Illinois Federal Court OK’s Bird Copyright
BY JERRY GLOVER
SEPTEMBER 9, 2016
In order to be copyrightable, a work must be deemed original which means it cannot be copied from some other pre-existing work and it must have some “spark” of creativity. The bar for originality in copyright law is very low, but it still has to exist. So how can a company claim copyright protection for the design of a sparrow? Aren’t there very few ways to depict that bird? Should copyright give protection for a bird design that would essentially preclude others from using that design?
Recently, a federal district court in Illinois did just that. Design Ideas, Ltd. v. Meijer, Inc., 2016 WL 4487830 (C.D. Ill. August 25, 2016). In this case the plaintiff company obtained the rights for the bird design depicted below from an artist in Thailand. The artist had originally created the bird design as a sculpture. He later added a clothespin design to the sparrow design so that the bird could hold items. The plaintiff company and the artist entered into an agreement in 2008 that transferred to the plaintiff all rights in and to the bird design throughout the world. A photograph of the sparrow “clips” is shown below. Plaintiff chose the colors for the sparrow clips it manufactured.
The defendant companies (including Meijer and TJ Max) purchased the sparrow clips from plaintiff to sell in their respective stores. Meijer and TJ Max stopped buying the clips in 2012 and hired a designer to create knock-offs which were sourced to a Chinese manufacturer. A picture of the defendant’s sparrow clips is below (the defendant’s clips are on the right in the photo). The plaintiff sued the defendants for copyright infringement.
One problem the plaintiff had to immediately confront was its inability to find the signed 2008 agreement with the Taiwanese artist. The plaintiff could only find an unsigned copy. Since there was no signed agreement evidencing a transfer of rights from artist to plaintiff, the defendant claimed that the plaintiff was not the owner of the copyright and that the original Taiwanese artist had retained all rights in the sparrow design. But could the defendant make that claim? In other words, does a defendant have “standing” to challenge copyright ownership where the plaintiff and the artist had no dispute about ownership? The court noted that it was not disputed that an agreement was signed by the plaintiff and artist in 2008 and that the unsigned agreement had been submitted as evidence. That agreement, the court stated, had granted all rights the artist might have held in the design to plaintiff. Therefore, the defendant did not have standing to challenge the plaintiff’s copyright ownership of the sparrow design.
This led the court to the question whether the bird design was even copyrightable. The plaintiff claimed its sparrow design (or sculpture) and the color selection it chose for the sparrow clips were copyrightable. The defendant argued the bird shape was not original because “it does not meaningfully vary form stock depictions of bird silhouettes.” Allowing this design to receive copyright protection would allow plaintiff to monopolize the limited number of ways to express the general idea or shape of a small bird. The plaintiff countered that the design was not a realistic depiction of a bird but rather a “fanciful silhouette with a distinctive pose, posture and overall expression.”
The court agreed with the plaintiff that the sparrow design portrayed a bird with a distinct and creative pose, posture and overall expression. The court added the bird design did not depict a bird design or a lifelike representation. In other words, the design met the low creativity bar noted above. The court also noted that while color it not, by itself, subject to copyright protection, an author’s choice in incorporating color with other elements of a design may be copyrighted.
Finally, the defendant argued that the sparrow clothesline clip was a “useful” article and therefore not subject to copyright protection since “useful articles” are protected, if at all, by patent law. The Copyright Act defines a useful article as one that has “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. Section 101. To be eligible for copyright protection the useful article must include pictorial, graphic or sculptural features that can be identified separately (either physically or conceptually) from and are capable of existing independently of the utilitarian aspects of the article. There was not question that the sparrow clips served a useful function. But the court added that the design of the bird was physically separable because it can be physically removed and leave the clothespin function intact. This is called “physical separability.”
The court also noted that the design was “conceptually separable” which requires a person to be able to conceptualize the artistic aspect of the article as existing independently of the utilitarian function of the article. Here, the sparrow design was a product of the artist’s artistic judgment and that judgment was not governed by functional considerations. Even when a clothespin was added, the bird design remained ornamental and separate from the utilitarian function of the clothespin. Even if the sparrow clips performed utilitarian functions that does not invalidate copyright protection fort the sparrow design.
Since the defendants’ sparrow clips were almost identical to the plaintiff’s and given the fact that defendants had at one time bought sparrow clips from plaintiff, the court easily concluded that infringement had occurred. That the colors of some of the defendants’ clips were different from the plaintiffs did not allow the defendants to escape a finding of infringement.
TAKE AWAY: Illustrations of “common objects” can receive copyright protection if they are not merely lifelike representation of the objects