A Novelty Claim

On November 17th, in Conwest Resources, Inc. v. Playtime Novelties, 2006 WL 3346226 (N.D. Cal.), Judge Saundra Brown Armstrong denied a motion for a preliminary injunction in a case which should immediately make its way into copyright casebooks. Plaintiff is in the business of producing adult entertainment, including what it claimed to be 12 copyrightable "sculptures" of male genitalia sold as "novelty items." A dispute arose with a licensee, whom plaintiff asserted had distributed copies after termination of the license. The licensee defended on the grounds that the works were not protectible, and that at least with respect to some of the acts of distribution, those acts occurred during the period when the license was in effect, thereby entitling it to the protection of the first sale doctrine in Section 109. The court agreed.

Defendant's lack of protectibility argument rested on the lack of separable features. That argument requires that the pictorial, graphic or sculptural item be a useful article, namely that it has an intrinsic utilitarian function. On this front, Judge Armstrong wrote: "Plaintiff conceded at oral argument, and it was plainly evident from an examination of the objects, that they can be, and generally are, used for sexual gratification. The packaging of the product notes that it is dishwasher safe and compatible with various types of lubricants, indicating that it is meant for use in sexual acts."

Plaintiff's contention that "the objects are tributes to certain models, and that collectors purchase them for display" was met with skepticism: "It is difficult to imagine how the sculptures' aesthetic features can be conceptually separated from their function: given that the function is to arouse, design features that are intended to stimulate the mind of the beholder the concept of sexuality are not truly independent from the utilitarian purpose of the object."

Moreover, defendant countered that basing the sculptures on actual men indicated there was no separability. Plaintiff rejoined, citing a Copyright Office examiner who wrote that the "work contains some additional sculptural authorship that may be regarded as copyrightable." Defendant asserted the "only differences from the original casts were size and color of the objects... ." The court left the issue to trial but found that plaintiff did not have a probability of success on the merits.

On the first sale doctrine, the court found that the distribution occurred during the term of the license and thus was lawful.