Cir. 1999). The statute "does not prohibit copying per se. Rather, the statute only prohibits a copy that can be passed off as the product of the originator, thereby confusing the consumer and interfering with the originator's rights in the goodwill of its business." Id.
To be able to assert a trade dress claim, the designer must show that the trade dress design is not functional, and that it is either "inherently distinctive or has acquired secondary meaning." Buzz Bee Toys v. Swimways Corp ., 20 F. Supp. 3d 483, 496 (D.N.J. 2014).
As with copyright and design patent law, trademark law also contains prohibitions against protection for functional aspects of a product. The rationale for this limitation is that trademarks are designed to identify the source of a product, not the product itself. A "product feature is functional … if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Buzz Bee Toys, 20 F. Supp. 3d at 497 (quotation omitted).
In making this determination, trade dress protection may be found even if one aspect of the overall design is functional, so long as the protection would not preclude others from providing the same overall function. "[O]ne may have a protectable interest in a combination of features or elements that includes one or more functional features …. Indeed, virtually every product is a combination of functional and non-functional features and a rule denying protection to any combination of features including a functional one would emasculate the law of trade dress infringement." Id. at 498.
This concept is similar to that just set forth in the Star Athletica case, insofar as finding that the mere incorporation into the design of some functional aspect does not negate protection.
Although sometimes complicated and costly, with careful planning, furniture and fixture makers can obtain intellectual property protection for their designs with a combination of copyright, patent and trademark law. With the Star Athletica decision, those efforts may just be a bit easier.
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