Christmas Comes Early for “Useful Article” Copyright Holder


Order Denying Motion and Cross-Motion for Summary Judgment, Jetmax Ltd. v. Big Lots, Inc. et al., 15-cv-9597 (S.D.N.Y. Aug. 28, 2017) (Judge Katherine Forrest)

Tricky questions can arise when a person or company attempts to copyright the decorative aspects of a “useful article” that has some practical, nonartistic function.  The questions become trickier still when the decorative aspects of the article are three-dimensional “sculptural” elements, as opposed to two-dimensional words or images.  Judge Katherine Forrest’s recent order in Jetmax Ltd. v. Big Lots, Inc. et al., pending in the Southern District of New York, addresses whether a plaintiff can copyright the decorative cover on a set of Christmas lights.  Note that the “cover” is the physical housing that surrounds the light bulb.

Copyright law limits protection for a “useful article” only to features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. In Jetmax, it was undisputed that the Christmas lights at issue are useful articles.  Plaintiff Jetmax argued, however, that the decorative covers of the Christmas lights could be separated from the utilitarian aspects of the lights.

Until recently, it would not at all have been clear whether Jetmax could argue for any copyright protection for the Christmas lights. Fortunately for Jetmax, the Supreme Court just a few months earlier clarified in Star Athletica L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) exactly when and how copyright protection can attach to what are otherwise useful articles.  In Star Athletica, a case involving cheerleading uniforms, the Court held that “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”

The Jetmax Court applied the Star Athletica test and found, as a first step, that the decorative covers of the Christmas lights were three-dimensional and had “sculptural qualities.”  The Court also concluded that decorative covers were capable of existing apart from the utilitarian (i.e. light-producing) aspects of the Christmas lights.  When the decorative covers were removed from the Christmas lights, the result was a functional (albeit somewhat unattractive) “unadorned light string.”  Such a light string would perform the function of lighting up a room, with or without the cover.

The Jetmax order provides a good example of why, in the wake of Star Athletica, copyright holders should not assume that any design attached to an otherwise useful article like a t-shirt, a lamp, or an automobile, is un-copyrightable.  Instead, when a “useful article” is at issue, the copyright holder should think creatively about ways in which decorative aspects of the article can be separated from its useful aspects.