Scentsy, Inc. v. B.R. Chase, LLC, 942 F.Supp.2d 1045 (D. Ida. 2013).
The District of Idaho granted summary judgment to defendant Harmony on plaintiff Scentsy's claims of copyright and trademark infringement of its scented wax warmers.
First, the court considered Harmony's contention that Scentsy's failure to disclose every element of its warmers prevented it from claiming copyright protection in those elements. Reasoning that to the extent Scentsy's warmers contained copyrightable elements, those elements gained copyright from the moment of their creation and that copyright registration does not determine the scope of copyright protection, the court rejected the defendant's argument.
Having determined that Scentsy's copyrights should not be limited to only elements specifically disclosed in its identification materials, the court considered whether Scenty's warmers were in fact copyrightable. Finding that Harmony's warmers were not "virtual duplications" of Scentsy's warmers, the court applied the Ninth Circuit's extrinsic/intrinsic test as set forth in Mattel in order to consider whether the works were substantially similar.
The court found that under the extrinsic test the works were entitled to broad protection because there is "undoubtedly a wide range of expression for scented wax warmers," but the court filtered out the unprotectable elements of the base and heating element, melting tray and holes for releasing heat. The court then determined that under the intrinsic test no reasonable jury could consider the works substantially similar because despite similarities in the artwork and general shape, differences in height or width, having holes in different places and numbers, and having different shaped melting trays served to distinguish the designs. Interestingly, two of the features the court had found to be unprotectable—the melting tray and holes for releasing heat—were cited as showing differences in the works.
As to Scenty's trade dress claims, the court found that Harmony was entitled to summary judgment because the wax warmers were functional. First, without discussing aesthetic or utilitarian functionality, and without citing any support, the court held that Scentsy's advertisements showed functionality because they focused on its "utilitarian advantages." According to the court, Scentsy's "touting the beauty of the warmer is touting its utilitarian advantages" because "consumers purchase warmers based at least in part on how they look."
Next, the court rejected Scentsy's expert testimony that its designs often increased manufacturing cost and have no effect on their functionality, finding such testimony "not particularly important" because producing aesthetically pleasing warmers was necessary for sustaining a successful wax warmer business. The court then held that the "utilitarian advantage" and "alternative design" factors were irrelevant because wax warmers were useful to consumers, at least in part, for decorative purposes and the "aesthetics of the warmers function as decoration."
Having concluded that most of the four factors applied by the Ninth Circuit were inapplicable based on the decorative nature of wax warmers, the court essentially held that the warmers were functional because they were decorative.
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