On April 29, 2015 in Home Legend, LLC v. Mannington Mills, Inc., et al., the United States Court of Appeals for the Eleventh Circuit held that the lower district court had wrongly concluded that a design feature of the appellate’s laminate flooring product was not subject to copyright protection. According to the Eleventh Circuit, the design is protectable under copyright law as a derivative work. In general, derivative works “enjoy” a lesser degree of copyright protection than an original creative work. The decision is instructive for its review of copyright law in general.
The copyright at issue was for a laminate wood product manufactured with décor paper known as “Glazed Maple” and sold by Mannington Mills. The décor paper was a huge digital photograph depicting stained and apparently time-worn maple planks. By including the décor paper as part of the laminated wood product, Mannington Mills’ (“Mannington”) laminate flooring planks had the appearance of genuine, worn maple wood planks.
The worn maple effect was achieved using hand tools to introduce surface imperfections into real smooth-milled white maple planks to make the planks appear aged and well-worn. Then other steps including staining with different stain colors and stain shades were carried out to add effects like shadowing, simulated mineral streaks, and dark spots that were not present on the raw maple planks. Slip opinion at 4.
Certain planks that best mimicked the sought-after rustic look were subsequently selected for scanning with a high-resolution digital scanner. The digital images were further touched up, and eventually fifteen (15) plank images were selected as representing the “best of the best.” The selected images were printed into a single 120” by 100” digital image to provide the Glazed Maple design. It is this image that constitutes the décor paper through which the laminate flooring appears as worn and rustic maple wood planks.
The United States Copyright Office registered the copyright for the design in November, 2010. In 2012, Mannington requested that Home Legend, a competitor, stop selling laminate flooring products with designs that were “virtually identical in every respect” to the copyrighted Glazed Maple Design. Home Legend then sought a declaratory judgment that the copyright was invalid. Mannington counterclaimed for copyright infringement and moved for a preliminary injunction. The district court denied the injunction motion and eventually granted final summary judgment in favor of Home Legend. Slip Opinion at 7.
Copyright Law and Originality
The district court had opined that the Glazed Maple design was not original enough to be copyright eligible. It is axiomatic that to qualify for copyright protection, a work must be original. The Eleventh Circuit emphasized that originality is not novelty and that the U.S. Supreme Court has noted that ‘ “the requisite level [for copyright protection] is extremely law; even a slight amount will suffice.” Slip Opinion at 8 citing Feist Publ’ns v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345 (1991). The Eleventh Circuit further emphasized that Mannington did not merely scan raw wooden planks whether new ones or worn ones. Instead, its employees “imagined what a deeply stained maple floor might look like after years of wear, and then used stain, paint, hand tools, and digital retouching to express their concept first on wood and then as digital images.” Slip opinion at 10.
A tenant of copyright law is that ideas themselves are not copyrightable; the idea must be fixed in a tangible medium of expression. 17 U.S.C. § 102(a). The Eleventh Circuit concluded that the expression of the idea [in a tangible medium] was a product of creativity, “not a slavish copy of nature.” Slip opinion at 11. The location and character of the added marks and stains rendered Mannington’s contributions creative enough to meet the low bar of copyrightable originality under Feist.
Copyright Law & Compilations
The Eleventh Circuit also found that even if copyright law did not protect the altered individual plank images, the Glazed Maple Design also represents a protectable compilation expressing original selection and creative coordination of elements. Slip Opinion at 13. Under 17 U.S.C. § 103, a compilation, even of uncopyrightable elements, is eligible for copyright protection so long as there is some minimal level of creativity. Here, Mannington’s selection and arrangement of the final fifteen selected planks that best represented its conception of an aged and rustic floor and it believed looked best together showed originality sufficient to exceed the low bar required for copyright protection. Slip Opinion at 14 citing Feist at 348.
Copyright Law and Product Functionality
Functional elements are generally not copyrightable and in this way copyright protection is similar to design patent protection. Copyright law provides protection for pictorial and graphic works including “two dimensional . . . works of applied art.” Slip opinion at 15 citing 17 U.S.C. § 101 of the Copyright Act of 1976. The district court had concluded that: 1) the laminate floor incorporating the copyrighted Glazed Maple Design would not be marketable if its functional elements were separated from the artistic elements; and 2) the 2-D artwork would not be marketable in and of itself. Slip opinion at 15.
