`E-FILED
`
` Thursday, 09 August, 2012 10:53:04 AM
` Clerk, U.S. District Court, ILCD
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF ILLINOIS
`URBANA DIVISION
`______________________________________________________________________________
`
`Case No. 10-CV-3217
`
`)
`
`))
`
`)
`)
`)
`)
`
`))
`
`)
`
`DESIGN IDEAS, LTD., an Illinois
`Corporation,
`
`Plaintiff,
`
`v.
`
`THE YANKEE CANDLE COMPANY, INC.,
`a Massachusetts corporation,
`
`Defendant .
`
`OPINION
`
`This case is before the court for ruling on the Second Motion for Summary Judgment
`
`(#32) filed by Defendant, the Yankee Candle Company, Inc. Following this court’s careful
`
`consideration of the arguments of the parties and the exhibits provided by the parties,
`
`Defendant’s Second Motion for Summary Judgment (#32) is GRANTED. In addition,
`
`Defendant’s Motion to Deem Facts Admitted (#47) and Motion to Strike (#52) are DENIED
`
`as moot.
`
`FACTS1
`
`Plaintiff, Design Ideas, Ltd., is an Illinois corporation which maintains its principal
`
`place of business in Springfield, Illinois. Plaintiff creates decorative housewares, giftware
`
`and office accessories, which it distributes nationwide. Christopher Hardy is the Design
`
`Director for Plaintiff. He has held this position for over 18 years and supervises or
`
`1 The facts are taken from Defendant’s statement of undisputed material facts, Plaintiff’s
`statement of additional material facts, and the documents submitted by the parties. This court
`has only included facts it has concluded are material and adequately supported by evidence in
`the record.
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 2 of 21
`
`
`participates in the design of all of the products Plaintiff creates. Hardy stated in his
`
`declaration, dated August 25, 2011, that he designed Regatta sculpture sets which consist of
`
`three individual glass sailboat sculptures with sails of varying heights and colors. In 2001,
`
`he designed a set with frosted white sails. He next designed a set with two shades of blue
`
`sails and, in 2005, he designed a set with three different sherbet colored sails. Hardy
`
`described in some detail the process he went through in creating the Regatta designs. He
`
`stated that he did not want “to create literal, nautical reproductions of any actual sailboats”
`
`but instead “the works are abstractions of sailboats created solely” from his mind’s eye.
`
`Hardy stated that he decided to use glass because he wanted to be able to see through the
`
`sculptures somewhat and wanted them to glow. Hardy stated that he decided not to use a
`
`votive or larger candle because he did not want light to overpower the sculpture. Therefore,
`
`the Regatta sculptures hold a small candle called a tea light. Hardy said he wanted to create
`
`“an illuminated table-top decoration, aesthetically pleasing, but not useful as a light source
`
`for any purpose.” In his declaration, Hardy explained his thought processes regarding
`
`various aspects of his design, including the use of frosted glass, the design of the hull and
`
`sails, the selection of colors, and the number in a set. Hardy attached sketches he made while
`
`he was designing the Regatta sculptures and also attached photographs of other products with
`
`a sailboat theme to show the differences between those designs and the Regatta sculptures.
`
`On February 27, 2006, Plaintiff submitted an application to register a copyright for
`
`its Regatta sailboat tea light holder with a white translucent sail design and requested special
`
`2
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 3 of 21
`
`
`handing due to prospective litigation. On March 13, 2006, the Copyright Office sent Plaintiff
`
`a letter signed by Geoffrey R. Henderson, Senior Examiner of the Visual Arts Section. The
`
`letter stated that registration for the Regatta design was refused because it appeared to be a
`
`“‘useful article’ which does not contain any separable features that are copyrightable.”2 The
`
`letter stated that the work appeared to be an ashtray. The letter explained:
`
`Although the work contains a feature (the “sail”) that can
`
`clearly be identified as “separable”, that feature is not
`
`copyrightable.
`
`To be regarded as copyrightable, a work must be original,
`
`i.e., find its origin or source with the author and contain a certain
`
`amount of creative authorship. In the case of a work of art, a
`
`certain minimum amount of pictorial, graphic, or sculptural
`
`material in the work must have originated with the author. The
`
`determination of whether a work is copyrightable has nothing to
`
`do with its aesthetic or commercial value. See Bleistein v.
