Dastar doesn't bar TM claim coupled with copyright claim

Glasscraft Door I, L.P. v. Seybro Door & Weathership Co., 2009 WL 3460372 (S.D. Tex.)

Glasscraft accused defendant Arlene of copyright infringement, Lanham Act violations, and related torts based on Arlene’s copying of Glasscraft’s wrought iron and beveled glass door designs. (Seybro settled but is still in the caption.) Glasscraft had 22 registered copyrights; though Arlene argued that the simple geometric designs weren’t original, the court found that the arrangements of simple shapes here were creative enough to sustain copyrights, and that there was both access and probative similarity sufficient to establish copying as a factual matter.

With respect to four of the designs, the court found that Arlene’s versions were identical or so similar that no jury could fail to find them substantially similar; for the others, substantial similarity was an issue for the jury. As for the four infringed designs, the court also found willful infringement because Arlene recklessly disregarded the possibility that it might be infringing. For example, Arlene filled orders from customers requesting doors using the names of Glasscraft’s designs. In one case, the order form noted that a picture of the door could be found on page 33 of the Glasscraft catalog, and a picture was attached with the copyrighted design circled. In another, the customer stated “this is a Glass Craft door that we need to match.”

Arlene argued that Dastar barred Glasscraft’s Lanham Act claims. Here, however, Glasscraft alleged trademark infringement; Dastar would bar claims premised on copying Glasscraft’s designs, but Glasscraft also alleged infringement of registered and common-law trademarks in the names of the designs, “wholly separate” from the copyright infringement claims.

Comment: Had copyright protection on the designs expired, presumably there would be a dispositive nominative fair use argument for copying the names of the designs. Though designs, like paintings, may be recognizable without their names—unlike, say, novels—the same logic that allows anyone reproducing a public domain work to identify what it is that they are selling would allow Arlene to use the design names, however arbitrary they might once have been. But, since Dastar doesn’t purport to eliminate trade dress protection, had the designs been non-copyrightable and in the public domain for want of originality or lack of conceptual separability, then both the designs and their names might be protectable by trademark.