Thursday, October 20, 2016

The Intersection of Copyrightable Works and Useful Articles at the Supreme Court

While most of the design patent world is focused on the Supreme Court's review of the Apple v. Samsung case, which we reported on last week, the Supreme Court is also set to hear oral arguments on Star Athletica, LLC v. Varsity Brands, Inc., a copyright case that could have implications for the scope of rights available to design owners.

Varsity Brands designs and manufactures athletic apparel, including cheerleading uniforms.  Their design process  typically involves having a draftsman or a designer sketch out ideas on paper.  Once approved, those sketches  are given over production crew, whose job it is to re-create the design in fabric for production.  Some designs may simply be screen printed onto existing fabric, but others are implemented by stitching together fabric panels in the required shape.  Many of the sketches, such as the one shown above, are filed with the copyright office as "two dimensional artwork."

Star also markets and sells athletic uniforms, including for cheerleading. Varsity sued Star in Tennessee after noticing that its uniforms looked very similar to five designs Varsity had previously registered.  Star defended by arguing that Varsity's copyrights were invalid as being directed to useful articles, which are not copyrightable.  The district court agreed, and granted Star's motion for summary judgment.

On appeal to the Sixth Circuit, Varsity argued that its designs were copyrightable, because they were conceptually separable from the articles themselves.  The appellate court agreed, and vacated the district court's dismissal.  Star filed a writ of certiorari, which the Supreme Court granted on May 6, 2016.

The question taken by the Supreme Court is deceptively straightforward:
What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act? 
In order to understand why this is such an important and difficult question, we have to look deeper into the dispute.

Copyright law is intended to protect creative works, not functional or utilitarian ones.  Patent law is the proper province of utilitarian inventions, and design patents form the bridge protecting the ornamental aspects of articles of manufacture.  But even the Copyright Act recognizes there is some overlap, as explained in the Section 101:
“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work 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.
In short, a copyrightable "pictorial, graphic or sculptural" work can be applied to a useful article, but it cannot cover any mechanical or utilitarian aspects of that article. With respect to clothing, the amicus brief for the United States provides a good example:

In the image above, the owner of the copyright for Van Gogh's Starry Night would have the exclusive right to print that work on a dress.  However, the shape, cut and style of the dress would be a utilitarian article, and would not be protectable under copyright law.

But consider the cheerleading uniform shown at the top of this post.  Design elements such as the stripped trim appear to follow the shape and cut of the uniform.  Varsity admits that in at least some cases, the design is not merely applied to the uniform, but individual colored panels are cut to the appropriate shape and stitched together.  In a case like that, is the design truly separable from the article of manufacture it is associated with?

The answer may depend on which test the court uses to gauge conceptual separability.  The Sixth Circuit identified nine distinct tests, including:
The Copyright Office’s Approach: “A pictorial, graphic, or sculptural feature satisfies [the conceptual-separability] requirement only if the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works—one an artistic work and the other a useful article.” COMPENDIUM III § 924.2(B).
The Objectively Necessary Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are not necessary to the performance of the utilitarian function of the article. Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985).
The Ordinary-Observer Approach: A pictorial, graphic, or sculptural feature is conceptually separable if “the design creates in the mind of the ordinary[, reasonable] observer two different concepts that are not inevitably entertained simultaneously.” Id. at 422 (Newman, J., dissenting).
One might imagine we at The Ordinary Observer are partial to one of the above-listed approaches over the others, but the truth is that no one test appears to fully capture conceptual separability, and courts frequently use multiple tests in justifying their opinions one way or another.  It should not be difficult to imagine how the whole analysis essentially boils down to a You Know It When You See It Approach, which is little comfort to parties arguing close cases.  Given the Supreme Court's disdain for bright line rules (e.g. "total profits"), we would not be surprised to see a decision giving wide latitude to district court judges in this regard.

The Sixth Circuit rejected all nine of the tests it identified in favor of a tenth, which asks courts to analyze the question in five sequential steps:
  1. Is the design a pictorial, graphic, or sculptural work?
  2. If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article?
  3. What are the utilitarian aspects of the useful article?
  4. Can the viewer identify the pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? And finally,
  5. Can the pictorial, graphic, or sculptural features of the useful article exist independently of the utilitarian aspects of the useful article?
The relative merit of the Sixth Circuit's approach need not be analyzed here.  It stands shoulder to shoulder with its nine older siblings, and it will be for the Supreme Court to decide if there is a favorite child among the bunch, or if an eleventh and final approach will be the answer.   What the Court decides will help shape the intersection of design patents and copyright law, and the extent to which designers, including fashion designers, are capable of protecting the creative and ornamental aspects of their products.  

We will keep you apprised of this case, as it develops.  

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