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Thursday, April 14, 2016 12:09 am

Clone wars

County board chairman’s company sues Meijer, others for copyright violation

Design Ideas’ original “Sparrow Clips,” as they appear in the company’s advertising material.
Photo courtesy of Design Ideas, Ltd.

 

By now, Andy Van Meter is used to finding ideas his company owns in stores he didn’t sell those ideas to.

“It happens more often than we’d like – probably three or four times a year,” he said.

Besides being chairman of the Sangamon County Board, Van Meter is owner of Design Ideas, a home décor design company based in Springfield. The company is currently suing retailers Meijer and T.J. Maxx in federal court for allegedly ripping off a product design, and this isn’t the first time Van Meter’s company has gone to court over intellectual property.

The current case revolves around an item known as the “Sparrow Clip.” It’s a colorful clothespin with the outline of a bird silhouette on top. Design Ideas has the copyright on the Sparrow Clip, which the company purchased from Thai designer Pititas Waiwiriya in 2008. In its complaint, Design Ideas claims that for several years it sold large quantities of Sparrow Clips to both Meijer and T.J. Maxx for resale in their stores.

Design Ideas claims a Meijer purchasing agent said Meijer would buy Sparrow Clips elsewhere if Design Ideas would not lower its price. Design Ideas claims that it declined to lower the price and reminded the purchasing agent that it holds exclusive copyright on Sparrow Clips. In response, Meijer sourced knockoff clips from a third company, Whitmor, according to the complaint. Whitmor supplies products to numerous national and regional stores, including T.J. Maxx.

The complaint against Meijer, T.J. Maxx and Whitmor says that in May 2014, someone from Design Ideas found alleged knockoff Sparrow Clips for sale at the T.J. Maxx on Veterans Parkway in Springfield. The complaint says that the alleged knockoff “Canary Clips” had removed the copyright information printed on Design Ideas’ original Sparrow Clips.

Someone from Design Ideas found the same alleged knockoff Canary Clips in July 2014 at the Meijer store on Conestoga Drive in Springfield, the complaint says, claiming that the clips at Meijer were also sourced from Whitmor.

Design Ideas sued Meijer, T.J. Maxx and Whitmor in March 2015, alleging that the defendants’ acts were “willful infringement” in “brazen violation” of federal law.

Van Meter says it was a difficult decision to file the lawsuit.

“The ironic thing is that Meijer and T.J. Maxx are both good customers,” he said.

The defendants filed court documents denying the allegations and claiming that Design Ideas “misused” copyright regarding Sparrow Clips, so its copyright claims are unenforceable.

Among other reasons, the defendants claim that copyright protection doesn’t apply because Sparrow Clips are what’s known as a “useful article.” The term includes items with an “intrinsic utilitarian function,” such as a chair, according to the U.S. Copyright Office, and such items can’t be copyrighted. However, items with “any pictorial, graphic, or sculptural authorship” added to a useful article can be copyrighted.

The defendants also claim that Design Ideas “falsely represented” to the Copyright Office that its design was “work made for hire,” which covers works made by an employee of a company or works specifically commissioned by a company. That concept has been the subject of at least one U.S. Supreme Court case. Deciding whether Sparrow Clips fall under “work made for hire” means analyzing the agreement between designer Pititas Waiwiriya and Design Ideas to transfer Waiwiriya’s copyright.

Springfield attorney Don Craven, who has represented Illinois Times in lawsuits against government entities over access to public records, represents Meijer, T.J. Maxx and Whitmor in the case.

Since 2003, Design Ideas has sued several other household names such as Pier 1 Imports, Things Remembered, Avon, Yankee Candle and Bed, Bath and Beyond, each time alleging some infringement of intellectual property rights. The company also previously sued Meijer in 2007 for alleged patent infringement regarding a design for organization bins and accessories made from metal mesh. In each of those cases, Design Ideas ultimately dropped its allegations, often after reaching an out-of-court settlement.

In the current case, the two sides are waiting for a ruling from U.S. District Judge Sue Myerscough on the defendants’ motion to dismiss the case based on the “useful article” issue. Barring dismissal or a settlement, the case is tentatively set for trial in April 2017.

Meanwhile, Van Meter says protecting intellectual property is “essential to our company.”

“The lifeblood of our company is creativity,” he said. “If our creative people can’t earn a profit from selling their creativity, we’re out of business.”

Contact Patrick Yeagle at pyeagle@illinoistimes.com.

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