In overturning a summary judgement ruling to the contrary, the 11th Circuit ruled that a digital representation of stained wood used in laminate flooring may be copyrightable. To make laminate flooring that looks like real wood floors, Mannington Mills, Inc. creates large digital images that attempt to mirror natural wood designs that are then layered into pieces of wood which are then cut into planks for use as indoor flooring. The case arose when Mannington sent a cease and desist letter to competitor Home Legend, LLC after Home Legend began selling laminate flooring “almost identical” to Mannington’s copyrighted designs.[1] Home Legend then brought this action asking for a declaratory ruling that Mannington’s designs were not copyrightable, to which Mannington responded by filing a counterclaim for copyright infringement against Home Legend. Both parties moved for summary judgment and the lower court found for Home Legend, declaring the designs uncopyrightable.
On appeal, the 11th Circuit held that the designs may be copyrightable and reversed the summary judgement ruling. The issues in the case were whether or not the designs were original enough to qualify for copyright protection,[2] whether or not the design elements of the wood planks were separable from the utility of the planks themselves, and whether or not the designs represented an uncopyrightable process or idea.
Originality
In order to gain copyright protection, a work must have a “modicum of creativity” but need not be novel. The bar for originality is very low, but there be creative work from the author himself. In this case, Home Legend argued that because the designs of the wood planks appeared in nature, there was no author-supplied originality. The court disagreed, describing the process by which Mannington designers imagine what the wood might look like after years of distressing, and digitally alerting a natural wood grain patter to reflect that. Mannington does not just scan aged pieces of wood, as the lower court eluded to. This, said the court, was enough to establish a modicum of creativity.
The court also held that even if there was no original creative work, the designs could earn copyright protection as creative compilations. The court noted that creative compilations of uncopyrightable subject matter can earn copyright protection. In this case, the designers made creative choices in picking certain planks from a larger selection, arranging those planks in a certain way, and ultimately selecting one image from a larger pool. So even if the digital rendering they applied to the final image was not sufficient to establish originality, the process of compiling the non-copyrightable, natural elements may be.
Useful Article
The lower court also found that Mannington could not copyright its designs because the designs were inseparable from the useful article they accompanied. Copyright protection does not extend to “useful articles”—patents do. However, if there is creative expression that goes beyond the utility of the item and serves no useful purpose, it can be copyrighted separately. The lower court held that because the designs would not be sold separate from the useful article (the wooden planks), they could not be awarded copyright protection.
The 11th Circuit disagreed, holding that (1) there was no evidence to support the lower court’s “conjecture” that the designs were inseparable, and (2) the designs did have some separate value because if they did not, Home Legend would not have copied the designs so closely—it could have used any natural design. Further, although the design is only used on wood flooring as of now, it could be used elsewhere, like in artwork or wallpaper. That possibility was enough to reject summary judgment.
Process/Expression Distinction
Finally, the lower court held that the evidence Mannington submitted focused solely on the process by which it created the wood planks, and processes are not copyrightable. The 11th Circuit quickly disposed of that argument by pointing out that the challenge to Mannington focused on the originality of the work, so the evidence of the process was necessary to illustrate where creative choices were made.
What’s Next?
Upon rejecting summary judgment against Mannington, the 11th Circuit remanded the case to the lower court where, presumably, there will be a full trial to explore the copyrightability of the wood designs. Additionally, the lower court will have to determine what parts of the product are copyrightable and how rich the copyright protection is.
[1] Mannington registered for copyright protection in 2010.
[2] To qualify for copyright protection, a “work of authorship” must be “fixed” and sufficiently “original.”
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