Copyrightability Clarified for Designs of “Useful” Articles

On March 22, 2017, the U.S. Supreme Court decided Star Athletica, L.L.C. v. Varsity Brands, Inc., ruling that decorative designs of cheerleading uniforms may be eligible for copyright protection.[1]  In so deciding, the Court clarified the application of the copyright laws to designs of “useful” articles.

Previously, as has been my experience in the registration and enforcement of designs of “useful” articles, the “useful” nature of an item has been broadly cited as excluding, or severely limiting, the protection of copyright laws to the design/ornamentation of such an item.  However, the Supreme Court has now clarified that the shadow of utility does not limit the otherwise available statutory scope of protectable expression.

By the example of the Star Athletica case, while the overall “cut” of a uniform is utilitarian (useful as clothing) and not protectable expression, protection is available to decorative works on that uniform, even if bounded by that utilitarian shape, to the extent those works could be perceived separately therefrom and fixed in to decorate another tangible medium.

Background – “Useful” Nature as a Tool to Exclude Protections

Prior to this decision, a claim of copyright protection in a “useful” item was often subject to attack being overridden, or superseded, by its very utility.  In the underlying district court proceedings in Star Athletica, the designs were held as not eligible for copyright protection, as the designs had the utilitarian function of identifying the uniforms as cheerleader uniforms.[2]

More generally, the following excerpt from a U.S. Copyright Office statement to Congress, in furtherance of considerations to amend the laws for fashion designs, summarizes the prior approach as follows:

First, copyright protection for the designs of useful articles is extremely limited. The design of a useful article is protected under copyright “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  According to the House report accompanying the copyright revision bill, the test for separability can be met by showing either physical or conceptual separability.  The purpose of the test is “to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design.”  In keeping with this congressional intent, courts have applied the separability test in a way that excludes most industrial designs from copyright protection.  The Copyright Office has been similarly restrictive in its registration practices.[3]

(Emphasis Added.)

The Star Athletica Decision – “Useful” Articles are Another Tangible Medium

The Court has rejected the perspective in which utility is inherently limiting, exclusionary, or restrictive to application of copyright rights to protectable expressions.  The Court held that:

…a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.[4]

The Court did not otherwise analyze the copyrightability the claimed designs.[5]

The Court likens the uniform designs as to paintings on a wall, ceiling panel, or dome, or a design painted on a surface of a guitar.[6]  The Court rejects requiring analysis of the residual utility of the “useful” item after “separating” the decorative features thereof – stating that “[t]he statute does not require that we imagine a nonartistic replacement for the removed feature to determine whether that feature is capable of an independent existence.”[7]  In other words, the utility does not hold back or override the protectable nature of a separable feature.

The result of that analysis is to reject any legal distinction between physical and conceptual separability as being unnecessary.[8]  The Court also rejects other proposed “objective” components (e.g., marketability) as being unsupported by the statute as well as arguments citing Congressional Intent.[9]

The decision was 6-2, including Justice Ginsburg concurring in the result but not the majority opinion.  In a short concurrence, Justice Ginsburg argues that designs were originally sketches reproduced on the uniforms, not designs of uniforms.[10]  Justice Breyer, with whom Justice Kennedy joined, dissented, primarily rejecting the Court’s application of “separability” to the uniform designs, contending the decorations are coextensive with the overall shape.[11]

Lessons for Practice

The Star Athletica decision should be quite beneficial in framing disputes involving copyright protection and useful articles on the merits – what is the protectable expression.  Particularly, the characterization of a useful article itself as a medium for fixing a tangible expression – as opposed to some type of “restricted area” – may serve to level the playing field for works so fixed in the first instance.  As such, rather than misconstrue the specific result as categorically opening the floodgates to claims to register uniform (or other useful article) designs, this decision should, in my opinion, be taken as dictating a prudence with registering and enforcing works fixed in “useful articles” now generally corresponding to that of other works.

Endnotes

[1] 580 U.S. ____ (2017); see: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf.

[2] Id. at 2.

[3] Statement of the United States Copyright Office before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary; United States House of Representatives, 109th Congress, 2nd Session; July 27, 2006; see: https://www.copyright.gov/docs/regstat072706.html#N_16_

[4]  Star Athletica, 580 U.S. ____ (2017) at 10.

[5] Id. at 10-11, n. 1.

[6] Id. at 11.

[7] Id. at 13-14.

[8] Id. at 15.

[9] Id. at 15-17.

[10] Id. at Ginsburg concurrence 1-3.

[11] Id. at Breyer dissent 10-12.

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