Ninth Circuit finds sufficient non-functionality and originality in 3-D object for case to proceed to trial
It’s never a good thing to find yourself face-to-face with something you thought you were still waiting for your client’s approval to produce sitting on a retail shelf. Your contact keeps telling you the deal will be done any day now, and then you find they’ve cut you out of the deal and had someone else make the finished product for less.
In the recently-decided case of Direct Technologies, LLC v. Electronic Arts, Inc., the Ninth Circuit Court of Appeals described exactly that unpleasant situation as happening to the CEO of Direct (“DT”), which believed it had contracted with Electronic (“EA”) to make USB flash drives based on its copyrighted “PlumbBob” symbol used in the popular computer game “The Sims.” According to the published opinion, DT’s prototype fit the memory sticks into a plastic diamond-shaped case, a 3-D version of the symbol and a design that EA approved. But the DT proto then found its way to a Chinese company, which produced a match that EA must have considered close enough, especially at $0.50 less per unit. Like the flash drive when clicked into its PlumbBob container, DT’s fate as vendor on the project was apparently sealed at that point. No. 14-56266, at 5-6 (C.D. Cal. Sept. 6, 2016).
DT sued, claiming itself to be a joint author of a copyrighted work and seeking an equal share of profits related to the PlumBob USB included in a “Collector’s Edition” of The Sims. But the company lost in the lower U.S. District Court for the Central District of California. There, the court concluded that DT’s contribution to the flash drive (its design for the 3-D PlumbBob) were either trivial or functional.
Copyright in derivative works depends on functionality and originality
On appeal, the Ninth Circuit reversed. The appellate court explained that DT could claim a copyright in its contribution to the derivative work of the symbol if it “contributed material ‘distinguished from the preexisting material employed in the work.'” Id. at 8-9 (citing 17 U.S.C. § 103(b) (internal quotations omitted)). The court then applied the two-step test for determining when a derivative work is sufficiently original to be protected by copyright. Under that test, the court looks first at “whether any aspects of the work seeking copyright protection ate purely functional, utilitarian, or mechanical.” Id. at 9 (internal quotations and citations omitted). Any functional aspects of the derivative work are set aside. The court then looks at the remaining aspects, asking “whether sufficient artistic differences exist to constitute ‘originality.'” Id. The original aspects must be more than trivial (but not much more). They must also avoid “affect[ing] the scope of any copyright protection in the preexisting material”–the work from which the new material is derived. Id. at 14-16. In other words, the creator of a copyrightable derivative work has a copyright only in its unique contribution, not in the preexisting material.
Reversing the lower court’s contrary holding, the Ninth Circuit reasoned that “the manner in which DT designed the USB drive to fit into the PlumbBob object” could be artistic and non-functional. Id. at 15. Aesthetic considerations were part of the design decisions behind DT’s work, the court noted, so there was a chance that a jury could find that “the unique and creative manner in which DT designed the USB drive to fit into the PlumbBob was nonfunctional and could potentially qualify for copyright protection.” Id. at 13.
Inspiration Spaceship is a Portland creative law firm representing designers, artists, and other creators in copyright and related creative legal matters. Please contact the firm with any questions about this post.