`
`Donaldson Lithographing Co., 188 U.S. 239 (1903). The
`
`question is whether there is sufficient creative authorship within
`
`the meaning of the copyright law and settled case law. See Feist
`
`Publications v. Rural Telephone Service Co., 499 U.S. 340
`
`2 Emphasis in original.
`
`3
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 4 of 21
`
`
`(1991).
`
`Copyright does not extend to ideas, concepts, systems, or
`
`the methods that are embodied in the author’s work. See 17
`
`U.S.C. 102(b). In addition, familiar symbols or designs,
`
`typographic ornamentation, lettering, coloring and mere
`
`variations thereof are not copyrightable. See 37 C.F.R. Section
`
`202.1.
`
`The separable aspect of this work is not copyrightable
`
`because it represents either an insufficient amount of original
`
`authorship or one or more of the non-copyrightable elements
`
`mentioned above, or a minor non-copyrightable variation
`
`thereof. Consequently, we cannot register this claim.3
`
`Plaintiff did not request reconsideration of this decision and did not appeal the Copyright
`
`Office determination.
`
`The Copyright Office issued a copyright registration for Plaintiff’s Spring 2006
`
`catalog which included Regatta sailboat sculptures. The certificate of registration was given
`
`number VA 1-427-637 (‘637 registration). The catalog described the sculptures as “Regatta
`
`tea lights in basic white and with new multi-colored sails.” In a letter dated November 2,
`
`2006, the Copyright Office noted that many of the sculptures in Plaintiff’s catalogs were
`
`3 Emphasis in original.
`
`4
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 5 of 21
`
`
`“uncopyrightable useful articles.” In addition, in a letter dated July 2, 2007, the Copyright
`
`Office stated that “[c]opyright does not protect familiar symbols or designs; basic geometric
`
`shapes; words and short phrases such as names, titles, and slogans; or mere variations of
`
`typographical ornamentation, lettering or coloring.” This letter also stated that “the design
`
`of a ‘useful article’ is considered a pictorial, graphic, or sculptural work ‘only if, and only
`
`to the extent that, 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 letter stated that “much of the pictorial and sculptural material
`
`in these catalogs is not registrable.”
`
`On July 16, 2010, Plaintiff sent Defendant a letter stating that Plaintiff “created and
`
`sells a line of glass sculptures known as Regatta, which are protected by United States
`
`copyright law, including under Registration No. VA 1-376-012 (copy enclosed).” Plaintiff
`
`attached a copyright registration, No. VA 1-376-012, for Design Ideas Basic Book 2006.4
`
`Plaintiff stated that it was aware that Defendant was reproducing and distributing copies of
`
`Plaintiff’s Regatta sculptures. Plaintiff insisted that Defendant cease and desist from offering
`
`and selling these products.
`
`PROCEDURAL HISTORY
`
`4 Defendant has pointed out that this is a different registration than the registration
`referred to in Plaintiff’s Complaint (#1). Plaintiff has not explained its reliance on this
`registration in its cease and desist letter and has not argued that it has a valid copyright
`registration for its Regatta sculptures under that number.
`
`5
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 6 of 21
`
`
`On August 24, 2010, Plaintiff filed a Complaint (#1) against Defendant in this court.
`
`Plaintiff stated that its claims “arise out of defendant’s actions with respect to certain
`
`products designed, developed, owned, marketed, sold and copyrighted by plaintiff.” Plaintiff
`
`alleged that it applied to register its copyrights in its Regatta sculptures with the Copyright
`
`Office on February 27 and August 30, 2006, ultimately receiving Registration No. VA 1-427-
`
`637. Plaintiff alleged that Defendant had distributed glass sculptures which copied nearly
`
`exactly Plaintiff’s Regatta sculptures. Plaintiff alleged that Defendant’s acts constituted
`
`willful infringement of its copyrights.
