4th Circuit decision on furniture design knockoffs as both copyright infringement and reverse passing off under the Lanham Act

In an interesting case that I missed (because it issued the day after I had shoulder surgery), the 4th Circuit discussed copyright and Lanham Act claims directed at knock-off furniture designs. In Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., No. 07-2180 (4th Cir. Aug. 20, 2010), the plaintiff designed two furniture line busily adorned by many types of decorative designs derived from historical public sources.

The Fourth Circuit first held that in selecting, adapting, and arranging historical design elements from the public domain, the creator of the furniture displayed enough expressive originality to obtain copyrights on the designs.

The Court then dealt with the “more vexing” question of whether the decorative designs carved into the furniture were “conceptually separable” from the utilitarian aspects of the furniture design, because without this separability, otherwise copyrightable material incorporated into a useful article are not eligible for copyright protection. After discussing cases holding that mannequins of human torsos are not copyrightable but highly ornamental designs on belt buckles are, the Fourth Circuit decided that the decorative elements of the furniture at issue were more like the belt buckle and thus were copyrightable.

The Court then went on to (mis)construe the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), holding that the defendant’s knock offs amounted to “reverse passing off” under the Lanham Act. In a really small nutshell, Dastar held that the word “origin” in the Lanham Act required the limiting of reverse passing off claims to instances where the accused product actually originated with the plaintiff (like taking Coke and putting it in Pepsi bottles). The 4th Circuit construed some language in Dastar about how licensors can also be a source of “origin” too broadly, however, and held that a knockoff product not made by the plaintiff, but by the defendant, “originated” with the plaintiff. To me, this pretty much re-expands the tummy tuck the Supreme Court gave reverse passing off claims in Dastar, but that’s just my opinion. Your mileage may vary.