In most cases, if you exert creative effort to craft a piece of art without copying the work of another, and that art is embodied in a physical form, it is likely subject to copyright protection.
The rules can get murky, however, if your artwork is contained within a “useful article.” Under U.S. copyright law, only the artistic elements of a piece may be copyrightable. Any utilitarian elements of the artwork are not eligible for copyright protection.
A recent lawsuit against a botanical garden in Florida is a good example of the difficulty of copyrighting certain mediums of artwork under this legal loophole.
U.K. Light Artist Bruno Munro Sues Florida Botanical Garden Over Unauthorized Replicas of Light Sculptures
World-renowned U.K. artist Bruce Munro recently launched a copyright infringement lawsuit against the Fairchild Tropical Botanic Gardens in Florida. According to Munro, the Miami business imitated his light sculptures for The NightGarden, a holiday event that ran from November 15 to January 11.
Munro filed the lawsuit in the US District Court for the Southern District of Florida, Miami division in January of this year. The lawsuit accuses Fairchild of importing and displaying knockoff imitations of his light sculptures from Chinese company Zhongshan G-Lights Lighting Co., Ltd. (“G-Lights”).
G-Lights, also named as a defendant in the suit, is accused of “blatant and intentional copying, exploitation, and infringement” of many of Munro’s light sculptures. According to the lawsuit, G-Light even advertises the lighting products as being “Munro style.”
The lawsuit also asserts that the Fairchild Tropical Botanical Garden “participated in, directed, and approved” public displays of these unauthorized replicas in their NightGarden. Munro’s legal team argues that the NightGarden display bears significant similarities to the artist’s own exhibitions in Pennsylvania and other locations in the United States and United Kingdom.
Munro has obtained one U.S. copyright registration for his work Forest of Lights. For the rest of the works that are the subject of this case, he is claiming copyright protection under the Berne Convention.
What Is the Berne Convention?
The Berne Convention for the Protection of Literary and Artistic Works of 1886 as revised requires its member countries to:
- recognize the copyright of works of authors from other member countries in the same way they recognize the copyrights of their own nationals and
- provide strong minimum copyright protections.
Munro has argued in his Complaint that copyright protection under the Berne Convention is automatic, and no registration requirements may be imposed on Works from a different member country. The U.K. also does not require formal registrations to obtain copyright protection.
The Counterargument: Light Fixtures Are “Useful”
Fairchild, however, has argued that it is not guilty of copyright infringement because light sculptures are not copyrightable. Fairchild asserts that light fixtures are simply “useful” or utilitarian articles without any original and creative design elements, so they are ineligible for copyright protection under U.S. law.
To support his case, Munro has pointed to a separate, previous lawsuit (Munro v. Lucy Activewear, Inc, 899 F.3d 585, 591 [8th Cir. 2018]), in which the Eight Circuit Court of Appeals had ruled that “Munro’s light-based artwork and installations are sculptures and, as such are copyrightable.”
To refute this point, Fairchild holds that the court never determined whether Munro’s light sculptures were actually eligible for copyright protection under U.S. law. Rather, the court simply found that because Munro claimed his works were sculptures, they were potentially eligible to be copyrighted.
Under U.S. copyright law, if you design a light sculpture, the base of the sculpture may be copyrighted. But the utilitarian elements of the lamp cannot.
It will be interesting to see how the U.S. District Court interprets the nuances of copyright law in relation to the Berne Convention and the utilitarian arguments as they pertain to Munro’s case. A Motion to Dismiss was argued before the court in early April 2020, and the parties are still waiting for a decision.
If you are uncertain about a copyright issue, reach out to Marks Gray IP attorney Crystal Broughan for assistance. Together, we can work to protect your original work.