Putting The Screws To Infringement Claims: Third Circuit Finds No Copyright Protection For Product Numbers

Tuesday, February 1, 2005 - 01:00
Porzio, Bromberg & Newman, P.C.
Howard J. Schwartz
Michael J. Gilleece

Numbers that a company uses to identify and distinguish its products are not entitled to copyright protection. In Southco, Inc. v. Kanebridge Corp., 390 F.3d 276 (3d Cir. 2004), the United States Court of Appeals for the Third Circuit recently held en banc that serial numbers assigned by Appellant Southco, Inc. to parts that it manufactures were not protected under copyright law. Southco had developed a numbering system to help identify and distinguish among its products, which include screws, rivets, latches, handles, fasteners, and other parts. Southco's system uses a particular digit or group of digits to signify certain characteristics about the item, such as its function, size, composition, or texture. Customers who understand the Southco numbering system can: (1) determine from the product number the characteristics of the item; or (2) in reverse, from the specifications required, determine the number of the product with the desired characteristics. Southco lists the product numbers for its items in handbooks, which it publishes yearly. Southco retains copyright registrations for several of its handbooks.

Respondent Kanebridge, a master distributor for one of Southco's competitors (Matdan America), printed Southco's part numbers in comparison charts, which Kanebridge included in advertisements and customer literature. Those comparison charts displayed Kanebridge's and Southco's respective product numbers for equivalent products side by side, demonstrating that the parts were interchangeable. Southco sued Kanebridge, alleging infringement of copyrights in Southco's product numbers.

The Court Reasons That Part Numbers Contain No Protectible Expression

The majority held that the product numbers lacked the creativity necessary for copyright protection. Focusing on the product numbers themselves, the court found that each number was rigidly dictated by the rules of Southco's system. Once the system was created and in place, "all of the products in the class could be numbered without the slightest element of creativity." Southco , 390 F.3d at *16. The court emphasized that any creativity in assigning the numbers would defeat the inflexible rules of the system and prevent the intended product identification and association. In short, the part numbers represented "an inevitable sequence dictated by the logic of the parts system," which did not constitute protectible expression.

In so holding, the court rejected Southco's arguments that its creative numbering system was similar to the creative actions taken by a photographer prior to the mechanical snapping of a photograph, citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). Holding that the product numbers were purely functional, the court explained that the expression of a photographic portrait (like the portrait of Oscar Wilde at issue in Burrow-Giles ) conveys complex and indeterminate ideas, rather than merely objective characteristics of mundane products, such as the length of a screw.

The court also based its finding that Southco's product numbers could not be copyrighted on the Copyright Office's practices and regulations, which preclude the registration of "words and short phrases such as names, titles, and slogans; familiar symbols or designs." See Southco, 390 F.3d at *25 (quoting 37 C.F.R. § 202.1 (2004)).

The Dissent Provides A Broader ViewOf "Expression"

The dissent challenged the majority's limited view of what constitutes "expression" in Southco's numbering system. In her dissenting opinion, Judge Roth (joined by Judge Chertoff) criticized the majority as taking too literal an approach in its extension of the "idea" all the way to the point in the creation of the code where the number had become inevitable. In so doing, the dissent argued, the majority viewed far too much of the numbering system as the "idea" rather than the expression of the idea. Under a broader focus, Southco's numbering rules and resulting numbers could be seen as one of many possible expressions of the idea of using a code to convey product specifications. Moreover, the dissent discussed various potential code options, noting both: (1) alternatives to the use of numbers (i.e., letters, symbols, and combinations of letters, symbols, and numbers); and (2) variations in the length of the numbers used (i.e., use of more digits, use of less digits, and the use of an interrupted series of digits). These options in expressing the code reflect the freedoms available in choosing designations and, thus, the creativity involved in making such choices. Although "relatively mundane choices," the dissent asserted that such choices satisfy the extremely low threshold of creativity required for copyright protection.

Could Any Product Designation Ever Be Protected By Copyright?

Whether copyright protection could extend to a particular product designation will be dictated by the nature of the designation. Depending upon the level of originality and creativity used by a company in its method of selecting the designations that it uses to categorize or catalog its products, copyright protection might be available to such designations despite the majority's holding in Southco. If the nature and characteristics of the chosen designation suggest a greater degree of originality than mere numbers or the like (i.e., the use of unique symbols, pictures, or other icons), a court might be more likely to view the selection of the designation as part of the expression, rather than as part of the idea itself. As creative expression, the designation could be entitled to limited copyright protection.1

1 As noted by the majority in Southco, the fair use defense would presumably protect certain uses of such designations by other parties. See 390 F.3d at *27.

Howard J. Schwartz is a Principal and Michael J. Gilleece is an Associate in the Morristown, New Jersey office of Porzio, Bromberg & Newman, P.C.

Please email the authors at hjschwartz@pbnlaw.com or mjgilleece@pbnlaw.com with questions about this article.