Last year, the District Court in Home Legend v. Mannington Mills gave three reasons for its holding that the designs on faux-hardwood flooring material, which are intended to look like real maple floors, were not subject to copyright protection. On April 29, 2015, however, a unanimous Eleventh Circuit decision held that these reasons were against the grain, and shipped the matter back to District Court for pulping.
Mannington Mills (“Mannington”) creates two-dimensional photographic designs, such as its copyrighted “Glazed Maple,” that are affixed to laminated flooring material in order to create the appearance of real hardwood. In 2012, Mannington sent a cease and desist letter to its competitor, Home Legend, which allegedly sold “virtually identical” products, including “Distressed Maple Mendocino” (which sounds delicious but I’m not sure I want to walk on it). Home Legend responded by asking the Northern District of Georgia for a declaratory judgment that Mannington’s copyright was invalid. The District Court obliged, based on three (ultimately erroneous) grounds: originality, process and usefulness.
In order to be eligible for copyright protection, a work must manifest some degree of original authorial expression. Mannington’s evidence of authorship of the floor design included the following: Mannington took raw maple wood, accentuated the natural “chatter” of the wood with a lathe and stained it to bring out the grain. It then selected certain planks for scanning, selected certain images from among the scans, and then digitally manipulated the appearance of those select images to create the design. After that, it affixed the design to the flooring material.
Notwithstanding this creative process, the District Court appeared to be fixated on Mannington’s naturalistic intent, finding that Mannington “simply attempted to recreate the look of such wood in another medium – artwork.” According to the District Court, this was merely “a design depicting or copying elements found in nature – the look of a rustic, aged wooden floor.” Therefore, it was not original and not subject to copyright protection.
Ok, time for some hair splitting. First, I’m no outdoorsman, but I’m pretty sure hardwood floors are not actually “found in nature.” Second, the District Court’s logic, taken to its natural conclusion, could be used to invalidate copyright protection as to virtually all nature photography and still life painting, among other things. The Eleventh Circuit shared the same concerns, observing that Mannington did not simply “scan raw wooden planks,” but instead “imagined what a deeply stained maple floor might look like after years of wear,” and then used various media to create and select images that most accurately expressed that idea. “Perhaps that expression is not highly creative,” the Eleventh Circuit opined, “but it does not need to be,” because the originality requirement is supposed to be a relatively low hurdle.
Pursuant to 17 U.S.C. § 102(b), copyright protection does not subsist in any idea or process. The District Court found that “although the Copyright at issue is for 2-D artwork,” Mannington’s opposition to the summary judgment motion focused too much “on the process Mannington used to obtain” that artwork. The District Court appeared to reason that, because the summary judgment brief focused on process, the underlying copyright must really have been about process too, so it was invalid.
Mannington cried foul, and the Eleventh Circuit agreed. Mannington had presented evidence about its process in order to prove that it had independently created a work of original authorship. “That does not mean,” the Court of Appeals held, “that Mannington tried to copyright the process.”
Finally, the District Court held that the Glazed Maple copyright was invalid due to the “useful article” doctrine, which provides that functional physical objects are not copyrightable. Here, the District Court reasoned that the design was functional because its worn appearance functioned to hide actual wear. However, the Eleventh Circuit disagreed, holding that this was at best a “secondary function:”
[E]ven if placing an otherwise copyrightable two-dimensional design on a product serves the secondary function of hiding wear . . . that is not enough to invalidate the copyright protection for the design. Hanging an Ansel Adams print over an unsightly water stain on a living room wall might make the print “functional” in the same way the District Court found the Glazed Maple design to be, but it would have no effect on the copyright in the work itself.
Moreover, a design is not functional if it is physically or conceptually separable from the useful article. Here, not only could designs other than Glazed Maple be affixed to the floor, but the Glazed Maple design, like any two-dimensional art, could be applied to non-floor items, such as furniture or wall paper. In fact, the Court stated, “nothing (save perhaps good taste)” prevents someone from framing “Glazed Maple” and hanging it in a museum. Therefore, the design was “obviously” both physically and conceptually separable from the laminated flooring material.
With the matter now remanded to the District Court, the parties presumably will focus on substantial similarity. The District Court had already tipped its hand at an earlier stage in the case by observing that the two images appeared to be substantially similar. However, the Eleventh Circuit cautioned that although the copyright may be valid, “it is not particularly strong.” The Court of Appeals hinted that the District Court should carefully consider the scènes à faire doctrine and the defense of independent creation.