Jetmax Ltd. v. Big Lots, Inc., No. 15 CV 9597 (KBF), 2017 WL 3726756 (S.D.N.Y. Aug. 28, 2017) hosted by justia.com.
In August of this year, Judge Forrest of the Southern District of New York ruled on two opposing motions for summary judgement filed in Jetmax Ltd. v. Big Lots, Inc. Jetmax is a Hong Kong-based international designer and seller of a wide range of home accessories. In 2005, the company began selling a product it had designed called the Tear Drop Light Set, a string of small lightbulbs encircled by plastic iridescent covers and held together with wireframe linings that molded each cover into the shape of a teardrop. Soon after, Jetmax registered a copyright for the product with the U.S. Copyright Office. In 2015, New York-based wholesaler Advance International, Inc. began distributing, through the Big Lots retail chain, a product called The Advance Light Set, which also featured a string of lights with teardrop-shaped, wire-lined covers. Jetmax sued Big Lots and Advance International, Inc. in federal district court for copyright infringement in December, 2015 and filed a motion for summary judgement on the claim; the defendants responded by filing their own cross-motion for summary judgement to dismiss the case because the light set was not copyrightable.
The outcome of Big Lot’s motion to dismiss hinges on whether Jetmax’s light cover falls under the protection of §101 of the Copyright Act, 17 U.S.C. § 101 (2010). The Supreme Court recently altered the extent to which this Act covers the artistic design elements of an item that is not primarily meant to be a work of art, but rather possesses overall utilitarian qualities. In Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017), the Supreme Court introduced a two-part test to help categorize artistic design elements of useful items: first, the design part in question must be a piece of art that can stand independently from the clear use of the item; and, second, the part must qualify as a multi-dimensional artistic work separate from the article as a whole.
Both Big Lots’ and Jetmax’s motions for summary judgement were denied by Judge Forrest.
IP Watchdog notes that Forrest denied summary judgement to Big Lots because it is reasonable to perceive Jetmax’s light cover as an independent artistic entity distinct from the light inside it. The Judge made a clear distinction between the utilitarian use of the light set as a whole—to illuminate a surrounding space—and the demonstrated value of the light covers within the context of the string of lights (dampening glare between the lights in the string). Given that the usefulness of the cover is not supplemental to the primary utility of the entire product (providing lighting) and its only value is contained within the product itself, the light cover satisfies the second part of the Star Athletica test.
In further analysis, IP Watchdog states that the Star Athletica test will be steeped in ambiguity until further cases demonstrate its specific applications. Until then, determining exactly what should be peripherally included in an object’s core usefulness will remain difficult, and judges are likely to default to the Supreme Court’s previous benchmark: determining whether a design element can be copyrighted based on its role in the primary purpose of the entire article.
The immediate impact of Star Athletica is undeniable here: JDSupra notes that Jetmax demonstrates that the manufacturers of goods that include artistic elements in addition to a clear utility (like a t-shirt or car) have newfound avenues to file copyrights protecting their product designs.
The Jetmax case itself is still headed to court, though, on issues unrelated to its performance under the Star Athletica test: as Bill Donahue of Law360 points out, the trial will likely focus on other matters, like whether the light cover is original enough to be protected and whether the copyright is definitively owned by Jetmax.
Litigation in the case is set to commence in the U.S. District of the Southern District of New York on November 27th, 2017.
JP Mohler is a 1L student at Harvard Law School.