When evaluating whether a particular item or object infringes someone’s copyright, it is essential to determine whether the work is protectable by copyright in the first place. In many cases, the issue will raise a question regarding functionality, as functional items are generally not protected by copyright. Specifically, the question will arise: Is the item at issue a work of protected expression, or is it “merely” a functional item, not protected by copyright? This question is not as easy to answer as it may seem, and courts have struggled for years to develop consistent tests for doing so.
In Universal Furniture, Inc. v. Collezione Europa USA, Inc., the Fourth Circuit Court of Appeals, hearing an appeal from the Middle District of North Carolina, confronted this issue in affirming a decision involving furniture design that resulted in a damages award of more than $11 million.
Universal had alleged that its competitor Collezione which, according to the Fourth Circuit, has “a reputation as being a knock-off furniture company,” had unlawfully copied its furniture collections. Collezione’s president “acknowledged that his company routinely imitated other companies’ furniture designs.” Nonetheless, Collezione argued that it was not liable for infringement because, among other things, Universal’s designs were not conceptually separable from the furniture’s utilitarian aspects, and thus not entitled to copyright protection.
While both patent and copyright law are based on the same clause in the Constitution, the scope of protection provided by those rights differs significantly. Patents protect novel, useful inventions. Copyright does not protect useful articles, but rather protects a creator’s expression of an idea or concept. That is, copyright protects the way that the idea or concept is expressed or set down in some medium of expression, whether textual, pictorial or sculptural.
In the copyright context, the approach taken by most courts in distinguishing an unprotected “useful article” from protected “expression” is to consider first whether the item in question is a “useful article.” If it is, the courts analyze whether the item contains aesthetic expression that may be separated from the object’s utilitarian features such that it may be protected by copyright.
In Universal Furniture, the Fourth Circuit started its analysis by noting that the “’industrial designs’ of even ‘aesthetically pleasing’ furniture is not entitled to copyright protection.” The court relied heavily on the insights of Universal’s expert witness, the well-known furniture designer Thomas Moser. While concluding that many of the design elements used by Universal were in the public domain, the court agreed with Moser that the selection, coordination, adaptation, and arrangement of the design elements resulted in a unique modification and arrangement of those elements that easily crossed the low threshold for showing originality.
The court moved on to the “more vexing question” of whether the designs were “conceptually separable from the utilitarian aspects” of the furniture, a question it approached “mindful of the nebulous standard with which the [lower] court was obliged to grapple.” Under the Copyright Act, “the design of a useful article…shall be considered…a sculptural work only 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.” 17 U.S.C. § 101.
The court noted that “Congress enacted the current phrasing of the conceptual separability test in order to codify the Supreme Court’s ruling in Mazer v. Stein,” which held that china statuettes of dancing figures on the bases of table lamps were protected by copyright, even though they appeared on an otherwise utilitarian object.
Analyzing the interpretation of the conceptual separability test in cases after Mazer, the Fourth Circuit determined that Universal was not seeking protection for the purely industrial designs of its furniture but for “decorative elements” that were separable from the shape of the furniture itself. The court contrasted one well- known decision where the highly ornamental designs of belt buckles were found to be protected by copyright with another decision where the “sculpted anatomical elements” on mannequins were not. While visually appealing, the anatomical elements of the mannequins were “inextricably intertwined with the utilitarian feature, the display of clothes.”
Accordingly, Universal’s “highly ornate collections of furniture adorned with three-dimensional shells, acanthus leaves, columns, finials, rosettes, and other carvings” are not mere “‘industrial designs’ of furniture.” Rather, Universal’s designs, like statuettes on a lamp base, were “superfluous nonfunctional adornments for which the shape of the furniture (which is not copyrightable) serves as the vehicle…indeed, the designs are ‘wholly unnecessary’ to the furniture’s utilitarian function. A carved scroll of leaves on a nightstand post, for example, does nothing to improve the utilitarian aspect thereof.” It won’t give you a better night’s sleep.
Interestingly, the court discussed the process used by Universal’s designer in creating the furniture, assessing how much the designer was (or was not) influenced by the furniture’s function in compiling the decorative elements. The court found significant that the designer had developed the shape of the furniture before turning to the ornamentation, and that the role of many of the decorative elements (shells, leaves) was aesthetic, not utilitarian.
While the conceptual separability test requires that decorative elements be capable of “existing independent of utilitarian elements, the court noted that this “poses somewhat of a metaphysical quandary,” as decorative elements on furniture have no purpose when divorced from the furniture. Since, however, the test is conceptual–not physical– separability, Universal’s furniture designs passed. In sum, the Fourth Circuit agreed with the lower court that Universal’s designs are protected by copyright and that Collezione had infringed Universal’s copyrights.
The district court also had awarded damages in an amount equal to Collezione’s entire gross revenues from sales of the infringing collections as Collezione had failed to provide sufficient information to support the deduction of its expenses or permit the calculation of its profits. Because Collezione “was given several opportunities to offer reliable proof of deductible expenses, yet repeatedly failed to do so,” the Fourth Circuit found that the district court had acted correctly in making its extraordinary damages award of over $11 million.
Universal v. Collezione provides useful guidelines for deciding whether a utilitarian object can be freely copied or whether it is protected by copyright. These guidelines may be used not only in the furniture industry but also in other fields where product design and decorative features drive sales. The decision also underscores the critical importance of a good expert witness, the potential harm that can be caused by improvident admissions of a party’s principal, and the risks of failing to develop evidence relating to damages. Collezione learned these lessons at the cost of $11 million…and bankruptcy.