The Eleventh Circuit opined that the district court’s conclusion was based on conjecture and not on evidence. Mannington had argued that the Glazed Maple design had no other purpose than serving as a decorative element. The design did not have any other function, e.g., the function of hiding wear to the floor as the district court had opined. Indeed the laminate floor had a separate “wear layer.”
Furthermore, Home Legend sold flooring decorated with an identical copy of Mannington’s Glazed Maple design. Therefore the design itself could be separated from Mannington’s flooring and used by others, in this case by Home Legend. As such, it had value and the “only obstacle to Mannington demanding payment for the use of its design on other flooring is the district court’s ruling that Mannington lacks copyright rights in its design. Slip opinion at 15.
U.S. Copyright Law anticipates situations where a decorative design could be part of a functional product by stating: “to receive copyright protection, the pictorial [or] graphic . . . features [of a useful article] are copyrightable only if, and only to the extent that, such design incorporates pictorial [or] graphic features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article.” Slip opinion at 16 quoting 17 U.S.C. § 101. Under the Eleventh Circuit ‘s case law, “separability means that the design is either physically severable from the utilitarian or conceptually severable.”
The Court held that the design applied by Mannington to the flooring was both physically and conceptually severable from the actual flooring. This conclusion is consistent with the actual manufacturing process of laminate flooring where the interchangeability of the paper designs in the manufacturing process necessarily means that the design and flooring to which Mannington applies it are physically separable objects. Therefore the design meets the requirements for copyright protection under 17 U.S.C. § 101.
Home Legend further argued that copyright protection was not proper because Mannington had copyrighted a process for making the design. The Eleventh Circuit noted that the original copyright only protected the specific 2-D digital artwork design that Mannington registered. Slip opinion at 18.
Copyright Law and Derivative Works
The Court held that Mannington’s design met the requirements for copyright protection from creativity to non-functionality even though the copyright protection is not particularly strong. This is because the design is associated with uncopyrightable features of each plank – such as the shape of the plank and the shape of natural underlying wood grain.- which are both in the public domain Thus, if Mannington had simply taken digital images of the original maple wood planks, without more, and incorporated those images into the laminate wood flooring, copyright protection would not have been available. The Court was careful to point out that Mannington had “transformed the elements found in nature and those dictated by utility – that is, the raw [real] maple planks – into the expression of the rustic floor idea.” Slip opinion, note 2.
The Court classified the design as a derivative work. Under case law, “a creative work s entitled to the most protection, followed by a derivative work and finally by a compilation.” Slip opinion at 19. As a derivative work, the copyright protection extends only to identical or near-identical copies of the Glazed Maple Design. An example of copyright infringement would be where the alleged infringer had made digital photographs of Mannington’s design and used the “verbatim” design or made trivial color alterations in the design. Given the low level of threshold creativity associated with copyright law, another person who develops his own laminate flooring designs based on his own expression would not be violating Mannington’s copyright in its Glazed Maple flooring.
What is the take home point from the decision? Copyright protection may be available in situations not typically associated with such protection. Before filing for a registered copyright in such situations, care should be taken to determine if the product’s “copyrightable” feature will meet the requirements for copyright protection – a modicum of originality and non-functionality. Where the copyright is based on a natural product, copyright protection also requires that the product is not merely a “slavish copy” of existing natural structures such as stones, rocks, wood, etc. Slip opinion, note 2. Here, Mannington had created a design based on the creative input/vision of its employees. Finally, copyright protection of even derivative works can provide a competitive advantage to the copyright owner by allowing the copyright to take legal steps to protect the copyright from infringement.
THE FOREGOING IS FOR INFORMATIONAL PURPOSES ONLY AND NOT LEGAL ADVICE. YOUR READING OF THIS BLOG DOES NOT CONSTITUTE ANY ATTORNEY-CLIENT RELATIONSHIP WHATSOEVER. IF YOU ARE CONTEMPLATING AN ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSULT WITH AN ATTORNEY OF YOUR CHOOSING.
© 2015 by Troy and Schwartz, LLC
