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Wherefore Thou Art #10
Fun With Infringement I

A few months ago I presented a primer on the law of copyright infringement. This month we’ll go a little deeper into the subject, looking at some of the gray areas that arise and some illustrative cases that deal with some of the more difficult issues.

Infringement can only be found where there has been (1) access to an original work, and (2) copying of the protectable (copyrightable) elements of the original work. This may sound simple and obvious and easy to apply, but it’s not. Multi-volume treatises have been written on the subject. Courts ponder infringement questions constantly. As often than not, the courts get it wrong, or issue a ruling that’s the equivalent of a coin-toss.

Let’s look at the issue of functionality. Copyright law says that only “non-functional” creative works are protected by law. This is an unfortunate choice of words. A work doesn’t have to be useless to merit copyright. Rather, the “functional/non-functional” boundary is an attempt to limit copyright protection to “artsy” things, leaving utilitarian items to the mercy of patent law. I guess the better word would be “utilitarian.”

Why is this dichotomy necessary? In protecting and rewarding the creator, copyright and patent do similar things (and spring from the same clause of the Constitution). However, copyright rewards individual “artistic” creativity by giving the creator exclusive rights over his work for life plus 70 years. Patent gives the inventor exclusive rights over a purely functional invention for only 20 years. Patent protections are harder to secure and stronger than copyrights -- with copyright, a subsequent similar, or even identical, work can receive protection if the second work didn’t copy from the first. A patent protects the inventor from a subsequent similar or identical invention, even if independently developed. The shorter duration of patent protection reflects a policy determination that the 20-year monopoly over an invention is long enough to give an inventor an incentive to invent, and also short enough to encourage the inventor to bring the thing to market quickly and completely. For artistic works, the same considerations just don’t apply, and the longer (some say too long) period of exclusive rights recognizes the more personal nature of works of creativity.

These concepts collide in the area of industrial or commercial design, when it’s not clear whether the thing is “purely functional” or not, or where an inventor tries to get lengthy, easy and cheap copyright protection (copyright registration costs thirty dollars; a patent can cost thousands of dollars) when a patent is the appropriate choice.

Take the bike-rack guy, a manufacturer of those steel-tube undulating s-curve bike racks (you seen them -- they’re everywhere). He tried to get a copyright for the bike racks, and he tried to stop another company from making them. The other company claimed that the bike-racks weren’t copyrightable. Au contraire, said the bike-rack guy, who claimed that the racks were originally sculptures, and even told a skeptical court that he got the idea at home one night when he inadvertently parked his little wire bicycle sculpture in his little wire undulating s-curve sculpture. He simply made his sculpture bigger and out of steel tubing. It’s a big sculpture! And it’s also a bike rack! Woo-hoo!

The court wasn’t moved, although the court indulged in an awful lot of logical gymnastics to get to the simple conclusion that the thing was just a bike rack. Maybe it was pretty to look at, maybe it was creative, but there was no part of the thing that didn’t function as a bike rack. The perfect bike-rack. Copyright denied. Had the guy pursued a patent (and it’s not clear that he even tried), he could have stopped anybody from making the bike-rack for twenty years, and in the meantime become the bike-rack baron of the world. But such was not to be.

When confronted with a situation in which someone claims a copyright for a generally functional item, courts look to see if there is something creative that is “conceptually separate” from the utilitarian aspects of the item. A review of caselaw applying this standard reveals that courts should probably not be allowed to try to conceptually separate anything. With the bike-rack, the determination was relatively easy, despite the court’s struggle to get there. The design was so minimal that there was nothing to conceptually separate. But it’s rarely that simple.

A recent case in upstate New York involving taxidermists’ fish mannequins (the practice of copyright law often introduces one to creative items previously not contemplated) proved to be more difficult. Apparently, when you take your prized fish to a taxidermist to get mounted, the fish taxidermist takes your fish head, tail and fins, and affixes them onto an off-the-shelf fish body mannequin. A group of agitated fish mannequin designers claimed that a fish mannequin company was stealing their original fish body designs. After a long, detailed, and illuminating analysis of fish body anatomy, the court determined that there were but a limited number of ways to portray a realistic fish body, with few meaningful deviations from the standard. This being the case, the court refused to give the fish mannequin designers the benefit of copyright protection, claiming the body designs were utilitarian. The designers should have known better -- an appeals court years before had denied copyright protection for human mannequins. Why should more be expected for the lowly fish?

Not every utilitarian article gets the copyright boot, of course. Two of the most influential cases in the law books involve findings of copyright protection for a high-design belt-buckle and for a table lamp, the body of which was reproduction of a sculpture of a human form. In both cases, the “conceptual separability” of the design and the function of the items were readily apparent. The difficulty is in the margins, particularly where minimal or high concept designs are involved. In these situations, the traditional tests to which courts are accustomed tend to fail. Courts, being creatures of inertia and precedent, strain to apply the outmoded tests anyway, and the results can be messy, unsatisfying, sometimes just plain wrong.

The clash is often unavoidable, and courts can’t be faulted for being unable to answer what are sometimes unanswerable questions. The bottom line is this: a creator, if he or she comes up with something that is more than just nice to look at or think about, should consider whether protection of the thing is desirable, and realize that copyright law won’t always do the trick.

© 2003 Paul C. Rapp
This article originally appeared in The Artful Mind, and is intended to provide the reader with an awareness of copyright law and not legal advice.