Patterson Intellectual Property Law

Firm Update

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Laying a Low Floor for Copyright Originality

Things found in nature are generally considered in the public domain and not subject to copyright protection. Yet the U.S. Court of Appeals for the Eleventh Circuit recently ruled that a flooring design based on the natural aging of wood was indeed copyrightable.

The court’s opinion in Home Legend, LLC v. Mannington Mills, Inc. illustrates how, depending on originality, a work using uncopyrightable elements can be copyright-eligible itself.

Deeply stained maple

Mannington Mills and Home Legend are competitors in the laminate flooring market. Mannington’s Glazed Maple laminate is intended to duplicate the appearance of a deeply stained maple floor that had been through years of wear and tear. The company obtained a copyright for the design in 2010.

When Mannington discovered Home Legend was selling similar flooring, it accused the company of infringing its copyright. Home Legend preemptively sued Mannington, claiming that the copyright was invalid and the design wasn’t copyright-eligible. The trial court agreed with Home Legend, and Mannington appealed.

Modicum of creativity

The appeals court initially considered the trial court’s finding that the design wasn’t original enough to qualify for a copyright. It noted that copyrightable originality requires only “independent creation” by the author “plus a modicum of creativity.” In other words, the court said, the originality requirement is a low bar.

The trial court found that the design merely depicted elements found in nature — the look of a rustic, aged wooden floor. The appellate court acknowledged that a scan of a raw wood plank probably wouldn’t be sufficiently original to support a copyright of such an individual image.

Mannington’s designers, however, didn’t just scan wooden planks. Rather, they imagined what a distressed maple floor might look like and used stain, paint, hand tools and digital photo retouching to express their concept first on wood and then as digital images. Although the idea of a distressed maple floor is not protectable, the court said, the idea’s expression in the design was the product of creativity and, therefore, copyrightable.

The design was protectable as a compilation expressing original selection and creative coordination of elements, too. A compilation even of uncopyrightable elements is copyright-eligible as long as the compiler independently selects or arranges the elements and displays some minimal level of creativity in doing so. The designers exercised such creativity in their selection of planks that best captured their conception of an aged and rustic maple floor.

Separate design

The appeals court also reviewed the trial court’s conclusion that the design wasn’t copyrightable because it was inseparable from a “useful article” — the floor to which Mannington applied the design. Separability for purposes of copyright eligibility requires that a design be either physically or conceptually severable from the useful article.

The design met both tests in the appeals court’s view. Mannington sold otherwise identical flooring with decor paper other than the design (physical separability), and the design could easily be applied to wallpaper or used as the veneer of a picture frame (conceptual separability).

Not particularly strong

Although the appeals court reversed the trial court’s ruling against Mannington and held that it owned a valid copyright, it wasn’t all good news for the company. The court emphasized that the copyright’s protection isn’t particularly strong because much of the design reflects uncopyrightable plank features like wood grain and shape.

The copyright, therefore, extends only to identical and near-identical copies of the design. Mannington would have no copyright infringement claim against a party that used similar processes to make its own aged-maple designs as long as the final designs were its own expressions and not copies of Mannington’s design.