`
`On September 17, 2010, Plaintiff sent a letter to the Copyright Office informing the
`
`Office that it had commenced a copyright infringement action. In the letter, Plaintiff referred
`
`to the Copyright Office’s refusal to register its copyright “based on separability and
`
`originality.” Plaintiff attached a copy of its Complaint and gave the Copyright Office the
`
`opportunity to intervene. On September 20, 2010, Plaintiff submitted a Form CA to the
`
`Copyright Office and requested supplementary registration to the ‘637 registration. Plaintiff
`
`proposed to supplement its ‘637 registration by including the following amplification:
`
`The glass sailboat sculpture with white translucent sail
`
`appearing on page 5 of Design Ideas Spring 2006 is the subject
`
`of an application for copyright registration filed by Claimant on
`
`February 27, 2006, Control Number 61-406-9290(S), which the
`
`Office refused. The glass sailboat sculptures with bifurcated
`
`color sails appearing on page 6 of Design Ideas Spring 2006
`
`6
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 7 of 21
`
`
`were first published there and are derivative works of the glass
`
`sailboat sculpture with white translucent sail, previously refused.
`
`On February 8, 2011, the Copyright Office sent a letter to Plaintiff’s counsel and
`
`provided a copy to Defendant’s counsel. The letter stated that, although Plaintiff’s
`
`Complaint alleged that Plaintiff submitted two applications for Regatta and obtained one
`
`registration, “it does not expressly state that one of these applications was refused.”5 The
`
`Copyright Office stated that it declined to intervene in the litigation, especially in light of its
`
`position regarding Plaintiff’s Form CA for the ‘637 registration. The Copyright Office
`
`attached a letter authored by John H. Ashley, Chief of the Visual Arts & Recordation
`
`Division. In his letter, Ashley stated that, after careful consideration, the Copyright Office
`
`concluded that it could not complete the requested supplementary registration. Ashley’s
`
`letter stated, in pertinent part:
`
`Specifically, the second sentence of the proposed amplification
`
`states that “[t]he glass sailboat structures with bifurcated color
`
`sails appearing on page 6 of the Design Ideas Spring 2006 were
`
`first published there and are derivative works of the glass
`
`sailboat sculpture with white translucent sail, previously
`
`refused.” However, as the Office explained when it rejected the
`
`5 Defendant’s counsel, Jacqueline A. Criswell, stated in her Declaration dated June 8,
`2011, that, prior to her receipt of this letter, she and Defendant were unaware that the Copyright
`Office had previously refused registration for the white translucent Regatta sculpture on March
`13, 2006.
`
`7
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 8 of 21
`
`
`“previously refused” design, the white translucent design is not
`
`copyrightable because it is not sufficiently creative. Instead, the
`
`design, including the curvature, is simplistic and merely depicts
`
`common sail imagery. It is thus not protectable because “the
`
`creative spark is utterly lacking or so trivial as to be
`
`nonexistent.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co. Inc.,
`
`499 U.S. 340, 359 (1991).
`
`Similarly, the Office believes that the “bifurcated color sails” on
`
`page six of the Design Ideas Spring 2006 catalog do not contain
`
`copyrightable authorship (derivative or otherwise), which is
`
`required for registration. The addition of color to the sails
`
`(transforming what were white sails into two-toned red, blue and
`
`yellow sails) is not sufficiently original to transform the
`
`noncopyrightable original tea lights into works of authorship.
`
`Accordingly, we cannot accept Design Ideas’ proposed
`
`amplification of the Registration.
`
`Ashley stated that Plaintiff was allowed 30 days to object to the Copyright Office’s
`
`determinations.
`
`Subsequently, on March 7, 2011, Plaintiff sought leave to file an amended complaint.
`
`United States Magistrate Judge Byron Cudmore granted this request on May 12, 2011. On
`
`May 18, 2011, Plaintiff filed its First Amended Complaint (#20). In this Complaint, Plaintiff
`
`8
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 9 of 21
`
`
`again alleged that it “applied to register its copyrights in its Regatta sculptures with the
`
`United States Copyright Office on February 27 and August 30, 2006, ultimately receiving
`
`Registration No. VA 1-427-637.” In a footnote, Plaintiff added:
`
`Design Ideas’ February 27, 2006, application for an earlier
`
`Regatta sculpture with white translucent sails was refused
`
`registration on March 6, 2006 [sic] (Control No. 61-406-
`
`9290(S)). Pursuant to 17 U.S.C. §411(a), Design Ideas gave
`
`notice of this action to the Copyright Office, which has now
`
`declined to intervene. Design Ideas respectfully disagrees with
`
`the Copyright Office regarding the registrability of the subject
`
`works. Design Ideas’ ‘637 registration is for the 3-D sculpture,
`
`2-D artwork, photography and text first published in its Spring
`
`2006 catalog, which includes the three Regatta sculptures
`
`depicted in the right-hand photo in paragraph 6 hereto.
`
`In its footnote, Plaintiff did not disclose that the Copyright Office had determined that the
`
`‘637 registration did not extend to the dual-colored sail because it lacked sufficient creativity.
`
`Plaintiff sent a reply to the Copyright Office’s February 2011 letter notifying Plaintiff
`
`that it would not issue the requested supplemental registration. On May 20, 2011, Ashley
`
`sent a letter to Plaintiff’s counsel in response. Ashley stated:
`
`[W]e are reiterating our opinion that the dual-sails design
`
`work on page 6 of your client’s catalog is a de minimis design
`
`9
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 10 of 21
`
`
`and is thus not registrable, which means that, in our view, they
`
`are not covered by the issued basic registration. As we pointed
`
`out in the advisory warning letter that we sent after the basic
`
`registration issued, the registration did not necessarily extend to
`
`all of the contents in the catalog, not even to all of the new
`
`content. Though we might not have adverted directly to this
`
`particular work when we made our initial examination of the
`
`catalog, had we done so we would have treated this design as
`
`not registrable either individually or as part of the collection of
`
`new works within the catalog. Whether considered as separate,
`
`individual works of authorship, or as a collective set of three
`
`pieces of authorship, we find that the dual-sails designs are not
`
`adequately distinguishable from what we would consider to be
`
`fairly stock, familiar interpretations of dual-sails.
`
`Ashley closed by reiterating that “the requested supplementary registration cannot be issued
`
`because you cannot add a specific reference to the non-copyrightable designs.” The
`
`Copyright Office amended the ‘637 registration to state that “Dual-Sails designs on page 6
`
`not copyrightable, therefore, are not covered by this registration.”
`
`On June 9, 2011, Defendant filed a Motion for Summary Judgment and Memorandum
`
`in Support (#22). Defendant argued that it was entitled to judgment in its favor because
`
`Plaintiff’s work at issue was not entitled to copyright protection. Plaintiff then moved to
`
`10
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 11 of 21
`
`
`again amend its complaint. Judge Cudmore allowed Plaintiff’s request, and Plaintiff filed
`
`its Second Amended Complaint (#29) on July 19, 2011. In the Second Amended Complaint,
`
`Plaintiff added the following language to its footnote regarding the ‘637 registration:
`
`Subsequent to the filing of this action and filing of the First
`
`Amended Complaint (d/e 20), the U.S. Copyright Office
`
`declined to grant a Form CA Supplemental Registration for the
`
`‘637 registration, indicating in a letter dated May 20, 2011, that
`
`the sherbet colored Regatta sculpture work shown in the catalog
`
`“. . . is not registrable, which means that, in our view, they are
`
`not covered by the issued basic [‘637] registration.” (D/e 22-7;
`
`Emphasis added.) Design Ideas respectfully disagrees with the
`
`Copyright Office regarding its said 2006 application and the
`
`Form CA.6
`
`Plaintiff also added Count II which requested a declaration that Plaintiff’s copyrights are
`
`registered for remedies purposes under 17 U.S.C. § 412. On July 25, 2011, United States
`
`District Judge Sue E. Myerscough entered a text order which ruled that Defendant’s Motion
`
`for Summary Judgment (#22) was rendered moot when the Second Amended Complaint was
`
`filed.
`
`On August 1, 2011, Defendant filed its Second Motion for Summary Judgment (#32),
`
`6 Emphasis added by Plaintiff to the quote from Ashley’s letter.
`
`11
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 12 of 21
`
`
`with attached exhibits. Defendant again claimed that it is entitled to summary judgment
`
`because the work at issue is not entitled to copyright protection. On August 25, 2011,
`
`Plaintiff filed its Opposition to Defendant’s Second Motion for Summary Judgment, with
`
`exhibits (#41, #42). Plaintiff argued that the Regatta sculpture sets are original, creative
`
`works entitled to copyright protection. On September 13, 2011, Defendant filed its Reply
`
`(#45) with additional exhibits.
`
`On April 4, 2012, Judge Myerscough entered a text order and recused herself from
`
`participation in this matter. On April 5, 2012, this case was assigned to this court.
