By Greg Hammond, J.D.
A company that produced a USB flash drive prototype for the maker of The Sims computer game could proceed with a copyright infringement claim after the computer game maker had the flash drives produced by a company in China. In reversing a district court order granting summary judgment against the copyright infringement claim, the U.S. Court of Appeals in Pasadena held that there were genuine issues of material act as to: (1) whether the flash drive producer’s cut-away design for removing the flash drive from the "PlumbBob" object was sufficiently non-functional and non-trivial to warrant copyright protection; and (2) whether the flash drive producer was sufficiently in control of its artistic contribution to qualify as a joint author in the flash drive prototype (Direct Technologies, LLC v. Electronic Arts, Inc., September 6, 2016, Gould, R.).
Electronic Arts, Inc.—the maker of The Sims computer game—contracted with Direct Technologies, LLC, to produce a USB flash drive shaped like a "PlumbBob"—a gem-shaped icon from the game. Direct Technologies produced a prototype, which was approved by Electronic Arts, but Electronic Arts had the flash drive produced by a company in China for 50 cents cheaper per unit. Direct Technologies sued under the Copyright Act and the California Uniform Trade Secrets Act. The district court granted summary judgment in favor of Electronic Arts on both the copyright and trade secrets claims. Direct Technologies appealed.
Functionality. DT alleged that it made a non-functional contribution to the USB drive by designing the flash drive to fit into the PlumbBob with a "futuristic cut away look…at a unique angle." This was sufficient to raise a genuine issue of material fact regarding whether the manner in which Direct Technologies designed the USB flash drive stick to fit into the PlumbBob object was merely functional or utilitarian. The "cut away" manner in which the flash drive is to be removed is potentially non-functional, according to the court. The design could therefore potentially qualify for copyright protection.
Originality. The court next rejected Direct Technologies’ argument that its PlumbBob drive merits copyright protection because it has 12 rather than 20 sides, finding that the number of sides is not a copyrightable contribution in this case. Nevertheless, the court concluded that, if a jury determines that the manner in which Direct Technologies designed the USB drive to fit into the PlumbBob object is artistic and non-functional, there is a genuine issue of material fact as to whether Direct Technologies’ USB drive is sufficiently original to warrant copyright protection. That aesthetic feature, according to the court, is something recognizably the artist’s own, and a reasonable jury could determine that it meets the low standard for originality.
Joint authorship. The lower court had also adopted Electronic Arts’ argument that Direct Technologies was not a joint author as required by the Copyright Act. The appellate court concluded that a reasonable factfinder could find that Electronic Arts was merely in a position to offer suggestions, but did not ultimately give effect to the idea of how the USB flash drive fit into the PlumbBob object. A genuine issue of material fact therefore existed as to whether Direct Technologies was in control of its artistic contribution to qualify as a joint author in the resulting USB drive prototype. The motion for summary judgment was therefore reversed with regard to the copyright infringement claim.
California trade secrets claim. The appellate court affirmed summary judgment in favor of Electronic Arts on the trade secrets claim, but on alternate grounds. Electronic Arts argued that Direct Technologies’ design was not a trade secret because it had no "actual or even potential value to DT outside of a single ephemeral project for a single customer." The appellate court agreed, finding that Direct Technologies did not present any evidence that there was value in the secrecy of its design.
The case is Nos. 14-56266 and 14-56745.
Attorneys: John Tehranian (One LLP) for Direct Technologies, LLC. Robert N. Klieger (Hueston Hennigan LLP) for Electronic Arts, Inc.
Companies: Direct Technologies, LLC; Electronic Arts, Inc.
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