United States: Give Me A ©!: U.S. Supreme Court Set To Determine The Proper Test For The Separability Of Design Features From Useful Articles Under §101 Of The Copyright Act

For nearly a century, U.S. federal courts have struggled with the "metaphysical quandary" involved in determining whether and when certain design features associated with otherwise useful articles are conceptually separable, and thus protectable, under §101 of the Copyright Act.  17 U.S.C. § 101.  Next term, in Star Athletica, L.L.C. v. Varsity Brands, Inc. et. al. ("Star Athletica"), the U.S. Supreme Court will finally take up this important issue, weighing in on the proper test to be applied by the lower courts in answering what is arguably one of "the single most vexing, unresolved question[s] in all of copyright":  What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?  No. 15-866 (6th Cir., 799 F.3d 468; 578 U.S. ___, cert. granted May 2, 2016).      

Such a test will affect the protection of copyrighted designs in the fashion, footwear, costume, furniture, 3-D printing and many other industries.  As a result, Star Athletica  has captured the attention of the mainstream media and more than a dozen academic, industry, intellectual property and public interest groups and associations.  Seven Amici Curiae Briefs were recently filed with the Court – each discussing different implications of the Court's holding as well as the sufficiency of the test for conceptual separability applied by the Sixth Circuit.

Are the designs that appear on cheerleading uniforms conceptually separable or inherently functional?

Star Athletica and Varsity Brands each manufacture and sell cheerleading uniforms and warmup suits.  After an initial rejection, Varsity Brands successfully registered numerous copyrights with the U.S. Copyright Office for several of its designs including the color combinations, chevrons, stripes and other ornamentation appearing on the apparel it manufactures and sells.  In 2010, Varsity filed suit against its competitor, Star Athletica, alleging copyright infringement of its designs.  The district court found for Star, holding that "the colors-and-designs component of a cheerleading uniform cannot be conceptually separated from the utilitarian object itself."  Varsity Brands, Inc. et. al. v. Star Athletica, LLC, Case No. 10-2508, 2014 WL 819422 (M.D. Tenn. 2010).  In short, the court reasoned that "a cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas."  Id

On appeal, the Sixth Circuit fashioned a tenth version of the separability analysis taking into account five factors distilled from the case law and tests for conceptual separability used by other federal Circuit Courts of Appeals.  Star Athletica, LLC v. Varsity Brands, Inc., et al., 799 F.3d 468 (6th Cir.  2015).  Under its analysis, in a split decision, the Sixth Circuit reversed, finding that Varsity's designs were, in fact, separable from the apparel on which they appeared and thus subject to copyright protection.  Star moved for a rehearing en banc which was denied pending its Petition for Writ of Certiorari to the U.S. Supreme Court – now granted.

The Doctrine of Conceptual Separability

It is well established that "useful articles" such as chairs, machinery and garments are generally not eligible for protection under the U.S. Copyright Act.  However, in the 1976 revision of the Copyright Act, section 101 added what is now known as the doctrine of conceptual separability.  See Mazer v. Stein, 347 U.S. 201 (1954); see also 17 U.S.C. §§ 101, 113.  That is, copyright protection may extend to a component part or feature of a useful article where it is a "pictorial, graphic, or sculptural work" that can be "identified separately from, and . . . exist[] independently of, the utilitarian aspects of the article."  Id.  To use the petitioner's example, think "The Spirit of Ecstasy" hood ornament on a Rolls-Royce automobile.  The iconic Rolls-Royce ornament – a sculpture – is clearly conceptually separable and able to exist independently from the utility of the automobile on which it is fastened.

The separability analysis, however, becomes far more difficult and abstract when a court is called upon to determine whether and to what extent a component feature of a useful article is separable where the feature could fairly be considered utilitarian, ornamental or both – depending upon the specific analysis applied.  And therein lies the problem at issue in Star Athletica – there has been no consensus among the federal Circuit Courts of Appeals as to the proper test to be applied in making such determinations.  Instead, as the Third Circuit has commented, courts "have twisted themselves into knots trying to create [various] test[s] to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article's utilitarian function"  Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir. 1990). 

Courts remain confounded by the abstractions and nuance inherent in such analyses – having fashioned no less than ten widely divergent tests for determining conceptual separability across the federal Circuit Courts of Appeals.  In sum, as Judge McKeague noted in his dissent, without much-needed clarification in this area "courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law."  Star Athletica, LLC, 799 F.3d at 496-497 citing Fashion Originators Guild of Am. v. Fed. Trade Comm'n, 114 F.2d 80, 81 (2d Cir.1940) (Hand, J.).  Having granted Star Athletica's petition, the Supreme Court is now poised to hear argument and, hopefully, provide clarity in the form of a controlling standard by which the separability of features from useful articles will be tested in the courts below.

The Potential Implications And Likely Outcome In Star Athletica

Given that the test for conceptual separability applies equally to any pictorial, graphic, or sculptural work that is a conceptually separable feature or component of a useful article, the legal and practical implications of the Supreme Court's holding in Star Athletica could be extensive.  The petitioner and various amici have advanced a plethora of potential implications should the Court affirm the Sixth Circuit's holding.  These potential repercussions range from constitutional concerns to the chilling effect such a holding could have on creativity, innovation and competition in a diversity of marketplaces including the fashion, costuming, 3-D printing and furniture design industries. 

While the Court's holding could alter the balance between copyright and patent protections and affect a sea change, such an extreme outcome is not likely.  While it is, of course, impossible to predict the Court's treatment of this issue, the Court has historically taken a more tempered approach grounded in statutory construction and Congressional intent.  If the same holds true here, the Court is more likely to craft an objective, fact-based, test for conceptual separability that provides for narrow protection under section 101 of the Copyright Act – and only then for clearly separable nonfunctional features of useful articles that can be identified and isolated without resort to the metaphysical analyses courts have engaged in for decades. 

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions