Plumb disappointing: 9th Circuit reinstates 2D-to-3D copyright claim

Direct Technologies, LLC v. Electronic Arts, Inc., Nos.
14-56266/14-56745 (9th Cir. Sept. 6, 2016)
Electronic Arts makes the game The Sims, and contracted with
a production company, Lithomania, to produce a USB flash drive shaped like a
“PlumbBob,” a gem-shaped icon from The Sims to promote a “Collector’s Edition.”
Lithomania in turn contracted with Direct Technologies to produce a prototype, then
shipped that prototype to a company in China to make essentially the same flash
drives for $0.50 cheaper per unit than DT proposed, while lying to DT about the
fact that it had been cut out of the deal, apparently in order to get it to
sign agreements including IP licenses. Lithomania told EA that it had received
a vendor agreement from DT, “so IP’s are all protected.” EA responded, “Great.
. . . Protect us all.”
 

PlumbBob icon

USB drive

DT ultimately settled breach of contract claims with
Lithomania, then sued EA under the federal Copyright Act and the California
Uniform Trade Secrets Act. Here, the court of appeals reverses summary judgment
for EA on copyrightability, in my opinion mistakenly, and affirms summary
judgment for EA on trade secrets given that the design at issue did not derive
independent economic value from being kept secret. EA couldn’t get attorneys’
fees on the trade secret claim, though.
Background: When a player controls a specific character, the
PlumbBob appears over the character’s head, which is “an iconic symbol of The
Sims.” According to the court, EA has a copyright in the PlumbBob (separately
registered?).  Thus, the question was
whether the USB flash drive had enough independent creativity to be a
copyrightable derivative work.  DT
alleged two creative aspects: (1) the USB drive had 12 equal sides, whereas the
icon had 20 unequal sides; and (2) DT designed the USB drive to fit into the
PlumbBob with a “futuristic cut away look . . . at a unique angle.”
 

USB design
Protection requires nonfunctionality, separability, more
than trivial originality, and lack of any effect on the scope of copyright in
the preexisting material.
DT argued that the fit of the flash drive had a “futuristic
cut away look . . . at a unique angle” which was nonfunctional. The court found
that there was a genuine issue of fact about whether the design was merely functional
or utilitarian. The “mere feature of having a USB flash drive that can be
removed from the PlumbBob object” wasn’t copyrightable.  But the manner in which the USB drive was “cut
away” was potentially non-functional. [This is the exact kind of reasoning our
brief in Varsity Brands
argues shouldn’t ever constitute separability: the
choice, however aesthetic it might be, is coextensive with the fact that it is for
an object containing a USB drive, and thus is not separable from the
utilitarian aspects.]
The record showed that DT considered four other designs, and
the designer submitted a sworn declaration explaining that his ultimate choice
was made “for aesthetic reasons.”  A jury
could find that this design feature was “truly ‘artistic.’”

Alternative designs

As for originality, having 12 or 20 sides wasn’t an original
choice, since EA’s versions of the PlumbBob already included both as the icon
changed over time. “Even assuming that DT’s version has a slightly different
shape than the drawing presented by EA, we have held that a character’s copyright
encompasses its ‘distinctive character traits and attributes, even if the
character does not maintain the same physical appearance in every context.’”  However, there was a genuine issue of material
fact about whether “the manner in which DT designed the USB drive to fit into
the PlumbBob object” was sufficiently original to merit protection.  [Again, note how this framing makes clear the
inseparability of the aesthetic choice from the fact that the choice is about how to design the useful object.]
EA argued that the design was so similar to the PlumbBob
that if it were copyrightable, DT would have “a monopoly on all USB[ drives]
shaped like the PlumbBob, and perhaps even any other 3-D embodiment of the
PlumbBob.”   The court of appeals
disagreed: DT would only have “a copyright in its unique contribution—the
artistic manner in which it designed the USB flash drive to fit into the
PlumbBob object.” DT’s copyright “would obviously not preclude others from
making a 3-D PlumbBob without a flash drive.” [If this is true, again, then
there’s no separability—if the only originality comes from a choice that can’t
be replicated without also putting a USB drive in the object, then the
utilitarian design isn’t separable.]

A jury could also find that EA wasn’t a joint author, but
only in a position to offer suggestions, and that DT’s design had “audience
appeal” (one factor in the 9th Circuit’s joint authorship inquiry). Moreover,
as to the IP license in the vendor agreement with Lithomania, a jury could find
that, “if the contract was fraudulently induced, such that it was invalid from
the beginning, there would be no valid contract for EA to enforce.” 

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