Is a Lamp Design Copyrightable? Shedding Light on U.S. and Italian Copyright Protection of Useful Articles
Previously, we analyzed the industrial design protections available under the E.U. Regulation on design and the U.S. law on design patents.1 However, both in the E.U. and in the U.S., industrial design can also be protected by copyright law.
Herein, I will briefly outline the E.U. and the U.S. approach to copyrighting useful articles, with a particular focus on the protection of lamps which embody an original and aesthetic design.
The E.U. and the Italian legal system
At the E.U. level, despite twenty years of harmonization efforts, copyright law remains within the domain of individual States. In this vein, the Italian Copyright Act of 1942 allows for the copyright protection of works which are characterized by a certain degree of originality and creativity, which express the personality of the author, and are fixed in a perceptible form.2
Furthermore, works of industrial design may be covered by copyright law. However, to be eligible for copyright protection such works not only require “creative character” (which is a prerequisite for every copyrightable work), but also “artistic value.”3
The Italian Copyright Act does not define “creative character” and “artistic value”. Over the last few years, the Italian courts have clarified that “creative character” requires a work to be the expression of the author’s own personality, while “artistic value” relates to the aesthetic appeal and prestige of a product of industrial design, and requires that the aesthetic features of the design prevail over the functionality of the product.4
In the landmark case Flos v. Semeraro,5 related to the design infringement of the famous lamp “Arco” designed by the Castiglioni brothers,6 the Italian Court of Milan set forth a list of objective factors to evaluate whether an article of industrial design possesses enough “creative character” and “artistic value” to be eligible for copyright protection. Such factors are aimed at ascertaining the widespread appreciation, by the public at large as well as by the cultural and artistic institutional sector, of an article of industrial design. By applying these factors, the Court of Milan concluded that “Arco” was copyrightable because the lamp (i) obtained several awards, (ii) was included for over ten years in a collection of the New York Museum of Arts and Design (“MOMA”), (iii) had the ability to represent the trends of post-war Italian industrial designs, (iv) and enjoyed widespread appreciation from critics as well as from the public, as demonstrated by consumers’ willingness to pay more money to buy “Arco” than to purchase other lamps available on the market.
Once an article of industrial design has passed the test for copyrightability, its status is “elevated” from that of a design product — which is subject to the Italian law on design and the 5 up to 25-year protection it grants — to that of a copyrightable “work of art”. The protection granted by the latter is broader, lasting for the lifetime of the author plus 70 years.
In this way, Italian legislators wanted to confine the more favorable copyright protection to the few articles of industrial design which, having intrinsic “artistic value”, are capable of embodying the artistic trend of a particular era of design.
The U.S. legal system
In the U.S., copyright protection is available for original works7 fixed in any tangible medium of expression,8 including design of “useful articles,” which are defined as articles “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”9
However, like in the E.U., under U.S. law the design of useful articles must pass an additional test to be eligible for copyright protection. Indeed, under 17 U.S.C.S. § 101, useful articles are not copyrightable unless they have some non-useful element that physically and/or conceptually “can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article.”10 This is the so-called “separability test” (which is absent in Italy). In this case, only the “non-useful element” is copyrightable, not the entire article.11
The Supreme Court adopted the separability test in the landmark case Mazer v. Stein,12 which involved the validity of copyrights obtained for statuettes of male and female dancing figures, intended for use, and used, as bases for table lamps.13
In particular, in Mazer, the Supreme Court was asked to analyze whether objects that are “works of art” can be copyrighted when incorporated into mass-produced utilitarian articles. In its decision, the Supreme Court clarified that a work of art does not cease to be copyrightable when it is embodied in a useful article, and stated that the lamp-base sculptures at issue were copyrightable because they exhibited sufficient originality and because such sculptures were “separable” from the lamp in which they were embodied.
Further decisions issued in the context of lamp design maintained the principles set forth in Mazer. In Aqua Creations USA Inc. V. Hilton Hotels Corp,14 for instance, the Court stated that copyright protection cannot be granted when no facts demonstrate that lighting designs, which constitute useful articles under 17 U.S.C.S. § 101, contain creative elements that are physically or conceptually separable from the fixtures’ utilitarian aspects. In another case, in which one party contended that an outdoor torch was eligible for copyright protection under 17 U.S.C.S. § 102(a)(5) as a “sculptural work”, the Court stated that such torch was not copyrightable because it was a plain and wholly functional device, without any separable and copyrightable artistic elements.15
However, while in Mazer the lamp-base sculptures were easily physically and conceptually separable from the utilitarian objects into which they were incorporated, in other cases the separability test is quite difficult to apply. What if, for instance, there are no elements that, physically or conceptually, are separable from the article, and what if the overall shape of the useful object has to be considered for copyright protection?
