“Selling New York” is a television show on HGTV featuring real estate brokers in New York City.  On an episode of that show called “The Big Buy In” a real estate company (Core Group) decided that they were having trouble selling a Park Avenue apartment because it was unfurnished.  To correct for this problem, the company digitally rendered furniture into the apartment, and then showed those digital print outs to potential buyers.  The furniture used in the digital screenings was a line of furniture created by a furniture company called Heptagon.  Heptagon had initially negotiated for Core Group to use the furniture on the HGTV show, but negotiations had ended with Heptagon not supplying the furniture to Core.

After seeing its digital furniture appear on the HGTV show, Heptagon sued Core as well as a design firm that worked with Core, claiming copyright infringement, trade dress infringement, and unfair competition.  In December of 2011, the District Court dismissed all claims.  First, the District Court found that, because the design elements of the furniture were not physically or conceptually separable from the functional aspects of the furniture the items were useful articles and were unprotected by copyright.  Second, the District Court found that, since the designs were functional and had not acquired secondary meaning, the trade dress was not infringed, nor had Heptagon sufficiently alleged a likelihood of confusion.  Thus, Heptagon’s complaint was entirely dismissed.

Heptagon appealed on the dismissal of the copyright claim.  On January 11, 2013, the Second Circuit affirmed the District Court’s opinion.  The court noted that Heptagon had twice attempted to register the furniture designs with the Copyright Office and been denied based on the utilitarian nature of the furniture.  For instance, the court noted that “though aesthetic considerations likely influenced the choice of wood in the Cocoon Chair, that choice was also dictated by the functional concern that a person sitting in the chair have a surface on which to rest his arms.”  If a feature has both aesthetic and functional elements, it is not conceptually separable and so, not eligible for copyright protection.

This decision demonstrates that courts are reluctant to find an element of furniture to be merely aesthetic.  This likely applies to other items that have both functional and aesthetic motivations.  The Hollywood Reporter suggests that this opinion will affect costume, car, and TV set designs.  It is thus unlikely that any sleek, utilitarian designs would be eligible for copyright protection based on their shape alone.  The court acknowledges that “fanciful designs” might be protectable but then notes that things like a wood grain pattern on a table are also related to giving the table the functional aspect of a flat table surface.  Thus, a fanciful element must play no part in how the article is constructed or how it ultimately works.  In more difficult cases, it seems that the court is most likely prepared to err on the side of finding that designs constitute functional elements.  Furniture and similar articles can exist in a fuzzy grey area where design patents, trade dress, and copyright could potentially apply, and it is important to determine what the correct protection could be.

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