`
`
`
`ANALYSIS
`
`I. SUMMARY JUDGMENT MOTION
`
`A. STANDARD
`
`Summary judgment is appropriate “if the movant shows that there is no genuine
`
`dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
`
`Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). In
`
`ruling on a motion for summary judgment, a district court “has one task and one task only:
`
`to decide, based on the evidence of record, whether there is any material dispute of fact that
`
`requires a trial.” Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 920 (7th Cir. 1994). In
`
`making this determination, the court must construe the evidence in the light most favorable
`
`to the nonmoving party and draw all reasonable inferences in favor of that party. See
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Singer v. Raemisch, 593 F.3d
`
`529, 533 (7th Cir. 2010).
`
`12
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 13 of 21
`
`
`Whether a particular work is copyrightable is an issue of law for the court. Schrock
`
`v. Learning Curve Int’l, Inc., 586 F.3d 513, 517 (7th Cir. 2009) citing Gaiman v. McFarlane,
`
`360 F.3d 644, 648-49 (7th Cir. 2004); Woods v. Resnick, 725 F. Supp. 2d 809, 817 (W.D.
`
`Wis. 2010). Therefore, determinations of copyrightability are appropriate for summary
`
`judgment. See Woods, 725 F. Supp. 2d at 817.
`
`B. PLAINTIFF’S CLAIM
`
`A claim of copyright infringement has two elements: “(1) ownership of a valid
`
`copyright, and (2) copying of constituent elements of the work that are original.” Feist
`
`Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc. 499 U.S. 340, 361 (1991); Schrock, 586 F.3d at
`
`517. There is no dispute that, as far as Defendant’s Second Motion for Summary Judgment,
`
`only the first element is at issue.
`
`As a constitutional and statutory matter, “[t]he sine qua non of copyright is
`
`originality.” Feist Publ’ns, Inc. 499 U.S. at 345; Schrock, 586 F.3d at 518-19. Copyright
`
`law assures authors of “original” creative works that others will not profit from their designs
`
`without their approval. Feist Publ’ns, Inc. 499 U.S. at 345-56; Boyds Collection, Ltd. v.
`
`Bearington Collection, Inc., 360 F. Supp. 2d 655, 659 (M.D. Pa. 2005); 17 U.S.C. § 102. To
`
`be original, a work must: (1) be independently created by the author, rather than copied from
`
`other works; and (2) “possess[] at least some minimal degree of creativity.” Feist Publ’ns,
`
`Inc., 499 U.S. at 345, citing 1 M. Nimmer & D. Nimmer, Copyright §§ 2.01[A],[B] (1990).
`
`“To be sure, the requisite level of creativity is extremely low; even a slight amount will
`
`suffice.” Feist Publ’ns, Inc., 499 U.S. at 345.
`
`13
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 14 of 21
`
`
`To benefit from copyright protections, “the author must register the design with the
`
`United States Copyright Office, a division of the Library of Congress.” Boyds Collection,
`
`360 F. Supp. 2d at 659, citing 17 U.S.C. §§ 408, 412, 701. Registration is a prerequisite to
`
`a suit to enforce a copyright so that “an application to register must be filed, and either
`
`granted or refused, before suit can be brought.” Gaiman, 360 F.3d at 654-55, citing 17
`
`U.S.C. § 411(a). If refused, “the interpretation followed by the Copyright Office, as the
`
`agency responsible for administering federal copyright law, is entitled to respect as
`
`persuasive authority.” Boyds Collection, 360 F. Supp. 2d at 661, citing Southco, Inc. v.
`
`Kanebridge Corp., 390 F.3d 276, 286-87 (3d Cir. 2004).
`
`Whether the Copyright Office granted or refused registration, a copyright
`
`infringement lawsuit permits the court to make a determination whether the work is entitled
`
`to copyright protection. See Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 414
`
`(2d Cir. 1985); see also Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1246 (2010), citing
`
`17 U.S.C. § 411(a). As noted previously, this determination is an issue of law for the court
`
`and is appropriate for resolution on summary judgment. See Woods, 725 F. Supp. 2d at 817.
`
`In this case, the Copyright Office explicitly determined, on several occasions, that
`
`Plaintiff’s Regatta tea light holders are useful items that do not contain separable features that
`
`are copyrightable. Plaintiff has argued, citing Boyds Collection, that the Copyright Office’s
`
`determination is not entitled to deference because the analysis is not reasonable and “makes
`
`only conclusory statements on functionality, separability and common stock elements.”
