Picture yourself at dusk along the river, walking through a massive outdoor art installation featuring tens of thousands of individually-placed spheres of light on short stalks, reminiscent of blooming flowers. Ok, now stop and answer this: what kind of intellectual property would you use to protect this installation? If you answered “trade dress,” you get a frowny-face sticker, at least according to the Eighth Circuit’s recent opinion in Munro v. Lucy Activewear.
Bruce Munro is a UK-based artist who, since 2004, has been creating installations such as the “Forest of Light,” which delighted hundreds of thousands of Philadelphia-area residents at Longwood Gardens in 2012. Following the success of that exhibit, Munro received calls from other entities interested in his work, including the city of Boston and the VF Corporation, owner of Lucy Activewear. Munro mentioned to VF that he was also in talks with Boston. Soon after making this disclosure, however, Munro stopped receiving calls from VF and from Boston.
In October 2013, VF launched a Lucy Activewear-branded light installation along the Charles River Esplanade in Boston. VF named the installation “Light Forest.” Like Munro’s work, it featured tens of thousands of individually-placed lights on short stalks, arranged in an outdoor green space in a manner reminiscent of glowing flowers.
Munro filed a complaint in state court in Texas (where he conducts business activities), alleging violations of the Lanham Act and several state law counts (such as fraud, tortious interference and common law unfair competition). VF removed the case to federal court, after which it was transferred to the District of Minnesota, which is where the “Light Forest” installation was created by VF’s advertising agency.
Trade Dress Claim Precluded
Munro’s intellectual property case was premised in large part on the alleged copying of his trade dress. He argued that this trade dress consisted of large-scale outdoor exhibits with thousands of light “stalks” arrayed and arranged in green spaces, positioned off-kilter or splayed, and topped with variably lit bulbs.
The Eighth Circuit, affirming the dismissal of this claim by the District Court, held that this was not the proper subject for trade dress protection. The Court relied on the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp (which we have discussed in more detail here and here). According to Dastar, the Lanham Act was not designed to protect originality or creativity (which is the exclusive domain of copyright), nor does it create a cause of action for plagiarism. So, for example, you can bring a Lanham Act claim over confusion as to the source of the object consumers are purchasing, but you can’t bring a Lanham Act Claim over mere confusion as to who first came up with the idea embodied in the object.
Here, the Eighth Circuit held that the gravamen of Munro’s “trade dress” claim was not that consumers were confused as to the source of any object, but that VF “basically plagiarized his creative designs.” These creative designs were not a “trade dress” serving to identify the source of a product; the designs were the product itself. Thus, the Court held, if Munro had any intellectual property claim at all, it would have to sound in copyright.
So why didn’t Munro bring a copyright claim? Neither the opinions of the courts nor the parties’ briefs address that issue, but we can speculate. Munro doesn’t appear to manufacture the light “stalks” or the bulbs himself, so presumably he couldn’t seek protection for any individual component of his design (and since light fixtures are often considered useful articles, perhaps even their manufacturer could not get such protection). Nor does copyright protect ideas. In theory, then, the only copyright protection available would consist of Munro’s selection and arrangement of the non-copyrightable stalks and bulbs. Even if such protection were granted, perhaps in the category of 3-D sculptural work, the copyright would be difficult to enforce against any copy-cat installation that did not substantially replicate the precise selection and arrangement that was protected.
Trademark Claim Reinstated
It was not all bad news for Munro. He had also asserted trademark claims based on the similarity between the name of his installation, “Forest of Light,” and the name of VF’s Boston installation, “Light Forest.” Munro argued that VF’s use of a similar name was likely to cause confusion as to Munro’s creation of or affiliation with the exhibit.
At the motion to dismiss stage, the District Court held that this was a “closer question,” but dismissed the claim anyway because Munro had “not provided facts suggesting that the name Forest of Light served a source-identifying function.” Instead, the District Court held, the name merely served to identify Munro as the artist, i.e., the source of an idea but not the source of a product or service.
The Eighth Circuit disagreed and reversed the dismissal of this part of the case. In some situations, the Court held, the producer of a creative idea and the person selling the product made with that idea are the same, and in those situations a Lanham Act claim may be appropriate to protect the association between the artist/producer and the work/product. Here, Munro properly alleged that he created and marketed large-scale light installations under the name “Forest of Light.” This was a sufficient allegation that the name “Forest of Light” serves a source-identifying function.
The Eighth Circuit also affirmed dismissal of Munro’s state law claims on the grounds that they were preempted by copyright law and/or failed to state a claim.