Copyrightability of Useful Objects, Merger Doctrine, Separability, Light Fixtures and Lamps, Motion to Dismiss Copyright Infringement Action
Creations USA Inc. v. Hilton Worldwide, Inc., 2012 WL 2687957 (2d Cir. July 9, 2012)(unpublished
summary order). Here the Second Circuit
affirmed the dismissal of an amended complaint pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure for failure to state a claim. Plaintiff was a manufacturer of lamp
fixtures. The Copyright Office denied
Plaintiff registration for the lamp fixtures.
Useful items are not generally copyrightable. An exception is only to the extent that a
design “incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing independently of, the
utilitarian aspects of the article”. The
court noted that no aspect of the lamp could be physically separated, citing
the famous Mazer v. Stein, 347 U.S. 201 (1954)(copyrighted statue of a dancer
as a lamp base remained protectable).
The court then reviewed “conceptual severability” (also known as the
“merger doctrine”) – “if design elements reflect a merger of aesthetic and
functional considerations, the artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian elements.” Conversely “where design elements can be
identified as reflecting the designer’s artistic judgment exercised
independently of functional influences, conceptual separability exists.” Pleading tip: the court chided plaintiff for pleading in a
conclusory manner that elements were conceptually and physically separable, but
failing to identify any such elements, even on appeal. In drafting a complaint, a plaintiff should
specify elements that are either physically or conceptually separable.
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