`
`Plaintiff has argued, at length, that the Copyright Office’s opinions are “immaterial” and
`
`14
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 15 of 21
`
`
`should not be considered by this court.
`
`The district court in Boyds Collection found that the deference owed to the Copyright
`
`Office’s interpretation in that case was substantially limited because the two letters offered
`
`in support of the Copyright Office’s view lacked “any indicia of a reasoned decision-making
`
`process” and provided “no rationale or explanation for the agency’s construction of the
`
`statute.” Boyds Collection, 360 F. Supp. 2d at 661-62. The court in Boyds Collection also
`
`noted that the letters setting out the determination were authored by an examiner in the
`
`Copyright Office, not a high-level official, and did not indicate the source of the
`
`interpretation or the manner in which it was reached. Boyds Collection, 360 F. Supp. 2d at
`
`662. The court also concluded that the Copyright Office’s “interpretation fatally conflicts
`
`with the plain meaning of the statute.” Boyds Collection, 360 F. Supp. 2d at 662.
`
`This court concludes that Boyds Collection does not support Plaintiff’s argument that
`
`this court should not give deference to the opinions of the Copyright Office in this matter.
`
`The court in Boyds Collection specifically recognized that “deference to agency opinion
`
`varies with ‘the degree of the agency’s care, its consistency, formality, and relative
`
`expertness, and to the persuasiveness of the agency’s position.’” Boyds Collection, 360 F.
`
`Supp. 2d at 661-62, quoting United States v. Mead Corp., 533 U.S. 218, 228 (2001); see also
`
`Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944) (“The weight [accorded to an
`
`administrative] judgment in a particular case will depend upon the thoroughness evident in
`
`its consideration, the validity of its reasoning, its consistency with earlier and later
`
`pronouncements, and all those factors which give it power to persuade, if lacking power to
`
`15
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 16 of 21
`
`
`control.”). Plaintiff has pointed out that the Copyright Office’s first refusal of registration
`
`for the Regatta sculptures referred to the work as an “ashtray.” However, this court
`
`concludes that the remainder of that decision was detailed and well reasoned. In addition,
`
`the decision to deny supplemental registration to the colored Regatta sculptures was written
`
`by John H. Ashley, Chief of the Visual Arts & Recordation Division of the Copyright Office.
`
`In his letters, Ashley carefully and persuasively explained why the Regatta tea light holders
`
`are not worthy of copyright protection. Most importantly, unlike the situation in Boyds
`
`Collection, the decision of the Copyright Office in this case does not conflict with the plain
`
`meaning of the statute, nor does it conflict with the applicable case law. This court concludes
`
`that the consistent, well-reasoned decisions of the Copyright Office are entitled to deference
`
`in this case.
`
`Defendant argues that Plaintiff’s Regatta sculptures are not protectable because they
`
`are useful articles, tea light holders, merely depict common sail imagery consisting of
`
`familiar stock components, and are not sufficiently creative. Defendant notes that tea light
`
`candles are made in one uniform size. It argues that Regatta’s purpose is utilitarian, to
`
`function as a candle holder. It contends that the sail is curved to protect the candle light.
`
`Defendant contends that, while the sail itself has the potential to constitute a separable aspect
`
`of the work, the addition of sails, whether translucent or colored, merely depict common sail
`
`imagery and is too trivial to qualify as sufficiently creative.
`
`A “‘useful article’ is an article having an intrinsic utilitarian function that is not merely
`
`to portray the appearance of the article or to convey information. An article that is normally
`
`16
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 17 of 21
`
`
`a part of a useful article is considered a ‘useful article’.” 17 U.S.C. § 101. Copyright law
`
`“excludes from its protection ‘useful articles,’ products that have an ‘intrinsic utilitarian
`
`function’ apart from appearance or expression.” Boyds Collection, 360 F. Supp. 2d at 661,
`
`citing 17 U.S.C. §§ 101, 102(a)(5). If a work is determined to be a useful article, it falls
`
`within the definition of pictorial, graphic or sculptural works entitled to copyright protection
`
`“only if, and only to the extent that, 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.” 17 U.S.C. § 101.
