Design Ideas, Ltd. v. Yankee Candle Co.
889 F. Supp. 2d 1119
C.D. Ill.2012Background
- Plaintiff Design Ideas, Ltd. alleges Yankee Candle copied its Regatta tea-light sculpture designs.
- Regatta designs were created by Christopher Hardy, who describes them as abstract sailboats intended as decorative, not as literal reproductions.
- Copyright Office refused registration for the white translucent Regatta design as a “useful article” lacking separable, copyrightable features; dual-sails designs were also deemed non-copyrightable.
- Plaintiff later obtained a registration for the 2006 Spring catalog works ('637) and sought supplementary registration; the Office declined to extend to the dual-color sails.
- Court granted Defendant’s Second Motion for Summary Judgment, concluding Regatta sculptures are useful items not sufficiently original to be copyrightable; case terminated.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Regatta is copyrightable. | Regatta is original and creative. | Regatta is a useful article with non-separable features; not copyrightable. | Regatta not copyrightable; summary judgment for Yankee Candle. |
| Whether the court should defer to Copyright Office determinations. | Office determinations are not persuasive or properly reasoned. | Office determinations deserve deference under applicable law. | Court defers to Copyright Office determinations; supports non-copyrightability. |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (1991) (originality requirement is minimal; must be creative)
- Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (conceptual separability of useful articles)
- Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004) (lines between protectible design and utilitarian elements)
- Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003) (originality in design elements must be present)
- Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004) (copyrightability as a legal determination)
- Boyds Collection, Ltd. v. Bearington Collection, Inc., 360 F. Supp. 2d 655 (M.D. Pa. 2005) (deference to Copyright Office opinions in registration context)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (copyright registration prerequisite and scope of review)