Meg Franklin, Associate Member, University of Cincinnati Law Review
Many agency designers engage in the practice of “mood boarding” to inspire the design process. A successful mood board gives the client a peek into the designer’s vision for the final design. For example, a designer might create a collage with sample fonts, colors, and images on a board to accompany his or her presentation of the design concept. Mood boards are often preferred by design agencies due to their ability to solicit feedback from clients early in the design process. Yet, for the agency’s lawyer, an important question is: how much “inspiration” can designers transfer from the mood board to the final design? According to the court in the Southern District of New York, Hayuk v. Starbucks Corporation, design elements that fall within the public domain may be used to create new marketing designs and advertisements. This conclusion supports the purpose of copyrights because it promotes the creation of new artistic works.
The Hayuk Works
The dispute in Hayuk v. Starbucks Corporation was resolved after the court granted the defendant’s motion to dismiss. The motion to dismiss was granted in response to five claims of copyright infringement filed by visual artist, Maya Hayuk, against Starbucks Corporation and its advertising agency, 72andSunny Partners, LLC (hereinafter, collectively “Starbucks”). According to Hayuk, in October 2014, Starbucks contacted Hayuk to commission artwork for its “mini Frappuccino” (Frappuccino Works) advertising campaign. Hayuk’s Complaint alleges that even though she did not reach an agreement with Starbucks, the final advertisements were “substantially similar” to her copyrighted works of art.Her five original works of art (Hayuk Works) were created and registered with the United States Copyright Office between 2009 and 2011. As described by the court, “[t]he Hayuk Works are typified by the use of bold colors, geometric shapes such as rays, lines, stripes and circles, layering of colors and hues, and texture produced by dripping or layering of paint.” According to Hayuk, the design in Starbucks’ marketing campaign included “the same abstract, radiating beams of black, white, yellow, magenta and azure that [she] had used in a series of five paintings.” Starbucks’ marketing campaign included retail signage, traditional advertisements, a YouTube video, product packaging, and the company website.
Determining Substantial Similarity under the Discerning Observer Test
Starbucks argued in its motion to dismiss that Hayuk could not state a claim of infringement “because the allegedly infringing Frappuccino Works are not substantially similar to the Hayuk Works.”  The two elements to prove that the constituent elements of the work were copied are: “(1) the defendant actually copied the plaintiff’s work; and (2) the copying is illegal because a ‘substantial similarity’ exists between the defendant’s work and the protectable elements of the plaintiff’s work.” The distinction between protectable and non-protectable elements of the plaintiff’s work is important because it is “an axiom of copyright law that copyright does not protect “ideas,” only their expression.” However, if the idea and expression are tied so tightly together that they become “merged,” a court may “deny protection to the expression in order to avoid conferring a monopoly on the idea to which it inseparably is tied.”
The standard test for “substantial similarity” is known as “the ordinary observer test.” This test asks “whether ‘an ordinary observer, unless he set out to detect the disparities [between the works], would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’” However, the Second Circuit has directed that courts should use a “more discerning” test when the work contains protectable and non-protectable elements. Courts may compare the works in question when determining whether the works are substantially similar in a motion to dismiss. The court can then dismiss the case if “the similarity between two works concerns only non-copyrightable elements of the plaintiff’s work, or [that] no reasonable jury, properly instructed, could find [that] the two works are substantially similar.”
The Core of the Hayuk Works Are a Non-Copyrightable Idea
Using the “discerning observer test,” the court reasoned that the alleged similarity between the works was not evidence of copying because the Starbucks design used elements that are part of the public domain. Hayuk described the “core” of her works as the overlapping colored rays that Starbucks allegedly copied in its Frappuccino Works advertisements. Yet, the court found this method of expression was tied so inseparably to its idea that extending copyright protection would give Hayuk a monopoly over the idea of overlapping colored rays. Therefore, the court concluded that, “[a]lthough the two sets of works can be said to share the use of overlapping colored rays in a general sense, such elements fall into the unprotectable category of ‘raw materials’ or ideas in the public domain.”
The Effect of the Copyright Merger Doctrine on Hayuk
Although the court’s reasoning was layered under the “substantial similarity” analysis, the court’s decision ultimately turned on Hayuk’s ability to differentiate between the “idea” underlying her work and the scope of her “expression.” For example, the paint drip marks and scrapings from Hayuk’s paintings would likely be considered original expression. However, Starbucks’s designs did not contain any paint drip marks and scrapings. Since Hayuk’s position was that the Starbucks designs were substantially similar, she had to find a way to articulate how her work was translated into Starbucks’s work. Hayuk described this alleged infringement as a misappropriation of the “core” of her works. However, the court did not find this argument persuasive. The court concluded that “what [Hayuk] has described as the ‘core’ of her work in the aggregate, namely the use of overlapping colored rays, and colors and shapes, is tantamount to a set of unprotectable concepts or methods over which there can be no copyright monopoly conferred.” In other words, Hayuk believed that the Frappuccino Works had taken too much inspiration from her works. Yet, she was not able to articulate what had been inspired from her works outside of the use of overlapping colored rays which were part of the public domain. Using the same idea of overlapping rays is not infringement because ideas are not copyrightable.