`
`The Seventh Circuit has explained:
`
`Conceptual separability exists . . . when the artistic
`
`aspects of an article can be “conceptualized as existing
`
`independently of their utilitarian function.” Carol Barnhart,
`
`773 F.2d at 418. This independence is necessarily informed by
`
`“whether the design elements can be identified as reflecting the
`
`designer’s artistic
`
`judgment exercised
`
`independently of
`
`functional influences.” Brandir [Int’l, Inc. v. Cascade Pacific
`
`Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987)]. If the
`
`elements do reflect the independent, artistic judgment of the
`
`designer, conceptual separability exists. Conversely, when the
`
`design of a useful article is “as much the result of utilitarian
`
`pressures as aesthetic choices,” id. at 1147, the useful and
`
`17
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 18 of 21
`
`
`aesthetic elements are not conceptually separable.
`
`Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913, 931 (7th Cir. 2004). The
`
`Seventh Circuit has recognized, however, that “[o]f the many fine lines that run through the
`
`Copyright Act, none is more troublesome than the line between protectible pictorial, graphic
`
`and sculptural works and unprotectible utilitarian elements of industrial design.” Pivot Point,
`
`372 F.3d at 921, quoting Paul Goldstein, 1 Copyright § 2.5.3, at 2:56 (2d ed. 2004).
`
`Even if conceptual separability exists, the work is copyrightable only if it is
`
`sufficiently original for copyright protection. See Universal Furniture Int’l, Inc. v.
`
`Collezione Europa USA, Inc., 618 F.3d 417, 429-30 (2d Cir. 2010). Plaintiff insists that,
`
`based upon Feist Publ’ns, Inc., the amount of originality required for copyright protection
`
`is “not particularly stringent” and the requisite level of creativity is “extremely low.” Feist
`
`Publ’ns, Inc., 499 U.S. at 358, 345. Plaintiff noted that it provided Hardy’s declaration
`
`which “details all of the aesthetic and creative design decisions he made when creating his
`
`REGATTA sculpture sets.” Plaintiff argued that the Regatta sculpture sets “are clearly
`
`protected by copyright, the [Copyright] Office’s registration refusal notwithstanding.”
`
`This court has carefully reviewed all of the exhibits provided by the parties, including
`
`the actual sherbet-colored Regatta sculptures submitted as a conventional exhibit by Plaintiff.
`
`In conducting its review, this court has given deference to the opinions of the Copyright
`
`Office which concluded that the sculptures are useful items and, even if separable from their
`
`useful function, not sufficiently creative to warrant copyright registration. The Copyright
`
`Office has stated that copyright does not protect familiar symbols or designs and that the
`
`18
`
`
`
`3:10-cv-03217-MPM-BGC # 58 Page 19 of 21
`
`
`design of the Regatta sculptures is overly simplistic and merely depicts common sail
`
`imagery. The Copyright Office also stated that the “dual-sails designs are not adequately
`
`distinguishable from what we would consider to be fairly stock, familiar interpretations of
`
`dual-sails.”
`
`After careful review, this court concludes that the Regatta sculptures are tea light
`
`holders shaped to look like sailboats. This court agrees with the Copyright Office that the
`
`Regatta works are shaped to hold tea lights and, therefore, are useful items. This court
`
`further agrees that, even if the sailboat shapes attached to the tea light holders are separable
`
`from the utilitarian function, the sailboat shapes are not sufficiently creative to be
`
`copyrightable. This court concludes that the sailboat shape is a familiar, well-known shape
`
`so that decisions regarding curve, size, color, and number included in a set do not make the
`
`product sufficiently original so that the work is copyrightable. See Satava v. Lowry, 323
`
`F.3d 805, 811-12 (9th Cir. 2003) (“selection of the clear glass, oblong shroud, bright colors,
`
`proportion, vertical orientation, and stereotyped jellyfish form, considered together, lacks the
`
`quantum of originality needed to merit copyright protection”). Because of this conclusion,
`
`Defendant’s Second Motion for Summary Judgment (#32) is GRANTED.
`
`II. REMAINING MOTIONS
`
`Defendant has filed a Motion to Deem Admitted Certain Material Facts (#47) and a
`
`Motion to Strike Plaintiff’s Opposition to the Motion (#52). In ruling on Defendant’s Second
`
`Motion for Summary Judgment, this court has made its own determination as to whether
`
`facts have been admitted and were adequately supported by the record. In addition, this court
`
`1