Plaintiff Jetmax asserts copyright in ‘an ornamental light set comprised of a series of molded, decorative tear shaped covered lights with a wire frame over the covers.”

plaintiff's tear drop light set

Defendant Advance, “produced the allegedly infringing product., which ‘has a teardrop shaped plastic cover with eight sets of double grooves, as well as a decorative wire frame containing eight pieces of wire and the come together (sic) in a question mark form.” The cover does not have an iridescent finish.

advance light set

Cross-motions for SJ. Defendant raised issues as to Jetmax’ ownership of copyright. Also, it argued that the light set is not copyrightable because it is a useful article and because it lacks originality. The parties filed supplemental briefs after the SCOTUS issued its decision in Star Athletica v Varsity, 137 S. Ct. 1002 (2017).

Part One: Does Plaintiff Jetmax Own The Copyright?

In its copyright registration application, plaintiff Jetmax identified itself as the author.

In its complaint, Jetmax alleged that the Work was designed “by an employee of [plaintiff] in the scope of their employment as work for hire.”

In discovery, Jetmax disclosed that the designer was in fact paid by an intermediary company (“Intermediary”), because “under Chinese law, only Chinese entities are allowed to have employees in mainland China.”

We don’t know from the facts of the decision, the nature of ownership and control, if any, between Jetmax and Intermediary.

Under the Copyright Act, ‘employer’ and ‘author’ are not defined terms. Under case law, a Work is made at an employer’s ‘instance and expense’ – an employer induces creation and has the right to direct and supervise.

Here – at summary judgment, court notes that plaintiff’s discovery deposition ‘suggests that the design employees in mainland China were paid and employed by’ the Intermediary (as an aside plaintiff seems to have hurt itself (1) by not identifying the Intermediary in its initial disclosures and (2) because it ‘failed to sufficiently produce responsive documents concerning the Intermediary’).

For purposes of summary judgment, there were sufficient triable issues relating to the facts regarding plaintiff’s ownership, to deny summary judgment to plaintiff.

Quick Practice Pointers:

1. If a client said to you that the work was created by ‘its’ employee, now you know to dig deeper on that.

2. You can’t retroactively create a work made for hire, and not everything is eligible for the ‘independent contractor’ prong of the work made for hire provisions (industrial design products aren’t, for example). This is one more reason why agreements (such as those between an intermediary and an employer) should contain, in addition to clauses seeking to create a work made for hire relationship, back-up clauses that assign any and all rights, as well.

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