What’s the difference between the manifestation of an idea and the creative expression of the idea?  About 80 years of legal protection, according to Home Legend LLC, a recent petitioner to the Supreme Court.  Home Legend filed for certiorari on July 24, seeking review of an Eleventh Circuit decision that granted copyright protection to Mannington Mills Inc.’s “Glazed Maple” design, which is printed on laminate and meant to simulate a time-worn wooden floor.  Mannington created this design by collecting maple boards, distressing and staining them to add an aged appearance, selecting and scanning the most aesthetically appropriate planks, and then digitally combining and manipulating those elements in order to produce laminate flooring that has the appearance of aged wood.  The Eleventh Circuit found that the Glazed Maple design was the creative expression of the idea of a time-worn wooden floor, because designers displayed at least “a modicum of creativity” in imagining what a deeply stained maple floor might look like after years of wear, and then altering planks and scans to embody that idea.

This is a new slant on old questions about the distinction between naturally-occurring and IP-protectable inventions.  In recent SCOTUS cases on utility patents, like Mayo (2012) and Alice (2014), this distinction lies in court-created exclusions of laws of nature and natural phenomenon from the section 101 subject matter requirement.  Now, in its questions presented, Home Legend focuses on the relationship between nature’s work product and the copyright section 101 originality requirement.

The questions presented are:

1. Whether the overall configuration of an industrial design based on a work produced by nature, animals or plants, such as natural wood with intact natural wood grain, and accurately replicating the work of nature is unauthored, lacks originality, and thus not protected under the Copyright Act.

2. Whether the appearance of an industrial design based on a work produced by nature, animals or plants, such as natural wood with intact natural wood grain applied to an industrially-manufactured artificial, non-wood flooring product in a manner that accurately replicates the natural product is a work of industrial design, functional and thus is neither separable.

While Home Legend implicitly argues that Mannington Mills should have applied for a design patent, rather than registering a copyright, and explicitly notes that design patents “are subject to stringent novelty and unobviousness requirements.”

Incidentally, I recently researched the issue of whether industrial designs meant to simulate natural products could receive a design patent.  Here’s the argument that they shouldn’t: 35 U.S.C. § 171 sets out novelty, originality, and ornamental requirements for claimed designs.  Setting out to imitate naturally-occuring material is not particularly original.  According to the USPTO, a design that “simulates a well-known or naturally occurring object or person is not original.” Likewise, case law established that “courts do not, as a rule, find invention in the discovery of one of nature’s fundamental designs or forms and do not favor monopolies in such designs.” Mavco, Inc. v. Hampden Sales Ass’n, 273 A.D. 297, 303 (App. Div. 1948).   And making a wood pattern on laminate is not that original, either.  “Ordinarily, the taking of a design from one substance and using it upon another is not an invention and plaintiff, even if the first user of faceting in plastics, could obtain no monopoly in respect thereto.” Id.

There’s some wiggle room.  Designs that go beyond “a mere imitation or simulation” of naturally-occurring forms—say, a motorcycle grip design that features the torso of a woman without arms or nipples, Durdin v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921, 935 (W.D. Wis. 2006), as opposed to an ordinary, unstylized child in the form of a doll, In re Smith, 77 F.2d 514, 514 (Cust. & Pat. App. 1935)—are original. As in the Eleventh Circuit decision above, courts may find that a design that imitates naturally occuring wood grain is original because the position or inclusion of certain naturally occurring patterns (whorls, variations in color, etc.) involves the exercise of creativity that goes beyond “mere imitation or simulation.”

And numerous designs meet these so-called “stringent” requirements.  Here are four: Noppe wood grain pattern was issued in 2010; Preuβer patent for a panel with wood grain pattern issued in 2013;; panel with faux marble pattern issued in 2014; faux stone ceiling tile design patent issued in 2014.

The Noppe and Preuβer patents demonstrate the weakness of the obviousness requirement. A design is obvious and lacks invention if an average person (“ordinary observer”) would not be able to detect a difference in the two designs (“same general impression of overall appearances”), and if a phosita could make such a design by rearranging elements already disclosed in the prior art.  Wood Conversion Co. v. Armstrong Cork Co., 277 F. Supp. 378, 380 (D. Minn. 1967).  I’m an ordinary observer.  Comparing the designs, I see that one is darker than the other.  (Color, alone, is not a sufficient basis for patentability of a design. Application of Iknayan, 274 F.2d 943 (1960).)  The Preβer certainly looks like the Noppe, maybe to the extent that it is the same elements prearranged.  However, according to the USPTO, which didn’t even look at the Noppe as prior art, the Preuber is fine.

Even if the recent Apple v. Samsung decision doesn’t lead to a surge in design patent filings, and even though the Supreme Court (who won’t grant cert, anyway) won’t reach the issue of the Maple Glaze design’s patentability, it’s important to recognize that the man-made/ naturally occurring distinction remains tenuous, but may be the easiest to circumvent in design patents, the neglected step-child of the USPTO.

Lauren C. Ostberg

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