IP Law Daily, COPYRIGHT—C.D. Cal.: Furniture pieces that could exist as a sculptural works of art on their own are not merely utilitarian articles, (Dec 13, 2023)

By Matthew Hersh, J.D.

The holding clears the way for a resounding summary judgment ruling in favor of the estate of a famed French designer.

Works of furniture designed by a celebrated French designer were not excluded from copyright protection by the useful article doctrine because they contained a wide range of easily identifiable artistic elements that could have existed as sculptural works on their own if made in some non-utilitarian medium, the federal court for Los Angeles has held. The court, in granting summary judgment in favor of the designer’s estate on its copyright claims against a furniture retailer accused of selling knockoffs, also found that there was no dispute of material fact that the designs were protectible as a foreign work, that the designs were original enough to qualify for copyright protection, and that the retailer’s own designs were substantially similar to the originals (Jean Royère SAS v. Edition Modern, December 7, 2023, Vera, H.).

The lawsuit was brought by the estate of Jean Royère, an iconic French furniture designer who has been described as one of the most significant designers of the 20th Century, a “savant of design,” a “cultural phenomenon,” and a visionary who is celebrated for his use of color, shape, and materials. The target of the lawsuit is Edition Modern, a company that has created a successful business selling furniture “in the style of” Mr. Royère. In the words of the court: “Mr. Royère’s estate brings this suit for copyright, trademark, and trade dress violations, and presents this Court with the age-old question: is it inspiration or imitation?”

Both parties moved for partial summary judgment on the claims, leading to this opinion.

Protectability as a foreign work. The court found that the estate could proceed with the copyright infringement lawsuit even though the works in question had not been registered in the United States. Under the Copyright Act, foreign works—that is, works that do not qualify as “United States Works” under the Act—do not need to meet the pre-lawsuit registration requirement. The estate easily met this standard, the court held. The designer was of course a French national, the court noted, and an “extensive evidentiary record” of invoices showed that the works were first published outside the United States. Thus, as foreign works, the works could be the basis of a lawsuit even without registration.

Originality. The court also easily found that the works were original. To be sure, the court noted, the designer “pulled inspiration” from other designs, but there was no evidence he had actually copied any other designs. And even conceding that the designs were merely trivial or slight variations of other furniture designs, the court noted, “even that amount of creative spark meets the low level of creativity required to consider the designs original.” In any event, the court noted, the defendant furniture retailer’s own price lists described the artist as having “pioneered an original style combining bright colors, organic forms and precious materials”—a perspective also apparently shared by French curators. “It is hard to imagine that the Musée des Arts Décoratifs (Museum of Decorative Arts) in Paris would have a permanent exhibition,” the court noted, “dedicated to works that do not have the minimal degree of creativity to be considered original.”

Useful article. The court also found that the “useful article” doctrine did not preclude copyright protection for the works. Under the Copyright Act, the design of a useful article—like furniture—is eligible for copyright protection only if “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” The first test was easily met, the court found: “The soft, bulbous shapes of the Ours Polaire sofa, Ours Polaire armchair, and Sculpture armchair; the vinelike elements of the Liane wall light; the heart and flower shapes of the Coeur floor lamp; the egg-like shape of the Oeuf chair; the rings of the Yo-Yo stool; and the upward cup shapes of the Éléphanteau chair, are all readily separately identifiable.” Moreover, they were clearly capable of existing independently of the utilitarian aspects of the chair, the court noted. “If the sculptural features of each work were used in another non-utilitarian medium—if, for example, the Ours Polaire sofa were made of fine glass such that one could not sit on it—they could nonetheless exist as sculptural works of art,” the court noted. “That many of the works have, in fact, been displayed at art museums confirms this.”

Substantial similarity. The court also found that the works were substantially similar to one another, both under the extrinsic factors and also—in a decidedly rare holding on summary judgment—under the intrinsic factors as well. As to the extrinsic test, the court noted, a comparison of the two sets of works “reveals objectively clear similarities in the shapes, colors, materials, and arrangements of elements.” For example, the court noted, the original Ours Polaire sofa and the retailer’s version were “indistinguishable, especially when comparing their exaggerated bulbous shapes.” And as to the intrinsic test, the court noted, the retailer’s works were conceptually similar to the originals from the standpoint of the ordinary reasonable observer. “This is presumably by design,” the court noted, “as the retailer markets its versions “as being ‘in the style of’ Jean Royère designs.”

Permanent injunction. But while the estate would prevail on the merits at this stage, the court found, the record was insufficient at this point impose a permanent injunction. Most importantly, the court noted, there was no meaningful evidence of irreparable harm, such as harm to reputation or goodwill, that would support such an injunction. However, the court made clear that it would “entertain a standalone motion for preliminary injunction that addresses in detail all of the factual and legal bases for the relief requested.”

Trademark claims. The court also sided with the estate with respect to the trademark claims. Here it was the retailer bringing a summary judgment motion to dismiss the claims. But the motion would not succeed. As to the trademark infringement claim, the retailer argued that it had priority because it used the French designer’s mark in commerce before the estate had the mark registered. But all the retailer came forward with to prove priority was a collection of invoices, price lists, and its website. “Such evidence does not speak specifically to the scope of such use,” the court noted, “and consequently fails to establish [the retailer’s] use of the trademark in a sufficiently public manner.” As to the trade dress claim, the retailer argued that the estate could not establish secondary meaning for the works—but here, too, the evidence was not definitive. The works had been featured in widespread media, books, web articles, and museum exhibits, all associated with Jean Royère, the court noted. That presented “sufficient evidence that a jury could find in its favor on its trade dress claim,” the court reasoned. The trademark claim would therefore move forward to trial.

The case is No. 2:22-cv-01507-HDV-JPR.

Attorneys: Kevin B. Kelly (LTL Attorneys LLP) for Jean Royere SAS. Edward D. Lanquist, Jr (Baker Donelson Bearman, Caldwell and Berkowitz PC) for Edition Modern.

Companies: Jean Royere SAS

Cases: Copyright CaliforniaNews GCNNews