Pennsylvania Federal Court Dismisses Sports-Memorabilia Designer’s Copyright Claim Arising From Allegedly Stolen Hockey Sculpture Design
By: Carl L. Engel
On January 10, 2023, the U.S. District Court for the Eastern District of Pennsylvania, in the case Grondin v. Fanatics, Inc., dismissed claims of copyright infringement brought by a sports-memorabilia designer against a rival company, Fanatics, Inc. The plaintiff had alleged that Fanatics had stolen the design of his “Slice of the Ice” commemorative sculptures when it created a line of commemorative crystal hockey pucks, because both products feature a clear hockey puck filled with melted ice from the rink where a prominent game was played. The court dismissed his claims, however, because (i) the hockey-puck shape of the works is integral to hockey memorabilia in general, and cannot be monopolized by one person, and (ii) the transparency and hollowness of the puck were necessary for displaying melted ice, which is an idea that cannot be subject to copyright. In other words, sculptural features that are “inherent” in the underlying idea, or are “utilitarian” in purpose, are not subject to copyright protection. The decision provides valuable guidance for producers of promotional items and memorabilia as to whether similar products from competitors are infringing on their copyrights.
William Grondin creates and sells collectible hockey memorabilia. In 1998, he secured a copyright registration for a creation he called “Slice of the Ice.” A “Slice of the Ice” is a Lucite sculpture in the shape of the Stanley Cup, with a transparent hockey-puck-shaped case in the center. The puck-shaped case is filled with melted ice gathered from the rink where a prominent hockey game was played. Last year, after learning that Fanatics had created a line of crystal hockey pucks filled with melted game-rink ice, he filed a lawsuit against it for infringing on his copyright. Fanatics moved to dismiss his complaint, arguing that “Slice of the Ice” was not subject to copyright protection.
On January 10, 2023, the court granted Fanatics’s motion, and dismissed Mr. Grondin’s complaint. The court first noted that the “Slice of the Ice,” taken in its entirety, was likely protected by copyright. In support of this finding, it reported that in 1985, the U.S. District Court for the Southern District of New York, in the case Arthur v. American Broadcasting Companies, had held that a sculpture of the Olympics rings with the letters “a,” “b,” and “c” was protected by copyright. Fanatics was not accused of copying the whole sculpture, however. Rather, the sole element from “Slice of the Ice” that allegedly had been copied by Fanatics was the clear puck-shaped vessel with a cavity full of melted rink ice. The court then noted that for Fanatics’s puck to have infringed on “Slice of the Ice,” the similarity between two works must be such that “an ordinary observer would perceive that Fanatics has copied protected elements of Mr. Grondin’s work.”
The court found, however, that not every similarity between two creations of the same idea can give rise to an inference of copying. Indeed, copyright protection extends only to “unique features that go beyond what is inherent in the underlying idea.” The court could not consider, therefore, the similarity of the hockey-puck shape used for both creations, because “[h]ockey pucks – their shape and dimensions – are inseparable from, indispensable, or even standard treatment of the sport of hockey.” The court reasoned that to allow Mr. Grondin to establish a similarity based on the shared use of the puck shape “would risk allowing him to effectively monopolize the underlying idea of hockey memorabilia.”
The court also declined to extend protection to the transparent-puck design element, because it was a “utilitarian” feature, which cannot be subject to copyright as a matter of law. Specifically, Mr. Grondin had argued that his puck-shaped creation was different from a standard NHL puck, because it was clear and hollow. The court found, however, that these qualities were necessary to realize the idea of displaying melted game ice inside, and ideas cannot be protected by copyright. In other words, to protect Mr. Grondin’s clear and hollow design would grant him a monopoly on displaying game ice in pucks, which is contrary to federal law. Because he, therefore, did not have any protectable interest in the clear puck-shaped vessel, the court dismissed his complaint.
The court’s decision provides valuable guidance to producers of promotional products and memorabilia. Indeed, it makes clear that features inherent in an idea, such as depicting a globe on an Earth Day coffee mug, are not protectable; nor are “utilitarian” features, like the handle on the mug. With this information, product designers can better decide whether a competitor has, in fact, stolen their designs, and whether litigation is an appropriate response.