In Esquire, Inc. v. Ringer,16 — a case related to the copyrightability of the overall shape of lighting fixtures of contemporary design — the Court stated that the overall shape of an utilitarian object, even if informed by aesthetic as well as functional considerations, is not eligible for copyright protection.17 In another case,18 the Court clarified that “one may not copyright the general shape of a lamp, because its overall shape contributes to its ability to illuminate the reaches of a room.”
Therefore, it seems that in the U.S., even if the appearance of an article is determined by aesthetic (as opposed to functional) considerations, only the elements which can be identified separately from the useful article, if any, are copyrightable.
Overall, the previous analysis shows that the threshold for the grant of copyright protection to industrial design is quite high both in Italy (and by extension, the E.U.) and in the U.S.
Indeed, in Italy copyright protection is available only for the few industrial designs that, with time, have been recognized as “icons” of an artistic era, whereas in the U.S. the “separability test” bars the copyrightability of almost all industrial designs with configurations that make it impossible to detach – physically or conceptually – a particular element from the object on which it appears.
In my view, the law should be more flexible when it comes to establishing the copyrightability of industrial design.
This is especially true when one considers that the notion of “art” tends to be subjective, and that the line between “works of art” and “useful articles” is becoming more and more fuzzy. Nowadays, several articles of industrial design are, indeed, comparable to works of art, both in terms of the aesthetic appeal of their forms, and the originality of their designs. At the same time, a number of notable artists have created, and are creating, works of art that reproduce the features of mass-produced products. Just think of Marcel Duchamp, who displayed everyday products — such as a porcelain urinal,19 a bicycle wheel,20 or a snow shovel21— and declared them “works of art” to challenge the traditional definition of “art;”22 or Andy Warhol, who carried several consumer-products into the realm of painting and sculpture — for instance the famous cans of Campbell’s soup23 and the “Brillo Box”24 — to try to answer the perennial question of what “art” is.
At this point, what is the difference between, for instance, an original and creatively designed lamp, and a sculpture that reproduces the design of the same lamp but does not illuminate spaces and, thus, is not deemed “useful”? To the extent that they are both creative, original, and the result of the intellectual and manual efforts of their artist, do they really deserve different treatment when it comes to their legal protection?
Copyright protection in Italy is automatic and starts upon creation of the work. The duration of the protection is different for moral and economic rights. Indeed, the protection of moral rights is perpetual, whereas the protection of economic rights lasts for the lifetime of the author plus 70 years.↩
Article 2 n.10 of the Italian Copyright Law provides that only “works of industrial design that have per se creative character and artistic value” are protected by copyright law.↩
Court of Turin, December 17, 2004.↩
Court of Milan, injunction of December 29, 2006.↩
Regarding the “originality” requirement in the context of lamp design, in Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F. 3d 1140 (9th Cir. 2003), the Court denied copyright protection to Victorian Tiffany table lamps because the lamps at issue lacked the modicum of originality required for them to gain copyright protection. Such lamps were indeed considered “just a mechanical combination of four preexisting ceiling lamp elements with a preexisting table lamp base.”↩
Copyright Act, 17 U.S.C. § 102.↩
Copyright Act, 17 U.S.C. § 101.↩
Copyright Act, 17 U.S.C. § 101.↩
Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707 (1983).↩
Mazer v. Stein, 347 U.S. 201 (1954).↩
Aqua Creations USA Inc. v. Hilton Hotels Corp 10 Civ. 246, 2011 U.S. Dist. LEXIS 31982, at 12–21 (S.D.N.Y. Mar. 28, 2011).↩
Smith & Hawken, Ltd. V. Gardendance, Inc., No. C 04-1664 SBA, 2005 U.S. Dist. LEXIS 21465, at 9 (N.D. Cal. 2005).↩
Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978). ↩
The Esquire rationale has successively been used to deny copyright protection to the overall shapes of numerous articles, including hubcaps, mechanical games, and toy airplanes.↩
Ochre LLC v. Rockwell Architecture, 530 F. App’x 19, 2013 Copyright L. Dec. 30, 458 (2d Cir. 2013).↩
Barbara Bloemink, On the Relationship of Art and Design, in Design ≠ Art, ed. Barbara Bloemink and Joseph Cunningham (2004).↩