Copyright Protection of Useful Articles

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Frederick Stewart
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1 Copyright Protection of Useful Articles Star Athletica, LLC v. Varsity Brands, Inc. AIPLA Annual Meeting Corporate Practice Breakfast Thursday, October 27th, 2016, 6:30-8:00AM Tamar Y. Duvdevani

2 What Is A Useful Article? A useful article is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. 17 U.S.C October 27,

3 Copyright Protection of Useful Articles 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. 17 U.S.C. 101 (emphasis added.) October 27,

4 What is Copyright Separability? Physical separability can be shown where one or more decorative elements can actually be removed from the original item and separately sold, without adversely impacting the article s functionality. (internal quotation marks omitted). No different conclusion obtains as to conceptual separability, which is evident when a designer exercises artistic judgment independently of functional influences, rather than as a merger of aesthetic and functional considerations. Jovani Fashion, Ltd. v. Fiesta Fashions, 500 Fed. Appx. 42, 44 (2d Cir. 2012). October 27,

5 Conceptual Separability Tests: plenty, varied, and confusing. 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. The Primary-Subsidiary Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are primary to the subsidiary utilitarian function. 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. 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. The Design-Process Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the design elements can be identified as reflecting the designer s artistic judgment exercised independently of functional influences. The Stand-Alone Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the useful article s functionality remain[s] intact once the copyrightable material is separated. The Likelihood-of-Marketability Approach: A pictorial, graphic, or sculptural feature is conceptually separable if there is substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities. October 27,

6 Star Athletica, LLC v. Varsity Brands, Inc. Subject Designs registered with Copyright Office October 27,

7 Typical Fabric Pattern Copyright Deposits October 27,

8 Star Athletica, LLC v. Varsity Brands, Inc. United States District Court for the Western District of Tennessee: Copyrights Invalid. It is not possible to either physically or conceptually sever Varsity s designs from the utilitarian function of the resulting cheerleading uniforms.... The function of a cheerleading uniform is not merely to clothe the body; it is to clothe the body in a way that evokes the concept of cheerleading [A] cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas.... [A] blank silhouette of a purported cheerleading uniform without team colors, stripes, chevrons, and similar designs... is not recognizable as a cheerleading uniform. October 27,

9 Star Athletica, LLC v. Varsity Brands, Inc. United States Court of Appeals for the Sixth Circuit: Copyrights Valid. To the extent that Star contends that pictorial, graphic, or sculptural features are inextricably intertwined with the utilitarian aspects of a cheerleading uniform because they serve a decorative function, we reject that argument. Such a holding would render nearly all artwork unprotectable. Under this theory of functionality, Mondrian s painting would be unprotectable because the painting decorates the room in which it hangs. But paintings are copyrightable. Because we believe that the graphic features of Varsity s cheerleadinguniform designs are more like fabric design than dress design, we hold that they are protectable subject matter under the Copyright Act. October 27,

10 Star Athletica, LLC v. Varsity Brands, Inc. Court of Appeals for the Sixth Circuit: Copyrights valid... But, please, seek Cert! It is apparent that either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design. The law in this area is a mess and it has been for a long time. (Dissenting Opinion) Cert Sought, Issue Taken: What is the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act? October 27,

Star Athletica: Potential Impacts Provide

property law to protect industrial design and

11 Star Athletica: Potential Impacts Provide uniformity, and therefore greater certainty to designers in and out of the fashion industry. Alter the way companies utilize intellectual property law to protect industrial design and creative aspects of useful objects. October 27,

Questions? Contact: Tamar Y. Duvdevani Partner NY Chair, Intellectual Property and Technology tamar.

12 Questions? Contact: Tamar Y. Duvdevani Partner NY Chair, Intellectual Property and Technology T: Avenue of the Americas 27th Floor New York, NY October 27,

Beyond Fashion. ACC Legal Quick Hits. How the Cheerleader Uniform Case May Be a Game Changer for Copyright In Useful Articles

Beyond Fashion. ACC Legal Quick Hits. How the Cheerleader Uniform Case May Be a Game Changer for Copyright In Useful Articles ACC Legal Quick Hits Beyond Fashion How the Cheerleader Uniform Case May Be a Game Changer for Copyright In Useful Articles Lynn Rzonca Ballard Spahr LLP rzoncal@ballardspahr.com September 27, 2016 Quick