Federal Appeals Court Rejects Copyright on Retail Lighting Designs

Florida retailers need to be mindful of how intellectual property affects their business. Intellectual property encompasses trademarks—the brand names used to identify retailers and merchandise—as well as patents and copyrights. You might think copyrights are only an issue when dealing with books or audiovisual materials, but U.S. copyright law extends its protections to many types of artistic works.

That does not mean, however, that any seemingly unique design element may be copyrighted. For example, most fashion designs are not protected by copyright. In general, any “utilitarian” item falls outside copyright unless there are extraneous design elements that can exist separate from the item. A recent decision by the U.S. 11th Circuit Court of Appeals—which has jurisdiction over federal courts in Florida—helps illustrate the limits of design copyrights.

Progressive Lighting, Inc. v. Lowe’s Home Centers, Inc.

Karyl Pierce Paxton, a New Orleans-based interior designer, designed a series of light fixtures for sale by Georgia-based Progressive Lighting. At issue in this case is a set of designs known as the “Cumberland Series” that Paxton submitted to Progressive in 2004. The series included several chandeliers.

In early 2006, Progressive learned that a competitor, Lowe’s, was selling chandeliers “strongly resembling” Paxton’s Cumberland designs. Later that year, Paxton applied to the U.S. Copyright Office to register copyrights for all of her Cumberland designs. The Copyright Office initially rejected the registration, but subsequently granted recognition in April 2007. Paxton then assigned her copyrights to Progressive, which in turn sent Lowe’s a cease-and-desist letter in May 2007.

Litigation followed. A federal judge in Georgia rejected Progressive’s copyrights on the Cumberland designs. The 11th Circuit affirmed that decision in an unsigned opinion dated December 16, 2013.

The 11th Circuit initially noted that Copyright Office registration does not, in and of itself, prove the existence of a valid copyright. (Indeed, under U.S. law, any work subject to copyright need not be registered at all with the government.) The registration merely creates a “rebuttable presumption” of a valid copyright. And in this case, the 11th Circuit said Lowe’s rebutted the presumption by showing “that the works whose copyrightability is at issue were useful articles that did not contain separable copyrightable elements.”

Light fixtures are a “useful article” that cannot be copyrighted. However, if Progressive could show that the design elements contributed by Paxton were conceptually or physically separate from the fixture itself, then there could be a valid copyright claim. The 11th Circuit agreed with the district court that Progressive could prove neither.

Progressive argued that “the overall shapes and appearances of the light fixtures reflect artistic, nonfunctional considerations.” The 11th Circuit said that wasn’t enough. There had to be distinct design elements that could be separated from the rest of the chandeliers.

Using Intellectual Property to Your Advantage

Imitation is the essence of retail. Stores compete by offering customers products that are similar, yet distinctive, to those sold by their competitors. Intellectual property can aid this competition in some respects and hinder it in others. That’s why it’s important for any retailer to work with an experienced Florida business attorney who can advise them on the ins-and-outs of copyright and other intellectual property laws. Contact John S. Sarrett in Naples today if you have any questions.


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