The Supreme Court Finally Weighs In On The Boundaries Of Copyrightability For Useful Articles
After decades of uncertainty about the standard for the copyrightability of "useful articles," the Supreme Court has finally provided copyright holders with guidance to resolve this thorny issue. On March 22, 2017, the Court decided Star Athletica v. Varsity Brands and set forth the test for determining whether original expression embodied in an otherwise utilitarian work is entitled to protection under the Copyright Act. On one hand, the Court gave much needed guidance on what constitutes "conceptual separability," but on the other it made clear that its decision was not a blanket message that all fashion designs are copyrightable, only that the "surface decorations" at issue here are.
The Copyright Act protects "original works of authorship fixed in any tangible medium of expression." However, the Act excludes copyright protection for "useful articles," defined as those with "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."
An exception to the Act's "useful article" prohibition is the so-called "conceptual separability" doctrine first articulated by the Court in Mazer v. Stein. There, the Court addressed the copyrightability of a lamp – an admitted utilitarian object – but where the lamp base was comprised of an ornate statue. In holding the lamp base copyrightable, the Mazer Court unleashed a long series of subsequent cases seeking to interpret a working test for determining what is "conceptual separability." The Supreme Court, in an Opinion authored by Justice Thomas, has finally "cut" that "Gordian Knot."
As noted, copyright protection generally does not extend to "useful articles." Deemed useful articles rather than artistic creations, clothes have historically been categorically excluded from copyright protection. However, "pictorial, graphic, or sculptural" features that are separable and can exist apart from the functional aspects of a garment have been afforded copyright protection in limited instances under the doctrine of conceptual separability.
For example, lace and embroidery accents "that were totally irrelevant to the utilitarian functions" of a tunic have been found to be copyrightable. Similarly, costume jewelry and ornamental belt buckles have been afforded protection. As have certain fabric designs, such as the patterns printed on a dress. Up until now, courts have distinguished copyrightable fabric designs from unprotectable dress designs, which have been categorized as useful articles. Consequently, dress components, such as the style, cut, shape or dimensions of a garment, have been foreclosed from copyright protection. Similarly, design details like buttons or pleats have been deprived of protection, regardless of how detailed the expression may be. Bottom line, and despite both legislative and judicial efforts, copyright protection afforded to fashion designs has historically been extremely limited. That is, up until now.
The Court's recent opinion in Star Athletica v. Varsity Brands opens the door for protection of certain fashion designs. The Court held that a decorative feature of a cheerleading uniform was eligible for copyright protection as a "two-dimensional work of art" under the doctrine of conceptual separability. More importantly, the Court set forth a test for determining what "conceptual separability" is.
Noting that lower courts have been divided as to when conceptual separability exists, Justice Clarence Thomas set forth a two-part test to resolve the question. The Court held that a feature incorporated into the design of a useful article is eligible for copyright protection when 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 pictoral, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.
Applying this test, the Court found that two-dimensional designs appearing on the surface of the subject cheerleading uniforms (consisting of lines, chevrons, and colorful shapes) could be identified separately from, and were capable of existing independently of, the utilitarian aspects of the uniforms.
First, the Court found that the uniform decorations could be identified as "features having pictoral, graphic or sculptural qualities." Second, the Court found that if the decorations were separated from the uniforms and applied to another medium, such as a painter's canvas, they would qualify as two-dimensional works of art. Third, and finally, the Court found that separating the decorations from the uniforms and applying them to another media of expression, such as a different type of clothing, "would not replicate the uniform itself." Therefore, the Court concluded that the uniform decorations were "separable from the uniforms and eligible for copyright protection."
As early as 1977, the U.S. Register of Copyright identified the lack of protection for fashion and clothing designs as "one of the most significant and pressing items of unfinished business" in U.S. copyright law. While copying has always occurred in the garment industry, today, counterfeiting poses an unprecedented threat to designers. Especially, as new technology enables copies to be produced and sold at accelerated speeds. The Star Athletica v. Varsity Brands opinion will likely add fuel to designers and copyright owners' attempts to protect and enforce their original expressions. Only time will tell what practical effect this will have.
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