A picture I didn't show in class

ConWest Resources, Inc. v. Playtime Novelties, 2006 WL 3346226 (N.D. Cal.)

Not a newly decided case, but we talked about it in my copyright class and I'm going to talk about it at the ABA IP meeting, so I figured I'd get my thoughts in order.

Plaintiff makes adult novelty items, including 12 sculptures of male genitalia, for which it was issued copyright registrations. After a licensing dispute, plaintiff sued defendant for copyright and trademark infringement based on its continued sale of the adult toys. This discussion considers only the validity of plaintiff’s copyright, not the first sale issues or plaintiff’s trademark claims, which the court also rejected.

Though the registrations were prima facie evidence of the validity of the copyrights, the court was skeptical of plaintiff’s likelihood of success. First, were the sculptures “useful articles”? Yes, because they had an intrinsic utilitarian function – they were designed to be used as sexual aids, as the advertising made clear when it touted them as dishwasher-safe and compatible with various types of lubricants. Like the mannequins in the influential Carol Barnhart case, these replicas of body parts are functional even though nonfunctional sculptures also exist.

Only features of useful articles that are separable from utilitarian functions can be copyrightable, and there are various confusing tests for separability. Plaintiff argued that there were conceptually separable features in these sculptures, which could “stimulate in the mind of the beholder an appreciation of the inherent beauty and power of male sexuality.” The sculptures’ price was well above the price of ordinary sex toys, and plaintiff argued that some collectors purchase them for display. Nonetheless, the court found that the sculptures were likely unprotectable – their design seemed inextricably intertwined with their utilitarian purpose. “[G]iven that the function is to arouse, design features that are intended to stimulate in the mind of the beholder the concept of sexuality are not truly independent from the utilitarian purpose of the object.”

This seems like the right result for the wrong reason. Causing “arousal” is no different than triggering any other emotional response, from pity to terror; evoking emotional responses is the classic function of expressive works. If the court believed that the sculptures stimulated the mind of the beholder, then conceptual separability was a possibility. Relatedly, if these sculptures weren’t copyrightable because they were so obviously sex toys, are there any sex toys that are copyrightable? The catalog of Good Vibrations contains many exotically configured devices that have sculptural elements, but are also clearly sex toys. Is this type of product simply excluded from the realm of copyrightability? That would seem like unjustifiable content discrimination.

I have more sympathy for defendants’ alternate argument that there is no copyrightable expression in the simple castings of the genitalia of actual men. As such, they portray facts, not expression, regardless of the skill that was required to copy them. The copyright examiner believed that the works contained some copyrightable sculptural authorship, and plaintiff alleged that its art department made “numerous artistic changes and refinements in both the size and the aesthetic look of the initial casts,” though defendants replied that the only differences were size and color, which are insufficient to establish originality. The court found unresolved factual questions and did not base its decision on this argument.