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.
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.