Drawing A Line In The Floor—Courts Are Struggling With The Overlap Between Design Patent And Copyright

In 2003 the U.S. Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp. emphasized that "[t]he rights of a patentee or copyright holder are part of a 'carefully crafted bargain,' ... under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution." Meaning that because copyright and patent owners struck this bargain, courts need to guard against extending that protection through a different form of intellectual property. Otherwise the "monopoly" of patent and copyright owners would be extended, upsetting the bargain.

Although Dastar addressed the need to keep a clear demarcation between trademark rights (which can last forever) and copyrights, similar concerns require that a careful line be drawn between copyright protection (which generally lasts 95 years from "publication") for useful articles and design patents for similar subject matter (which last 15 years from the date granted). Except that, as we'll see below, the line separating the two becomes blurred from time to time.

Drawing that line between copyright and design patent protection was the subtext in a case involving copyrights related to flooring, Home Legend, LLC v. Mannington Mills, Inc., for which the Supreme Court denied certification on October 5, 2015. Home Legend, a flooring company, sought a declaratory judgment that its sale of laminate flooring designed to mimic the look of distressed wood did not infringe a competitor's registered copyright in a two-dimensional "décor Paper" design known as the "Glazed Maple Design." The copyright holder, Mannington Mills, countersued for copyright infringement. The district court granted summary judgment to Home Legend, arguing that the design lacked the originality necessary to be eligible for copyright protection and was not separable from the functional element of the flooring. But the 11th Circuit reversed, finding instead that the design was both physically and conceptually separable from the underlying functionality of Mannington Mills' laminate flooring product. Home Legend petitioned the Supreme Court for a writ of certiorari for it to take up the case. Although the focus of Home Legend's briefing was on the copyrightability of the design and the notion of separability with regard to copyrights for useful articles, it raised a broader concern. Home Legend asserted in a reply brief in support of its writ for certiorari that "[I]t is patent law...