Tuesday, March 10, 2015

Invoking IP: When is Blatant Copying for Commercial Use Okay?

For today’s Invoking IP segment, we are going to talk about two carpet companies that had a fight over what can be copied in a sample book.  Why is this important?  Because today we’ll finally start taking some steps into considering the differences in function and design in a copyright.  The case in question is Fabrica Inc. v. El Dorado Corp.[1]  In Fabrica, Fabrica expanded from residential carpet market and made boo-koos of money by transitioning to the commercial carpet market.  Like any rational competitor, what was El Dorado Corp. to do but follow suit?  This case brings up questions about the where the lines are for copyrighting a function.  It also raises some trademark fair use questions.[2]  Since the opinion severs the two so nicely, I’ll cover copyright today and trademark in tomorrow’s post.

Aside, just for shits and giggles, here are some fun NPC or PC names derived from the attorneys representing the parties: Golant; Disner Ashen; Peregrinsen

When Fabrica made the jump into commercial carpet, it commissioned new display folders.  These are books containing carpet samples and descriptions of their technical specifications.  While it’s true that “[m]ost mills develop a distinctive layout and design for their folders,” Fabrica went above and beyond.[3]  Fabrica’s display folders were “high quality…with simulated white suede, with saddle stitching along the borders and brass tips at the corners…[and] a unique fold-out book format featuring a full-page carpet sample on the inside left panel and small carpet samples on the inside right panel.”[4]

Not the display books of the time, but still something to get you in the mood.

Even El Dorado agreed that Fabrica struck gold with their new design.  So, “El Dorado’s vice-president took a Fabrica display folder to a folder manufacturer and instructed him to copy it.”[5]  Full stop, cowboy.  That’s blatant copying.  Surely this is going to end up being considered copyright infringement, right?  In fact, “[v]irtually every feature of the Fabrica folder was incorporated into the design of the El Dorado folder; the only difference was in the color of the simulated suede and stitching.  El Dorado even copied the placement on the folders of the brand name, company name and address, and showroom locations.”[6]

So, if El Dorado knew it was copying, why wasn’t it worried about getting in trouble?  Well, the question is whether a display folder is a “useful article” or a “pictorial, graphic, [or] sculptural work.”  If it’s a useful article, it’s not entitled to copyright protection.  If it’s a pictorial work, it is.  What if, as you’ve likely surmised, it could incorporate features of either?  Read on!



Photos of the original and copied display books preserved in state of the art technology from 1983.  (697 F.2d 896-97)

“A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a ‘useful article’.”[7]  And useful articles aren’t subject to copyright protection.  On the other hand, a “pictorial, graphic, [or] sculptural work” is accorded copyright protection.[8]  These include things like “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models.”[9]  We’ve had a lot of debate over this in the courts, and we’ve come down to the position that copyright laws protect form, but they do not protect function.[10]  With things like charts, technical drawings, diagrams, and models, there’s a huge overlap in form (which is protected) and function (which isn’t).  Formerly, courts had to decide if something’s function was solely its utility or if it had expressive value.  (Mazer v. Stein)[11].

Today, “if any article has any intrinsic utilitarian function, it can be denied copyright protection to the extent that its artistic features can be identified separately and are capable of existing independently as a work of art.”[12]  “Unless the shape of an [object] contains some element that, physically or conceptually, can be indentified as separable from the utilitarian aspects of that article, the design would not be copyrighted.”[13]

In this case, the court found that because “[t]here is no aspect of the folders that can be separated out and exist independently of their utilitarian aspects,” they could not be copyrighted.[14] 

Jumping ahead to application to RPGs, that standard makes a lot of sense.  Take something like an RPG rulebook.  It is pretty clear that things like paintings and maps could be taken out of the rulebook and still have an artistic and expressive element to them.  Therefore, these items enjoy copyright protection even if other portions of the work do not.

Here, the map and the artwork are obviously expressive and are subject of their own independent copyright.  The text is likely expressive as well, it describes a fanciful place (sorry Paizo fanpeople), which enjoys the highest level of protection.  The layout is a different matter.  Colored borders with the name of the book and/or chapters at the top or sides or stylized page numbers on the left and right sides of the page start to look a lot more functional.  Copyright Paizo Publications.  Used with permission.

It’s a little less clear for things like tables, rules, charts, etc.  Does Pathfinder’s table showing how attack damages change by size enjoy copyright protection?  Is it expressive?  Probably not.  Is it an idea?  Possibly, but ideas themselves aren’t subject to copyright.  It might be minimally creative as an expression of a system/fact under the Feist Publications standard.[15]  It’s certainly not a minimally creative arrangement though.  Size values and variables based on those size variables are presented.  Probably no copyright protection here.

This table likely doesn't enjoy copyright protection.  That's why d20pfsrd.com was able to copy it verbatim.

Tomorrow we’ll look at a related question.  Fabrica didn’t have a copyright in their folder design.  But, they might have held trademark protection in the form of trade dress.  Did El Dorado’s appropriation of Fabrica’s design constitute trademark infringement even if it didn’t constitute copyright infringement?






[1] 697 F.2d 890 (9th Cir. 1983).
[2] Which, if we are being honest, I’m just working my way through myself these days.
[3] 697 F.2d at 892.
[4] Id.
[5] Id.
[6] Id.
[7] 17 U.S.C. § 101 (2012).
[8] 17 U.S.C. § 102 (2012).
[9] 17 U.S.C. § 101 (2012) (terms relevant to RPGs bolded).
[10] 697 F.2d at 892-93.
[11] 347 U.S. 201 (1954)
[12] Id. at 893.
[13] Id.
[14] Id.
[15] 499 U.S. 340 (1991).