Fulfilling the Purpose of Copyrights
One takeaway from the case is that Hayuk’s designs were too simple to translate into strong copyright protection. Beyond exact duplication, the court’s reasoning would not provide strong protection for her artwork. If the elements of her painting constitute raw materials that are part of the public domain, then the only possible infringement would be to reproduce a Hayuk Work in its entirety. A practical effect of this conclusion is that Hayuk lost the opportunity to generate revenue from licensing her artwork to the Starbucks. However, the purpose of United States copyrights is not to maximize economic compensation for the copyright holder. Instead, the purpose is to “promote the progress of science and the useful arts.” The ruling in this case furthered the progress of the arts because it maintained artists’ freedom to seek inspiration from existing works, promoting the creation of new works. To further illustrate this point, the implication that Hayuk could stop Starbucks from creating any design with overlapping rays would chill the future creation of artistic works. Instead, the court balanced these interests and maintained a copyright holder’s rights to reproduce his or her works while also providing artists the freedom to create.
Agencies May Draw Raw Inspiration from Mood Boards
The court’s ruling could be interpreted as giving design agencies the freedom to draw inspiration from mood boards when the inspiration can be described as ideas belonging to the public domain. When transitioning from the mood board phase to the design phase, a designer must first refrain from directly reproducing an existing work. Directly reproducing a copyrighted work is typically a strong case for copyright infringement. If, like in Hayuk, the work is not a direct reproduction, there should still not be a “substantial similarity” between the two works. To determine whether “substantial similarity” exists, one must separate the “idea” from the “expression.” In Hayuk’s situation, a copyright claim over the idea of overlapping colored rays was more protection than the court was willing to give. However, if a designer only transfers “raw materials” into his or her design, the materials that are part of the public domain should not be subject to copyright. Therefore, if used as a tool for collecting raw design materials, mood boards may arguably be the perfect tool to guard against copyright infringement under the reasoning in Hayuk.
Inspiration Free of Infringement
The court did not find a substantial similarity between the Hayuk Works and the Frappuccino Works because the only elements that were substantially similar were “ideas” or “raw materials” not subject to copyright protection. Although this limits the potential for Hayuk to license her paintings for commercial use, the ruling promotes the progress of the arts by allowing artists to gather inspiration from existing works. Using the reasoning of Hayuk, mood boards can help guard against copyright infringement when the only elements that are translated from existing works to the final design are considered “raw materials.”
Creative directors in agencies have long advocated for the use of mood boards. Yet, the agency’s attorney should also encourage the use of mood boards to facilitate inspiration that is free of infringement.
 A mood board is a tool used by designers during the conceptual phase of the design process. Often, before a designer builds an advertisement for a client, the designer will gain the client’s approval on the design concept by showing the client design elements that might be incorporated into the final design. Design elements might include typefaces, images, colors, patterns, or anything else that falls within a desired “look and feel.” The compilation of these design elements is often called a “mood board.” The mood board can be formatted as an unstructured collage or as structured blocks of design elements. See, Why Mood Boards Matter, WEBDESIGNERDEPOT (Dec. 30, 2008), http://www.webdesignerdepot.com/2008/12/why-mood-boards-matter/.
 Sharon Givon, Copyright and Wrong: A Basic Guide for Designers, Sex, Drugs & Helvetica (Dec. 13, 2015), http://www.sexdrugshelvetica.com/copyright-and-wrong-a-basic-guide-for-designers/.
 157 F. Supp. 3d 285, 292 (S.D.N.Y. 2016).
 Id. at 287.
 Id. at 286.
 Josh Saul & Laura Italiano, ‘Starbucks Stole My Artwork!,’ New York Post (June 24, 2015 at 11:43pm) http://nypost.com/2015/06/24/starbucks-stole-my-artwork/.
 Hayuk, 157 F. Supp. 3d at 288.
 Id. at 287.
 Josh Saul, supra note 9, at 2.
 Patrick Coffee, Artist Sues Starbucks, 72andSunny for Copyright Infringement, AdWeek: AgencySpy (June 29, 2015 at 1:02pm) http://www.adweek.com/agencyspy/artist-sues-starbucks-72andsunny-for-copyright-infrigement/88848.
 Hayuk, 157 F. Supp. 3d at 289.
 “Substantial similarity” refers to one of the elements required to prove that a defendant copied the constituent elements of the plaintiff’s copyrighted work. Id.
 Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir.1998).
 Hayuk, 157 F. Supp. 3d at 289 (explaining the merger doctrine).
 Id. at 289-90 (internal citations omitted).
 Id. at 290.
 Hayuk, 157 F. Supp. 3d at 290 (quoting Peter F. Gaito Architecture LLC v. Simone Dev. Corp., 602 F.3d 57, 66 (2d Cir.2010).
 Id. at 290.
 Peter F. Gaito Architecture, 602 F.3d at 64.
 Hayuk, 157 F. Supp. 3d at 292.
 Id. at 291.
 Id. (applying the merger doctrine).
 Id. at 292.
 Id. at 291.
 Id. at 293.
 Note that this is unique to the U.S. system of copyright law.
 The power of Congress to confer copyrights is designated by the Patents and Copyrights Clause of the United States Constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” U.S. Const. art. I, § 8, cl. 8.
 Why Mood Boards Matter, supra note 1.