Park City— The United States Court of Appeals for the Tenth Circuit has ruled in favor of Maschoff Brennan clients Craft Smith, LLC and Michaels Stores, Inc. against the claims of EC Design, LLC that the two companies infringed trade dress rights and compilation copyrights allegedly associated with the Erin Condren LifePlanner personal organizer product. In its 37-page opinion in Craft Smith, LLC v. EC Design, LLC (19-4087), a three-judge panel unanimously affirmed the district court’s entry of summary judgment against EC Design, saying EC Design cannot use copyright law to stop competitors from selling products with a similar layout and format, so long as those competitors avoid the specific art and quotations used by EC Design.
“Copyright law does not protect how EC Design has laid out its LifePlanner, which is an idea, not expression. EC Design’s original idea of arranging a colorful organizer full of quotations and art is not protectable by copyright. Instead, copyright protects the selection, coordination, and arrangement of the specific text and artwork found in the LifePlanner compilation. Thus, when [the accused product] used entirely different artwork and text, even if arranged similarly, it did not copy the LifePlanner’s protected expression.” (Opinion at 20, citations omitted.)
The court also found EC Design cannot use trade dress law to exclude competition in the personal organizer space because the evidence presented failed to show that the product design of the LifePlanner serves primarily a source-identifying function: “For example, by choosing a similar calendar layout or size for their planner, [Craft Smith and Michaels] likely did so to take advantage of an already popular layout and size. But this relates to the product’s functionality, rather than its source. Further, [the accused product] used different cover art and cover types, and did not use anything like the registered trademark symbols employed on the cover of all EC Design LifePlanners.” (Opinion at 31.)
The opinion concluded with: “We recognize that this decision may make it more difficult to obtain trade-dress protection for a product’s design. But this reflects the reality that trade-dress protection is an awkward fit for product design.” (Opinion at 36 n. 27.)
The opinion makes a special effort to clarify Tenth Circuit law regarding copyrights in the compilation context, as well and trade dress rights in the product design context. It will likely be cited often by litigants and courts within the Circuit.
Craft Smith and Michaels were represented by Maschoff Brennan attorneys R. Parrish Freeman, Charles J. Veverka, and Daniel R. Barber.