Design Ideas Ltd v. Meijer, Inc. et al

Filing 138

OPINION entered by Judge Sue E. Myerscough on 6/20/2017. The Defendants' Joint Motion to Reconsider Summary Judgment Order, d/e 134 is GRANTED IN PART and DENIED IN PART. (SEE WRITTEN OPINION) (MAS, ilcd)

E-FILED

Tuesday, 20 June, 2017 04:05:56 PM
Clerk, U.S. District Court, ILCD

IN THE UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF ILLINOIS
SPRINGFIELD DIVISION
DESIGN IDEAS, LTD., an Illinois
Corporation,
Plaintiff,
v.
MEIJER, INC., a Michigan
corporation; WHITMOR, INC.,
a Delaware corporation; and
THE TJX COMPANIES, INC.,
a Delaware corporation,
Defendants.

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No. 15-cv-03093

OPINION
SUE E. MYERSCOUGH, U.S. District Judge.
Defendants have filed a Joint Motion to Reconsider Summary
Judgment Order (d/e 134). The Motion is GRANTED IN PART and
DENIED IN PART. In light of the recent United States Supreme
Court case, Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.
Ct. 1002) (2017), the Court will reconsider the portion of its
Opinion (d/e 115) granting partial summary judgment in favor of
Plaintiff on Count I on the ground that Plaintiff has a valid

copyright. Upon reconsideration, the Court finds that partial
summary judgment in favor of Plaintiff was properly granted.
I. BACKGROUND
In this lawsuit, Plaintiff alleges, in part, that Defendants have
infringed on Plaintiff’s copyrighted product, Sparrow Clips. A
Sparrow Clip is a clothespin with a silhouetted bird design on top.
Plaintiff claims copyright only in the separate bird silhouette and
the color selection shown in each set of Sparrow Clips.
Copyright protection subsists in original works of authorship
fixed in any tangible medium, including pictorial, graphic, and
sculptural works. 17 U.S.C. § 102(a)(5); 17 U.S.C. § 101 (defining
pictorial, graphic, and sculptural works to include two- and threedimensional works of fine, graphic, and applied art). Useful
articles, defined as articles that have “an intrinsic utilitarian
function that is not merely to portray the appearance of the article
or to convey information,” are not entitled to copyright protection.
See 17 U.S.C. § 101 (defining useful article). However, if a work is
a useful article, it can still fall within the definition of “pictorial,
graphic, and sculptural work” and be protected by copyright “if,
and only to the extent that, such design incorporates pictorial,
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graphic, or sculptural features that can be identified separately
from, and are capable of existing independently of, the utilitarian
aspects of the article.” 17 U.S.C. § 101. Copyrightability is a
question of law for the court. Schrock v. Learning Curve Int’l, Inc.,
586 F.3d 513, 517 (7th Cir. 2009).
In May 2016, Plaintiff sought partial summary judgment on
Count I, its copyright infringement claim, asserting that Plaintiff
owned a valid copyright and Defendants infringed that copyright
by producing and selling exact copies of Plaintiff’s protected
expression. Defendants sought partial summary judgment on
Counts I and IV, asserting that Plaintiff could not prove the
existence of a valid copyright because Sparrow Clips are not
sufficiently creative to be copyrightable and are useful articles that
are not subject to copyright protection.
In August 2016, this Court granted partial summary
judgment in favor of Plaintiff on Count I. See Opinion (d/e 115).
The Court found that the bird design was original. Id. at 31. In
addition, the Court, applying the law in effect at that time,
considered whether the design element—the bird portion of the
Sparrow Clip—was physically or conceptually separable from the
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utilitarian aspects of the work. Id. at 34. The Court found no
genuine dispute that the Sparrow Clips, as a whole, are useful
articles. The Court further found, however, that the bird design
was both physically and conceptually separable from the
utilitarian aspect of the work. Id. at 37-40.
In March 2017, the United States Supreme Court decided
Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002
(2017). The Star Athletica Court examined whether twodimensional designs appearing on the surface of cheerleading
uniforms were entitled to copyright protection. See id. at 1007.
Recognizing the “widespread disagreement over the proper
test for implementing § 101’s separate-identification and
independent-existence requirements,” the Supreme Court
articulated a two-part test for determining when a feature
incorporated into the design of a useful article is eligible for
copyright protection. Id. at 1007. In doing so, the Court
abandoned the distinction between physical and conceptual
separability that some courts (including this Court) had adopted.
Id. at 1014. Specifically, the Supreme Court held that an artistic
feature of a useful article’s design is eligible for copyright
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protection only if the artistic feature (1) can be perceived as a twoor three-dimensional work of art separate from the useful article
(referred to as the separate identification requirement) and (2)
would qualify as a protectable pictorial, graphic, or sculptural
work—either on its own or fixed in some other tangible medium of
expression—if it were imagined separately from the useful article
into which it is incorporated (referred to as the independentexistence requirement). Id. at 1010.
Applying that test to the surface decorations on the
cheerleading uniforms, the Supreme Court found the test satisfied.
First, the Supreme Court found that the surface decorations had
pictorial, graphic, or sculptural qualities. Star Athletica, 137 S. Ct.
at 1012. Second, the Court found that if the “arrangement of
colors, shapes, stripes, and chevrons on the surface of the
cheerleading uniforms were separated from the uniform and
applied to another medium . . . they would qualify as twodimensional . . . works of . . . art.” Id. (internal quotation marks
omitted). Moreover, removing the surface decorations and applying
them to a different medium did not replicate the uniform itself. Id.

