IP Views

Finding Copyright in Useful Articles

Star Athletica vs Varsity Brands (580 US ___)
Decided March 22, 2017

Varsity Brands Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., (Varsity Brands) design, make, and sell cheerleading uniforms. It has copyright registrations for two-dimensional designs appearing on their uniforms and garments. The designs include combinations, positions, and arrangements of chevrons, lines, curves, stripes, angles, diagonals, coloring, and shapes. Varsity Brands claims that Star Athletica infringed their copyrights to 5 designs.

The District Court ruled in favor of Star Athletica on the ground that the designs did not qualify as protectable pictorial, graphic, or sculptural works; they served the utilitarian function of identifying the garments as “cheerleading uniforms.” As such, the designs could not be physically or conceptually separated from the utilitarian function of the uniform.

The Court of Appeals (CA) reversed the District Court. It ruled that the graphic designs were separately identifiable because the designs and a blank cheerleading uniform can appear side by side – one as a graphic design, and one as a cheerleading uniform. The designs were capable of existing independently because they could be incorporated into the surface of different types of garments, or hung on the wall, and framed as art.

On appeal to the Supreme Court, the parties raised the question: are the arrangements of lines, chevrons, and colorful shapes appearing on Varsity Brands’ cheerleading uniforms eligible for copyright protection as separable features of the design? The Court ruled in the affirmative.

Sec. 101 of Copyright Act defines pictorial, graphic and sculptural works as including “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.” A work of authorship is fixed in a tangible medium of expression when it is embodied in a material object from which the work can be perceived, reproduced, or otherwise communicated.

Sec. 101 establishes a special rule for copyrighting a pictorial, graphic, or sculptural work incorporated into a useful article. A useful article is one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. The law provides that the design of a useful article is eligible for copyright protection only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features, provided that: (1) can be identified separately from, and (2) are capable of existing independently of, the utilitarian aspects of the article. The separability analysis is used to determine whether the design is copyrightable or not.

The separability analysis consists of two requirements: separate identification and independent existence. For separate identification, the decisionmaker only needs to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. For independent existence, the separately identified feature must exist apart from the utilitarian aspects of the article. The feature must be able to exist as its own pictorial, graphic, or sculptural work once it is imagined apart from the useful article.

The Copyright Act provides that the owner of a copyright has the exclusive right to reproduce the copyrighted work in copies. Such right includes the right to reproduce the copyrighted work in or on any kind of article – whether useful or not. Whereas Sec. 101 protects art first fixed in the medium of a useful article, Sec. 113 (a) protects a work of authorship first fixed in some tangible medium other than a useful article and subsequently applied to a useful article. The law, therefore, protects pictorial, graphical, and sculptural works regardless of whether they were created as free-standing art or as features of useful articles.

In Mazer vs. Stein (decided under the 1909 Copyright Act), respondents sold fully equipped lamps with the sculpture of a dancer for its lamp base. Subsequently, they filed for copyright registration of the dancer as a statuette, removing any lamp components. Copies were then sold both as lamp bases and as statuettes. Petitioners copied the statuette and sold lamps using that as base. They argued that respondents did not have a copyright in a statuette intended for use as a lamp base. The Court ruled that first, the respondents owned a copyright to the statuette even though it was intended for use as a lamp base. In doing so, the Court approved the Copyright Office’s regulation extending copyright protec¬tion to works of art that might also serve a useful purpose (but not the mechanical or utilitarian aspect). Second, the Court held that it was irrelevant to the copyright inquiry whether the statuette was initially created as a freestanding sculpture or as a lamp base. If a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article.

Here, the decorations are separable from the uniforms and eligible for copyright protection. One can identify the decorations as features having pictorial, graphic, or sculptural qualities. And if the arrange¬ment of colors, shapes, stripes, and chevrons on the sur¬face of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as two-dimensional works of art.

The dissent argues that the designs are not separable because imaginatively removing them from the uniforms and placing them in some other medium of expression (e.g. a canvass) would create pictures of cheerleader uniforms. The majority opinion held that such is not a bar to copyright. Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied.

To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. Even if Varsity Brands ultimately succeeded in estab¬lishing a valid copyright to the surface decorations at issue here, it has no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear. They may prohibit only the reproduction of the surface designs in any tangi¬ble medium of expression—a uniform or otherwise.

Star Athletica argued that a feature may exist independently only if it can stand alone as a copy¬rightable work and if the useful article from which it was extracted would remain equally useful. In other words, copyright extends only to “solely artistic” features of useful articles and that if the feature advances the utility of the article, the feature is not copyrightable. The designs were allegedly not protected because they are inseparable from the utilitarian aspects of the uniform – i.e. identifying the wearer as a cheerleader and enhancing the wearer’s physical appearance.

The Court held that the debate over the relative utility of a plain white cheerleading uniform was unnecessary. The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction. The statute does not require the decisionmaker to imagine a fully functioning useful article without the artistic feature. Instead, it requires that the separated feature qualify as a non-useful pictorial, graphic, or sculptural work on its own. Furthermore, the statute expressly protects two- and three-dimensional applied art. An artistic feature that would be eligible for copyright protec¬tion on its own cannot lose that protection simply because it was first created as a feature of the design of a useful article, even if it makes that article more useful.

The Court abandoned the distinction between physical and conceptual separability as used in the dissenting opinion. Physical separability refers to the capability of the design features to be physically removed from the article leaving the fully functioning utilitarian object in place whereas conceptual separability refers to the ability to conceive of the design features separately without replicating a picture of the utilitarian object. The statutory text indicates that separability is a con¬ceptual undertaking. Because separability does not re¬quire the underlying useful article to remain, the physical-conceptual distinction is unnecessary.

Star Athletica argued that allowing the surface decorations to qualify as a work of authorship is incon¬sistent with Congress’ intent to entirely exclude industrial design from copyright. Star Athletica notes that Congress refused to pass a provision that would have provided limited copyright protection for industrial designs, includ¬ing clothing, when it enacted the 1976 Act. As such, Congress intended to channel intellectual property claims for industrial design into design patents.

The Court on this issue held that copyright and design patent are not mutually exclusive. It stated that Congress has provided for limited copyright protection for certain features of industrial design.

Conclusion

An artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.

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