06 October 2003

What is it about lighting fixtures that makes them such popular subjects for intellectual property litigation? First, we had Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), holding that the copying of an unpatented/unpatentable lamp is not barred by state unfair competition law, except perhaps as to designation of origin and labelling. Today, the Ninth Circuit decided another IP case involving lamp designs. In Lamps Plus, Inc., v. Dolan, 2003 USCA(9) 14785 (Oct. 6, 2003) (PDF 71kb), the court threw out an attempted copyright on a lamp design as invalid. The copyright failed because the lamp was not copyrightable in the first place.

   The copyright application did not disclose that the lamp consisted of four preexisting parts from other manufacturers cobbled together with "utilitarian" hardware. Although the defendants invited the court to rule that this failure alone invalidated the copyright, the court refused. A closer look at the substance of the object, though, disclosed to the court that

Lamps Plus’s mechanical combination of four preexisting ceiling-lamp elements with a preexisting table-lamp base did not result in the expression of an original work of authorship as required by § 101. Lamps Plus did not create any of the “design… features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects” of any of the lamp’s component parts.

Lamps Plus at 14800–01. More interestingly, the court went on to require the case to go back to the trial court to determine whether to award attorney's fees to the defendant. Under the governing cases, faithfulness to the purposes of the copyright act is an important factor. The trial judge found for the defendants on a factual ground (that the defendant's lamp was not sufficiently similar to the "copyrighted" lamp). Since the ground now is that no copyright ever existed in the first place, the trial judge is going to have to revisit the fees issue.

   Moral: Don't apply for a copyright without ensuring that what you have is eligible for copyright in the first place, and make sure that you fill out the forms completely, truthfully, and correctly. Had the forms been filled out properly in the first place, disclosing the compilation, this litigation would either never have occurred (if the copyright was refused) or would have terminated much more quickly and cheaply for everyone.