Jonathan Browning, Inc. v. Venetian Casino Resort LLC, 2009 WL 1764652 (N.D. Cal. 2009)

There was an interesting decision last week in the Northern District of California over the question of whether a work warrants copyright protection is of one of law, appropriate for a judge, or fact, appropriate for a jury. The Plaintiff brought suit for among other things infringement of its copyrights in two lighting fixtures. The Defendant challenged whether the works merited protection. An examiner at the Copyright Office had rejected registration of the fixtures finding that they were “‘useful articles’ which do not contain any separable features that are copyrightable.” Post rejection, the Plaintiff submitted hand drawings of the light fixtures to the Copyright Office that were registered.

At issue on this motion was a request by the Plaintiff to strike an expert report and to preclude the Defendants from offering the expert’s testimony in opposition to Plaintiff’s motion for summary judgment or at trial. The Plaintiff objected to the testimony on the grounds that the expert was set to speak about a pure issue of law, whether a work merits copyright protection. As a pure question of law, the Plaintiff argued, the issue must be reserved for the judge to decide as a matter of law, sans expert testimony. (The Defendant, perhaps as a tactical decision, elected not to challenge the characterization of the issue as a question of law.)

The Court agreed that the question of whether a work is copyrightable is a question of law, citing Pivot Point International, Inc. v. Charlene Products, Inc., 932 F.Supp. 220, 225 (N.D.Ill.1996) (holding that there is no need for expert testimony on the subject of what constitutes copyrightable subject matter as the issue is determined by the judge, not the jury). The Court excluded the expert testimony in regards to the whether specific light fixtures at issue warranted copyright protection, but allowed the expert’s testimony on the general practices of the Copyright Office and history of design protection:

The subjects of Mr. Oman’s testimony, as represented in his report, are: (1) the practices and procedures of the Copyright Office; (2) the history of design protection in the United States; and (3) the decisions of the Copyright Office as to the light fixtures at issue here. To the extent Mr. Oman wishes to testify generally about the practices and procedures of the U.S. Copyright Office regarding the registration of useful articles, or the procedures for special handling requests, or the history of design protection in the United States, Mr. Oman is entitled to so testify. However, to the extent Mr. Oman is proffered to testify about the copyrightability of the specific light fixtures in this matter or the particular decision on those fixtures, that testimony does indeed pertain to an ultimate issue of law to be decided by the Court, and not by the jury.

Notes:

• Patry on Copyright takes the position that the question of whether a work is a useful article, that doesn’t contain independent features that merit copyright protection, is a question of fact that may be resolved by a jury with expert testimony. Citation to Poe v. Missing Persons, 745 F.2d 1238 (9th Cir. 1984); Kikker 5150 v. Kikker 5150 USA, LLC, 2004 WL 1837926 (N.D. Cal. 2004). Patry at 3:147.  More generally, the Treatise states that the “vast majority” of courts have held that “creativity is a question of fact.” Patry at 3:39.