Thursday, December 07, 2006

Tiling for Dollars

If I couldn't be a copyright lawyer, I would want to be a trade dress lawyer. There are some conceptual similarities, especially in figuring out the line between ideas and protectibilty, as well as functionality defenses.

There are cases is which both trade dress and copyright claims are made. Sometimes plaintiffs lose on the copyright claim because the claim is deemed to be for a general style and not particularized expression, but they then win on the trade dress claim for essentially the same reason: a recognizable, nonfunctional style may well be protected. But sometimes plaintiffs lose on both claims, and that's largely what happened on December 1st in Walker & Zanger, Inc. v. Paragaon Industries, Inc., 2006 WL 3490975 (N.D. Cal.)(Vaughan Walker)(Thanks to C.E. Petit for bringing the case to my attention). The court granted summary judgment to defendant on the trade dress claims (and a false advertising one), and partial summary judgment on the copyright claims, leaving a few designs for further exploration.

Plaintiff was a producer of what was described as "high quality stone and ceramic decorative tiles." (Here is a link to its website). Plaintiff claimed that there was an overriding design theme that included "classical design, colors and glazes that evoke the look of 'Old World handiwork.'" One line, deftly called Avignon, "is intended to capture a variety of French-inspired designs, specifically invoking the 'look and feel' of French architecture and art 'over a large span of time,'" quite an accomplishment indeed. Defendant was believed to be an evil pirate. (Here is a link to its website). In a quite thorough review of the case law and facts, Judge Walker held plaintiff's designs to be generic, albeit nonfunctional (some consolation!).

On the copyright side, plaintiff had registrations and so relied on their prima facie status. Defendant was, however, held to have rebutted that status through expert testimony demonstrating a considerable body of similar pre-existing works by third parties. Of course, there might be non-trivial variations sufficient to support derivative copyrights, and it is here that some designs made the summary judgment cut while others didn't, with the warning that those that stayed in would be accorded at best a thin copyright.

A very solid opinion.


Anonymous said...

While I agree with the Court's analysis of the trade dress claims (the way to protect this sort of intellectual property is via a design patent), I think the district court went a little too far on the copyright issue.

The Court properly held that the defendants' summary judgment evidence raised a fact question as to the originality issue; i.e., were the designs original or were they copies / derivatives of pre-existing works in the public domain. However, it appears that the Court was of the opinion that if a tile design was in the public domain, then a similar or identical tile design could not be original and thus protected by copyright **as a matter of law.** See op. at 27-28.

If my reading of this portion of the opinion is correct, then the Court was plainly in error. “Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable.” Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 111 S.Ct. 1282, 1287 (1991). To put it another way, the existence of "prior art" is not the silver bullet in a copyright case that is it in patent law; indeed, absent evidence that the author actually copied such work, it is immaterial and usually should be excluded at trial.

Certainly, if a work is in fact copied from a prior work, there is no copyright protection for nonoriginal expressions. And, of course, the existence of an identical public domain design may make it very hard as a practical matter to prove that the defendant copied the protected design as opposed to the identical public domain one.

Nevertheless, if an author independently creates a work that happens to be similar (or even identical) to a pre-existing work, his work is still protected by copyright. The district court's opinion (and Prof. Patry's comment on it) appears to gloss over this important aspect of the law.

LKB in Houston

William Patry said...

LBK, I don’t think either the court or I are guilty as accused. I think the court recognized that non-trivial variations of pd works can be protectible. I appreciate that the language might be construed as suggesting that only new elements added to and not reworking of pd elements can be protected, but I don’t think that is what he meant; after all curls in a leaf hardly constitute a novel design. Here is the relevant discussion:

The court finds that differences exist between the designs in the public domain and those in plaintiff's tiles; hence, the critical issue is whether the differences are non-trivial. Not every modification of a work in the public domain is protectibile.

The Romanesque, Treillage and Fleur de Lis molding designs contain non-trivial differences from the public domain designs. In the Romanesque molding design, for example, plaintiff appears to have made some copyrightable contributions, such as the curls in the leaf, the orientation of the blades and the shape of the veins. To the extent that these and other artistic choices were not copied from the public domain or governed by the ceramic tile medium, they are original elements that plaintiff may protect through copyright law.

Anonymous said...

Prof. Patry:

We are all in agreement that nontrivial modifications and or reworking of designs in the PD can be protected under copyright (albeit the resulting copyright will be "thin").

My complaint is more fundamental.

What happens if a party independently creates a design that is extremely similar -- or even identical -- to a design in the public domain? Under Feist, the answer is clear: if the work is the result of independent creation (i.e., no copying from the existant design), then the work is original and therefore protected, notwithstanding its similarity to or even identity with the earlier work.

Under this court's analysis, however, a different results obtains. Such a design is protected **only** to the extent that there are nontrivial differences between the work and PD designs, and enjoy no protection at all if no such differences exist. Note that the court granted summary judgment on two designs for exactly this reason.

I don't see how such a rule squares with Feist, and indeed it would appear to open the door to "prior art" attacks on validity (i.e., if the expression appears in earlier works it is inherently unprotectable, regardless of whether or not the author independently created it). And that way lies madness.

To put it another way, I disagree with the Court that "the critical issue is whether the differences are non-trivial." The issue is whether the author copied from the prior work. If he did not (or, on a Rule 56 motion, if the evidence is controverted whether he did), then the extent of the differences is immaterial.

Again, if the summary judgment record was uncontroverted that the plaintiff had, in fact, used the PD designs in developing the ones at issue, then the Court's ruling was correct -- though I still would fault the language of the opinion for being imprecise. However, the mere fact that the two works at issue was essentially identical to PD designs is no more disposive on the validity issue than it would be on infringement: independent creation always provides a way out.