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Consequently, the Supreme Court found the decorations separable
from the uniforms and eligible for copyright protection. Id.1
The Star Athletica Court rejected the petitioner’s argument
that the design feature must stand alone as a copyrightable work
and that the useful article from which it was extracted must
remain equally useful. Id. at 1013. The Court also rejected the
petitioner’s argument that the Court should incorporate two
objective components into the test, namely why or how the article
and design feature were designed and whether the design feature
is marketable. Id. at 1015.
II. ANALYSIS
Applying the Star Athletica test here, the Court again finds
that the bird portion of the Sparrow Clips is subject to copyright
protection. First, the bird portion can be perceived as a threedimensional work of art separate from the useful article. One can
identify the bird portion as having pictorial, graphic, or sculptural
qualities.

The Star Athletica Court did not hold that the surface decorations were
copyrightable and expressed no opinion whether the surface decorations were
sufficiently original to qualify for copyright protection. Star Athletica, 137 S.
Ct. at 1012 n. 1. Moreover, the Court did not express an opinion on whether
any other prerequisite of a valid copyright had been satisfied. Id.
1

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Second, the bird portion would qualify as a protectable
sculptural work on its own if it were imagined separately from the
useful article into which it is incorporated. The bird portion would
be eligible for copyright protection as a pictorial, graphic, or
sculptural work had it been originally fixed in some tangible
medium other than attached to the clothespin. See Star Athletica,
137 S. Ct. at 1011 (“The ultimate separability question, then, is
whether the feature for which copyright protection is claimed
would have been eligible for copyright protection as a pictorial,
graphic, or sculptural work had it originally been fixed in some
tangible medium other than a useful article before being applied to
a useful article.”).
Defendant argues, as it did on the original motion for
summary judgment, that the bird portion itself has useful
applications because the bird portion can hang from a rod or hang
on a string by its beak. Def. Mot. at 8. Therefore, according to
Defendants, the bird portion of the Sparrow Clip is not entitled to
copyright protection because it is itself a useful article.
The Star Athletica Court noted that the design feature must
qualify as a nonuseful pictorial, graphic, or sculptural work. Star
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Athletica, 137 S. Ct. at 1013. However, once the bird portion is
removed from the clothespin, what is the usefulness of hanging the
bird from a rod or hanging the bird on a string by its beak? See 17
U.S.C. § 101 (defining “useful articles” as articles that have “an
intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information”). Moreover, “a
sculpture does not become a useful article simply because it could
be used as a doorstop or a paperweight.” Compendium of U.S.
Copyright Office Practices, Third Edition § 924.1.
Additionally, as the Star Athletica Court noted when
discussing Mazer v. Stein, 347 U.S. 201, 214-18 (1954), the
respondent in Mazer owned a copyright in the statuette even
though the statuette was intended to be used as a lamp base and
even if the statuette had been initially created as a lamp base.
Star Athletica, 137 S. Ct. at 1011. Similarly here, Plaintiff owns a
copyright in the bird portion of the Sparrow Clips even if the bird
portion was intended to be used to hang on a rod (or any of the
other “useful” functions identified by Defendants) and even if it
was initially created for that purpose. The bird portion of the
Sparrow Clips, when identified and imagined apart from the useful
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article—the clothespin—qualifies as a sculptural work on its own.
Therefore, even under the test articulated by Star Athletica,
Plaintiff is entitled to partial summary judgment on Count I.
III. CONCLUSION
For the reasons stated, Defendants’ Joint Motion to
Reconsider Summary Judgment Order (d/e 134) is GRANTED IN
PART and DENIED IN PART. The Court reconsiders its Opinion
(d/e 115) granting partial summary judgment in favor of Plaintiff
on Count I but concludes that partial summary judgment was
properly granted in favor of Plaintiff.
ENTER: June 20, 2017
FOR THE COURT:
s/Sue E. Myerscough
SUE E. MYERSCOUGH
UNITED STATES DISTRICT JUDGE

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