Control Panel Design Not Protectable By Copyright Under Star Athletica
Despite the existence of a copyright registration, the SDNY recently dismissed a copyright infringement claim for the control panel of a portable clothes dryer system, finding that the registered design covered a non-copyrightable utilitarian article.
Plaintiff Town & Country Linen Corp. and Defendant Ingenious Designs LLC entered a three-year Mutual Non-Disclosure Agreement ("MNDA"), under which Town & Country designed and developed various concepts and products for Ingenious with the intention to negotiate future agreements to market the products. Under the MNDA, Town & Country redesigned a portable clothes dryer system previously sold by Ingenious ("CloseDrier") and devised several concepts for Aramid fiber luggage products ("Project"). Town & Country invested heavily in the CloseDrier and the Project, and secured a design patent covering the CloseDrier, as well as a copyright registration covering the CloseDrier" Control Panel Design ("Design") (shown below):
Town & Country's complaint alleged that Ingenious used Town & Country's intellectual property and confidential information without Town & Country's authorization after negotiations failed to culminate in agreements with Ingenious to market the products. Ingenious moved to dismiss Town & Country's claims for copyright infringement, patent infringement, misappropriation of ideas, quantum meruit, unjust enrichment, and unfair competition.
In dismissing Town & Country's copyright infringement claim for Ingenious' use of the Design, the court found that the Design was a non-copyrightable utilitarian article, notwithstanding the presumption of copyrightability that arose from Town & Country's copyright registration. The Court noted that, while a U.S. Copyright Registration creates a rebuttable presumption of copyrightability, evidence that the work is a non-copyrightable utilitarian article can overcome this presumption.
In assessing Town & Country's copyright registration covering the Design, the Court focused on the standard for copyright protection of utilitarian articles adopted by the Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008 (2017). In Star Athletica, the Supreme Court found that "the design of a useful article is considered a pictorial, graphical or sculptural work [subject to copyright protection] only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately...
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