Sprinkler maker sues Menard for copyright infringement - Brief Article

Home Channel News, May 1, 2001 by Brae Canlen

Retailer in court for allegedly designing and selling knockoffs

GRAND RAPIDS, MICH. -- A line of ornamental lawn sprinklers is at the center of a court battle here between Menard, the nation's third largest home improvement retailer, and an Ann Arbor, Mich., garden art manufacturer called Bird Brain. Depositions began this month in a copyright infringement lawsuit filed by Bird Brain, which accuses Menard of using a Taiwanese manufacturer to copy its designs and then selling the knockoffs at its Midwestern chain of 145 stores. Menard denies the charges, claiming that the sprinkler's geometric design elements cannot be copyrighted.

The dispute started in late 1999, shortly after Bird Brain president Courtney King met with Menard's lawn and garden buyer, Edward August. Menard had already test marketed some of Bird Brain's copper tubing sprinklers and expressed an interest in the manufacturer's latest designs. King sent photographs of five new styles from its line of "Raindancers," along with a fish-shaped weather vane called "Pisces."

King and August met in October to discuss the possible purchase of 24,000 copper sprinklers. But the following month, August informed King that he wouldn't be buying the copper sprinklers from Bird Brain because they were too expensive. August also said he had a new supplier, which turned out to be Watex International, a Taiwanese firm represented by C&B Marketing.

The following April, King obtained samples of Watex-made copper sprinklers at a Menard store in Portland, Mich. The designs were almost identical to Bird Brain's, in King's opinion. Menard advertised its new line of decorative copper sprinklers -- which is registered under the trademark "Yardworks" -- for $39.99.

Bird Brain sought a settlement with Menard, but the Eau Claire, Wis.-based retailer refused. In July 2000, Bird Brain filed a copyright infringement lawsuit in federal court, as well as a motion to halt Menard' s sales of its Yardworks sprinklers. "The Menard sprinklers are nearly indistinguishable from, and obviously copies of, Bird Brain's [designs]," the court papers state. "Menard liked the [Bird Brain] products but not the price; and so Menard willfully copied Bird Brain's products."

Not so, said Dawn Sands, general counsel for Menard. "There are only so many ways to make a copper sprinkler," said Sands, pointing out that a number of third-party manufacturers also produce these products. Menard contends that Bird Brain's sprinkler designs -- which combine circles, arcs, spirals and gazing globes -- are not unique. "A ball is a basic geometric shape that is in the public domain," Sands said. The same holds true for hoops, triangles and other design elements employed by Bird Brain, she added.

Court papers filed by Menard claim that Watex International approached August, the retailer's lawn and garden buyer, with more than a dozen conceptual drawings of ornamental copper tube sprinklers in the fall of 1999. Watex offered August a lower price than Bird Brain and a deal was struck for the 2000 season. August ordered some design changes "motivated both by aesthetic considerations and to differentiate the designs from Bird Brain's," according to a statement by August.

Menard accuses Bird Brain of "attempting to use copyright law to prevent Menard from engaging in good, old-fashioned competition." It also challenges the validity of copyright applications pending for three Bird Brain sprinklers. (The three other designs under dispute are already copyrighted.)

Although the trial isn't scheduled to start until August, Bird Brain has already won the first legal round. The preliminary injunction filed last July was decided in favor of the manufacturer. A district court judge ordered Menard to stop selling four of its Yardworks sprinklers because they were too similar to three of Bird Brain's copyrighted designs.

"The evidence indicates that Menard may have failed miserably in its attempt to avoid infringement by directing Watex to vary, ever so slightly, the registered Bird Brain designs," the ruling stated.

Menard had already removed approximately 11,000 Yardworks sprinklers from its stores before the judge's order, according to the company's attorney. Sands believes that the case won't even go to trial. Bird Brain's evidence is so weak that Menard will win a summary judgment, she predicted. "There's no foundation for these accusations, which are truly bird brained," Sands said. The plaintiffs, she added, "were hoping to get a fast settlement from Menard."

In its court filings Bird Brain states that half the company's sales in 1999 came from its copper sprinklers, which are now available at Lowe's, Target and a number of independent hardware stores and garden centers. Because many of these retailers operate in the same market as Menard, Bird Brain's sales and profits were threatened by the knockoff products, the company said.

But more importantly, Bird Brain felt compelled to fight for its intellectual property. "We're known for our original designs," said Christine King, vp of Bird Brain. "That's what we have as a company."