IP Law Daily, COPYRIGHT—S.D.N.Y.: Design elements did not exist apart from utilitarian aspects of scaffolding, (Jun 25, 2026)

By Robert Margolis, J.D.

Alleged copyright-protected design elements—arch shapes, integrated lighting, and transparent roofing—were inseparable from utilitarian aspects of the scaffolding; trademark claim also failed.

The federal district court in New York City has dismissed a designer’s copyright and Lanham Act claims alleging that defendant Urban Intelligence, Inc. (UI), infringed his registered copyright in a scaffolding design and violated Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) by building scaffolding incorporating elements of the designer’s copyrighted design and falsely associating itself with the design and trade name, “Urban Umbrella,” without his approval. The court held that the copyright claim failed because the elements of his design that UI allegedly incorporated—arch shapes, integrated lighting, and transparent roofing—are features that are not capable of existing independently of the utilitarian aspects of the scaffolding, which is a useful article (17 U.S.C. §§ 101, 102(a)). The Lanham Act false designation of origin and state law unfair competition claims failed because the designer did not allege he used his design or trade name in commerce as required to state a claim. Finally, the court dismissed for lack of jurisdiction his claim for cancellation of UI’s registration of the trademark URBAN UMBRELLA, because there is no independent cause of action for cancellation (Choi v. Urban Intelligence Inc., No. 1:25-cv-09496-VM (S.D.N.Y. Jun. 23, 2026)).

In 2009, Young-Hwan Choi entered a competition sponsored by the New York City Department of Buildings and the American Institute of Architects New York Chapter seeking proposals for innovative scaffolding designs. His design, showcasing what he named the “Urban Umbrella Design,” featured white scaffolding with transparent roofing and arch-like bracing to support higher clearance to enable enhanced storefront visibility. He was announced as the winner of the competition and used the prize money to develop a prototype of the design, which was later constructed in downtown Manhattan in 2011. After attempts to secure additional funding were not fruitful, he asked the architecture and engineering firm that evaluated his design for safety compliance as part of the competition to keep him posted if anyone ever expressed any interest in commercializing the design.

He alleges that UI, a business that manufactures and installs scaffolding in New York City, has built scaffolding based on his “Urban Umbrella” design around the city, and has taken credit despite that fact that their work is based on his design, including obtaining a trademark registration for URBAN UMBRELLA. On July 21, 2025, Choi obtained a copyright registration for his design drawing, including scaffolding arch shapes and integrated lighting.

Choi brought claims for (1) copyright infringement in violation of 17 U.S.C. §§ 101 et seq.; (2) false designation of origin in violation of 15 U.S.C. § 1125(a); (3) unfair competition under New York State and common law: and (4) cancellation off UI’s registration for URBAN UMBRELLA under 15 U.S.C. §§ 1064 and 1119. UI moved to dismiss all claims.

Copyright claim. The court first noted that Choi’s registered copyright in his design is not afforded the statutory presumption afforded registrations because the registration date in July 2025 is more than 15 years after he first submitted the design to the competition. The presumption applies only to registrations made before or within five years after first publication (17 U.S.C. § 410(c)).

The court then addressed the merits of Choi’s claim. It noted that he alleged not that UI has reproduced or distributed drawings depicting his copyrighted design, but that UI’s scaffolding itself infringes his copyrights. UI argued that Choi’s technical drawing does not give him derivative copyrights to the useful article (the scaffolding), noting that Choi’s copyright stipulates that it “does not extend to any useful article depicted,” but only to a “deposited technical drawing with text.” Choi countered (1) that the law protects the work’s “expressive, aesthetic features,” which UI has infringed; and (2) analysis of the issue is not suitable for resolution on a motion to dismiss.

The court first dispatched the procedural argument, citing case law in which courts assessed, on a motion to dismiss, whether design features are separable and independent from a useful article itself. It then turned to Choi’s substantive argument, finding it to be without merit.

Copyright protection extends to the “design of a useful article” only if the design features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article” 17 U.S.C. §§ 101, 102(a). To determine whether the design elements on which Choi’s claim is based are separable and independent from the scaffolding, the court applied the two-part analysis from Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017). The first part of the test, “separate identification,” requires that there be some two- or three-dimensional element in the useful article that has pictorial, graphic, or sculptural qualities. Id. at 417. The second part of the test, “independent existence,” requires that the separately identified feature “has the capacity to exist apart from the utilitarian aspects of the article.” Id. Choi had to establish both elements of the test.

Choi alleged the arch shapes, integrated lighting, and transparent roofing as the specific expressive design elements in the registered drawing he claims are being infringed. As these design elements have “pictorial, graphic, or sculptural qualities,” Choi passed the “separate identification” prong of the Star Athletica test. But the court did not agree with him that those elements have the capacity to exist apart from the scaffolding’s utilitarian aspects. “Simply put, arch shapes, integrated lighting, and transparent roofing features cannot be identified separately from the useful aspects of the scaffolding structure,” the court reasoned (internal quotation omitted). The court thus dismissed Choi’s copyright claim.

False designation. Choi alleged that by using, promoting, and offering for sale goods bearing the “Urban Umbrella” name and distinctive design, UI was likely to cause confusion “as to the affiliation, connection, or association of UI and its infringing works with CHOI, or as to the origin, sponsorship or approval of UI’s goods and services.”

A necessary element of a false designation claim is that the plaintiff owns a protectable trademark. In this case, because Choi did not have a trademark registration for “Urban Umbrella,” he had to show ownership through allegations of prior use of the trademark commercially. Choi, however, failed to plausibly allege such commercial use, the court held.

He pled only that he used the term “Urban Umbrella” in the design he submitted to the competition, and after winning the competition, promoted it and sought opportunities to commercialize it in New York City by obtaining funding. When those efforts were not fruitful, however, he moved on to other things and asked the architectural firm to keep him posted if anyone were interested. Those allegations fell short of the statutory requirement that the mark be placed on goods, which goods are then sold or transported in commerce (15 U.S.C. § 1127). Without protectable rights in either the mark or the trade dress of the scaffolding, Choi could not state a false designation of origin claim, the court held.

Unfair competition. Because the elements of a New York unfair competition claim parallel those of the Lanham Act false designation of origin claim, the court dismissed Choi’s unfair competition claim for the same reason stated above.

Trademark cancellation. Finally, Choi sought cancellation of UI’s URBAN UMBRELLA registration. But cancellation is available as a remedy in an underlying case involving the registered mark, not as an independent cause of action. Thus, the court dismissed this claim as well for lack of jurisdiction.

The Case is No. 1:25-cv-09496-VM.

Judge: Marrero, V.

Attorneys: Albina Gasanbekova (Mitchell Silberberg & Knupp LLP) for Young-Hwan Choi. Amy Beth Goldsmith (Tarter Krinsky & Drogin LLP) for Urban Intelligence Inc.

Companies: Urban Intelligence Inc.

Cases: Copyright Trademark NewYorkNews