According to the U.S. Copyright Office, “Copyright does not protect the mechanical or utilitarian aspects of works of craftsmanship.” Copyright therefore only applies to the artistic, rather than functional, aspects of a product’s design. The U.S. Ninth Circuit Court of Appeals recently addressed this principle in a decision reinstating a copyright infringement lawsuit involving perhaps the most utilitarian of objects: a USB flash drive.

Direct Technologies LLC, v. Electronic Arts, Inc.

Electronic Arts (EA) is the software developer behind the popular The Sims life simulation games. As part of EA’s campaign to promote the release of The Sims 3 in 2009, the company offered a special “Collector’s Edition,” which was a copy of the game on a USB flash drive. The drive itself was shaped like a “PlumBob,” a green diamond icon used in the game to identify the active character.

EA hired an outside contractor to produce the “PlumBob” USB drives. The contractor, in turn, subcontracted the plaintiff to produce a design prototype for the drive. The contractor ended up using the plaintiff’s design but hired a different subcontractor to complete the actual production. This led to litigation between the plaintiff and the contractor, and then between the plaintiff and EA.

The plaintiff, a California-based company, sued EA in Los Angeles federal court for copyright infringement and violation of state trade secrets law. The trial court granted summary judgment to EA on both claims. The Ninth Circuit reversed the grant of summary judgment as to copyright infringement only.

A “Low” Standard for Originality

There was no question that EA holds a valid copyright in the original 2-dimensional “PlumBob” icon. The question here was whether the plaintiff presented a plausible claim that its 3-dimensional rendering for the USB drive constituted a “derivative” work entitled to separate copyright protection. At this stage of the litigation–a motion for summary judgment–the plaintiff does not need to prove its case, only that there is a “genuine issue of material fact” to submit to a jury.

As the Ninth Circuit explained in its opinion, a derivative work must be “sufficiently original to warrant copyright protection.” A “trivial” difference between an original and derivative work is not enough. For example, the court rejected the plaintiff’s attempt to distinguish its “PlumBob” design, which had 12 sides, from the original EA version, which had 20 sides. The number of sides, standing on its own, is not a “copyrightable contribution.”

But “the manner in which [the plaintiff] designed the USB drive to fit into the PlumBob object” may constitute an “artistic and non-functional” contribution. This would be a “low” threshold for originality, the Ninth Circuit conceded, but it was still plausible that a jury could find in the plaintiff’s favor. However, the plaintiff must also prove that it, rather than EA, had “ultimate control” over the 3-dimensional design. EA maintains that it retained “final decision-making authority,” which if true would defeat the plaintiff’s claim that it was a “joint author” with a copyright interest in the final design. Ultimately, the Ninth Circuit said it will be up to a jury to decide who is right.

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