LKB in Houston

William Patry said...

LBK. I agree that if there was independent creation in the sense of not having seen the preexisting work, there only ordinary originality applies, but I don't think those were the facts in this case.

Anonymous said...

Prof. Patry:

It looks like we are in agreement on my primary issue: that where a work is the product of independent creation, the fact that some or all the expressions are present in earlier and/or PD works is irrelevant.

[This is a hot button issue for me. While it is obvious to those of us who swim in the Title 17 sea, I am constantly faced with the contrary argument -- usually by patent attorneys handling the defense of a copyright case.]

As to *this* case, the opinion is at best ambiguous as to whether the Court was saying (1) the SJ record is uncontroverted that plaintiff copied the PD works, and thus as to two of the plaintiff's works there is no evidence of originality, or (2) because two of plaintiff's designs are essentially identical to PD designs, they lack the requisite originality as a matter of law (i.e., plaintiff's independent creation is irrelevant).

If the Court was saying (1), then we're all in agreement: the Court was correct. However, if it meant to say (2) -- and trust me, there will be litigants who are going to cite this case and claim it did -- then that part of an otherwise excellent opinion conflicts with Feist and basic principles of copyright law.

LKB in Houston

Anonymous said...

What does it matter if you get a copyright or not, since in most cases you won't be able to sue anyone for violating the PD version?

I have a hard time believing that if you were a hermit, and you somehow came up with a design that replicated somethign in the PD, that you'd be able to prove someone copied yours and not the PD.

That would turn the weak burden of proof in the access/similarity standard on its head. Once the burden shifts, what would the defendant have to prove? That he saw the PD AND never, ever saw the 'copyrighted' version?

Anonymous said...

Many businesses engaged in the reproduction of well recognized historical decorative styles or motifs misunderstand the scope of their intellectual property rights; causing them to make unsupportably broad claims-- first, in registering their works, and second, in litigation.

There have been decisions about Stickley furniture reproductions, and Baroque ornamentation on silver plated flatware (Goddinger Silver Art) that I can recalll discussing the scope of such protection.

Judge Walker touched briefly on the section 410(c) evidentiary presumption of copyrightability, without the need to discuss some of the thornier aspects of how this presumption should work in circumstances where the registrant overstates the scope of its copyrights (since this was not the case in the motion before him). In this case, the plaintiff's two copyright registration certificates properly disclosed that the registered tile designs were based upon a pre-existing wood carving and a pre-existing frieze. The registrations further disclosed that the authorial contributions being registered were for adapting these pre-existing works.

Many times, in my experience, registrants do not properly disclose the derivative nature of their works, nor do they identify the limited scope of their authorial contributions. I believe a good argument can be made that this sort of misleading application/registration constitutes copyright misuse, and if intentional, or knowing, should result in dismissal or summary judgment in favor of the defendant.

William Patry said...

I think it certainly is true that people tend to have an overly broad conception of the protection which may (or more often may not) exist from marginal additions to pd works, then there is also the pervasive use of the courts to settle what are personal and commercial tiffs.

Anonymous said...

I think careful reading of the opinion suggests the court was not in error. Consider the court's citation to Nimmer for the proposition that originality turns on "access and similarity."

Opp at 27. ("See also 4 Melville B Nimmer & David Nimmer, Nimmer
on Copyright § 12(11)[B] n50 (1999) (noting “proof that the
plaintiff copied from prior works should involve the same elements
* * * as are required to establish copying by the defendant from
the plaintiff, i e, access and similarity.”).)

I assume access was not at issue so the court didn't dwell on it.

Anonymous said...

Re: "Consider the court's citation to Nimmer for the proposition that originality turns on "access and similarity."

I don't see that this proves anything. First, Nimmer's proposition that one can attack the originality of a work by showing access plus substantial similarity to an earlier work is not particularly well supported -- IMHO, this is another example of Nimmer simply declaring the law by fiat (a tendency that Prof. Patry has correctly taken him to task before).

Second, even taking Nimmer at face value, the test would be that you apply the *same* test to originality as you do for infringement. And, as I noted in an earlier post, just as a defendant can present evidence that notwithstanding evidence of access plus substantial similarity, he did not commit infringement because he in fact independently created the work (in which the issue of copying becomes a fact question for the jury), a putative author can similarly argue that notwithstanding access and substantial similarity to an earlier PD work, the copyrighted work was the product of independent creation and not copying. If the finder of fact buys the copyright owner's story, the work is protected notwithstanding access to and substantial similarity to the earlier work. My beef with the district court's opinion is that it doesn't seem to want to accept this part of the "circumstantial evidence of copying" test.

Further, to address another comment, merely because there is an earlier PD work out there doesn't mean that it is impossible for a copyright owner to prove impermissible copying, although it would obviously make it harder in cases where there is no direct evidence of copying. Take the facts of this case as an example. The evidence was that the defendants actually sent plaintiff's tiles to China to be literally copied. The defendant was *not* arguing that it actually copied an earlier PD work at all.

The question that remains unaddressed is how the district court's opinion can be squared with the language of Feist I set forth in an earlier post. If the summary judgment evidence was in fact uncontroverted that the two designs at issue (i.e., those where SJ was granted) were in fact derivative of prior works by others, then I agree that the opinion appears to be correct. (The opinion does not make this clear, however.) On the other hand, if the derivative nature of the work was controverted, then I submit that summary judgment on this issue cannot be reconciled with Feist.

LKB in Houston

Anonymous said...

Bill, could you please post the district court opinion? thanks -

William Patry said...

I gave a Westlaw cite but don't have another link. I do have a pdf, so if you email me I am happy to send you a copy.