Deborah Elkins//August 20, 2010
Deborah Elkins//August 20, 2010//
A knock-off furniture company that copied plaintiff’s furniture designs, and even removed labels from plaintiff’s furniture and displayed it as its own at the High Point, N.C., furniture market, violated plaintiff’s copyrights and the North Carolina Unfair & Deceptive Trade Practices Act, and the 4th Circuit upholds an $11 million damage award.
The district court concluded that defendant Collezione Europa USA had violated the Lanham Act and the UDTPA by “reverse passing off” plaintiff Universal Furniture’s furniture as its own. The district court awarded Universal a permanent injunction prohibiting Collezione from producing or displaying derivative works of Universal’s GIC and EMC lines. The injunction barred Collezione from marketing or selling any furniture in its 20000 collection (except for noninfringing chairs and rectangular tables) or its 20200 collection. The district court awarded $11 million for Copyright Act violations, but declined to award damages on either the Lanham Act or UDTPA claims, reasoning that any such damages would be duplicative of those awarded under the Copyright Act.
Among its claims, Collezione argues that Universal’s designs on the GIC and EMC lines are not sufficiently original for copyright protection, and that the GIC and EMC designs are not conceptually separable from the furniture’s utilitarian aspects, and thus not entitled to copyright protection.
Establishing originality implicates only a light burden. The evidence here demonstrates the GIC and EMC designs are original. The designer’s process satisfied the low burden for originality in that it demonstrated “some creative spark” and did not involve wholesale copying. He created an original “separate entity” by blending elements from different historical periods. His consultation of public domain sources does not render the EMC and GIC designs non-original for copyright purposes.
Although the ornamental elements placed on the GIC and EMC furniture were culled from a variety of public domain sources, the designer did more than simply copy those sources.
The second claim raises a more vexing question in this case: whether Universal’s GIC and EMC designs are conceptually separable from the utilitarian aspects of such furniture. Our circuit has not elaborated extensively upon conceptual separability. Here, Universal does not seek protection for the purely “industrial” designs of its furniture, and the district court correctly recognized as much. We are compelled to reach the same conclusion as the district court: the decorative elements on Universal’s GIC and EMC are conceptually separable from the furniture’s utilitarian aspects. The designs can be identified separately from the utilitarian aspects of the furniture. We agree with the district court that the compilation of design elements on the EMC and GIC lines are entitled to copyright protection.
As to damages, the district court applied the correct legal standard when it required Universal to establish Collezione’s gross profits from the infringement and then shifted the burden to Collezione to prove its deductible expenses. We discern no clear error in the court’s conclusion that Collezione failed to meet this burden.
Judgment on damages and liability affirmed.
Universal Furniture Int’l Inc. v. Collezione Europa USA Inc. (Per Curiam) No. 07-2180, Aug. 20, 2010; USDC at Durham, N.C. (Osteen) Nicholas Mesiti for appellant; William M. Bryner for appellee. VLW 010-2-158, 33 pp.