The layout of personal planners is an “idea” and not an “expression”—and is thus not protected by copyright law according to the Tenth Circuit. Although EC Design’s personal planners (called the Erin Condren LifePlanner) were the subject of copyright registrations, the court held that the layout of the planners was not protected, so a competitor, Craft Smith, could freely copy it. Moreover, while there was evidence of significant sales by EC Design and intentional copying by Craft Smith, the court found that EC Design had no trade dress rights in the layout of its LifePlanners.

Background

EC Design has sold its popular personal organizer, the LifePlanner, since 2007. Each year, EC Design updated the LifePlanner with new calendars, different texts, and the latest artwork. But the LifePlanner always had the same three-section layout—introductory statements, color-coded monthly calendars, and lined pages for making notes. And EC Design secured a copyright registration for the Life Planner, registering the version at the center of this case—its “2016/2017 Vertical LifePlanner Compilation” (excluding the calendar section)—with the U.S. Copyright Office as “2-D artwork, compilation of introductory and section phrases, graphics.”

Craft Smith, a craft and hobby company, reached out to EC Design in 2015 to discuss a collaboration on personal planners, but the two companies failed to reach a deal. Craft Smith, however, continued its efforts to get into the business and approached Michaels Stores (its largest distributor at the time) about developing a planner that would be sold through Michaels. Moreover, that Craft Smith’s planner—which was ultimately called the Recollections Planner—would be similar to the LifePlanner in many ways was clear. When it approached Michaels Stores, Craft Smith said the planner would be “like . . . the current Erin Condren Life Planner,” and when it obtained cost estimates, it sent a LifePlanner sample to the manufacturer and obtained a quote “based on the LifePlanner’s ‘size,’ ‘quality of spiral,’ and ‘laminated type cover.’” Craft Smith even noted that the quote it got was “based on everything you see in the EC planner” (displayed below left), and it designed its Recollections Planner “with the same ‘pagination and sheet counts’ as the LifePlanner.” Michaels Stores started carrying Craft Smith’s Recollections Planner (below right) in late 2016 and early 2017.

Not surprisingly, after the Recollections Planner was introduced, EC Design contacted Craft Smith and Michaels Stores to say that their new planner infringed EC Design’s copyright. In response, however, Craft Smith and Michaels sued EC Design in federal court in Utah, seeking a declaratory judgment that they had not infringed either EC Design’s copyright or its trade- dress rights. After EC Design counterclaimed, both parties moved for summary judgment. The district court agreed with Craft Smith and Michaels on both of EC Design’s claims—copyright and trade dress—and granted summary judgment in their favor. EC Design then appealed to the Tenth Circuit, and that court affirmed the district court’s rulings.

Even where a work is copyrighted, not all of its elements are protected.

To prevail on its copyright infringement claim, EC Design had to prove two elements: (1) it owned a valid copyright in the work, and (2) Craft Smith and Michaels copied “constituent elements” of the work that were original. The first of these elements was not contested. A valid copyright exists as long as there is “a valid copyright in the allegedly infringed compilation work as a whole.” And on this issue, the court noted that Craft Smith and Michaels “agree[d] that EC Design possesse[d] a valid compilation copyright in the LifePlanner.”

Regarding the second element for copyright infringement, the court said that what it had to determine was “(1) which elements of the copyrighted work are protectable, and (2) whether these elements are substantially similar to the accused work.” Here, though, while everyone agreed that the text and graphics in the LifePlanner were protectable, they were not what had been copied (in fact, Craft Smith and Michael’s had made sure that the quotes and artwork in the Recollections Planner were different from those in the LifePlanner). Instead, it was the “format” of the LifePlanner that was copied—and the court found that the format was not protectable. As the court said, “Copyright law does not protect how EC Design has laid out its LifePlanner, which is an idea, not expression.” As a result, the court found, no reasonable juror could conclude that the Recollections Planner was substantially similar to any element of the LifePlanner products that was protected by copyright law. Accordingly, it affirmed the grant of summary judgment in favor of Craft Smith and Michaels on the copyright claim.

To be protectable, consumers must associate a product’s trade dress with its source or brand, not some feature of the product.

In deciding whether summary judgment had been properly granted against EC Design on its trade dress claim, the question boiled down to whether EC Design could establish that its LifePlanner had acquired “secondary meaning.” Under its prior cases, the Tenth Circuit said, “secondary meaning” exists when the primary significance of the trade dress to consumers is not to indicate something about the product itself, such as one of its features, but to identify the product’s “source” or “brand”—that is, who made or sold it. To support its claim, the trade dress owner can submit direct evidence (such as consumer surveys or testimony) and/or circumstantial evidence.

Here, EC Design submitted only the latter, which the court found failed to establish that the LifePlanner had acquired secondary meaning. The court held, specifically, that while EC Design had submitted evidence both of significant sales of the LifePlanner products and of intentional copying by Craft Smith, that evidence did not create a jury issue on secondary meaning. In reaching that conclusion, the court recognized that in a prior case involving packaging trade dress (its 2002 decision in Sally Beauty Company v. Beautyco Inc., 304 F.3d 964 (10th Cir. 2002)), it had found that similar evidence made secondary meaning a jury issue, but it found the two cases fundamentally different. As the court explained, trade dress protection exists to prevent deception, and “the ‘very purpose’ of distinctive product packaging is to identify the source.” So when packaging is copied, the defendant takes something consumers use as a “source identifier.” But when the trade dress relates to a product’s design, the court found, “these considerations do not hold.” Instead, the court said, “unlike a product’s packaging, a product’s design often goes directly to its function.” Thus, where what is copied relates to the design of a product, rather than its packaging, the copying may have been done “for any number of reasons unrelated to deception.”

The court also rejected EC Design’s remaining circumstantial evidence as creating a genuine issue of material fact regarding secondary meaning. The court found, for example, that EC Design had not used the allegedly protected layout for long enough to allow that to factor into the analysis. On the contrary, it said, EC Design had used the design allegedly infringed by the Recollections Planner only “for a little over a year.” Moreover, the court said, EC Design had “routinely altered” the colors and layout of the LifePlanner “significantly” over the years. EC Design also never had exclusive use of the layout used in LifePlanner, the court found. Rather, its other competitors already used similar layouts, with no objection from EC Design. Further, while the court recognized that EC Design featured elements of its trade dress in various advertisements, the court rejected the idea that these ads showed secondary meaning. On the contrary, the court said, EC Design’s advertising “directly undercut” its position, “because it most often served to highlight design features, not to draw a connection in consumers’ minds between the trade dress and its source.” Finally, the court rejected EC Design’s contention that third-party reviews describing the Recollections Planner as a “knockoff” of the LifePlanner was evidence of secondary meaning. As the court said, EC Design did not even explain how the Recollections Planner being a knockoff showed “that consumers view the LifePlanner’s trade dress as a source identifier,”

The Tenth Circuit thus affirmed the district court’s decision, clearing the way for the continued sale of Craft Smith’s Recollections Planner in Michaels Stores free from any copyright or trade dress claims.

This case is Craft Smith, LLC v. EC Design, LLC, 969 F.3d 1092 (10th Cir. 2020).