Champagne bottle shaped balloon manufacturer accuses competitor of copyright infringement. PAPER CONFETTI v. VP PRODUCTS

A copyright is a set of exclusive rights granted to the creator of a new work of expression. Various different types of creative professions are granted copyright protection for their work, such as photographers, musicians, film makers and artists. When a creator creates a new work, they are automatically granted a copyright to their work. The creator can register their copyright with the United States Copyright Office to gain additional rights within the United States, but registration is not a condition precedent to the grant of a copyright. A copyright grants its owner the exclusive right to reproduce, distribute, display, perform, transmit and make derivative works based on the original. If someone other than the copyright owner exercises one of these exclusive rights without authorization, that can be considered copyright infringement. A copyright owner can address copyright infringement by filing a complaint in Federal District Court. A copyright plaintiff can request an injunction to stop infringing activity and monetary damages for infringement which has occurred. A copyright owner that has registered their copyright can request statutory damages of $150,000 per infringement.

A long standing principle of copyright law is that a copyright covers a new work of expression and not the subject of the work or the function of the work. Copyright protection may not be obtained in any “useful” articles with an intrinsic utilitarian function. Items such as clothes have a utilitarian function, so copyright protection cannot be granted on the design of a shirt or dress. A design on fabric used to make clothing, however, can be protected by copyright if it meets the originality and nonfunctionality standards for copyrightability. The concept that design elements of an object with utilitarian function can be granted copyright protection is articulated in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

In Star Athletica, the United States Supereme Court held that the design elements of a uniform could be copyrighted. The Court laid out a two part test to determine when an artistic feature of the design of a useful article is eligible for copyright protection. If the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article, then the design can be copyrighted.

The design in question in Star Athletica was on a piece of clothing, but the Supreme Court’s decision did not limit application of the ruling to articles of clothing. Manufacturers in other industries are now applying the rule in this case to their own products.

PAPER CONFETTI LLC v. VP PRODUCTS LLC, 2:19-cv-01567 (W.D.WA 2019) illustrates the manufacturer of a useful article suing a competitor for allegedly copying a design pattern. The plaintiff in this case sells various different party accessories including balloons. In 2017 an artist created a design of a champagne bottle for the plaintiff and all rights to the design were assigned to the plaintiff. The plaintiff applied for and was granted Copyright Registration No. VAu001340661 for the design in June 21, 2018. The plaintiff applied the design to a champagne bottle shaped balloon and offers the product for sale through various channels. The design and the plaintiff’s balloon with the design are reproduced above.

Sometime after August 21, 2018 the defendant began selling a balloon shaped like a champagne bottle, with a distinctive pattern applied to the surface of the balloon. The defendant’s balloon is reproduced above.

Both the plaintiff and the defendant sell their products on Amazon. The plaintiff attempted to get the defendants products removed from Amazon on the grounds of copyright infringement, but was unsuccessful. During the course of the removal attempt the defendant told the plaintiff that the balloon design cannot be copyrighted. The plaintiff then filed suit for copyright infringement in September of 2019.

The defendant has a difficult case to argue. While it is true that the plaintiff cannot copyright a balloon shaped like a champagne bottle, based on the precedent of Star Athletica, it is likely that the surface design of the balloon is eligible for copyright protection. We will have to wait for the answer to see how the defendant responds to the plaintiff’s allegations.

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