The Supreme Court granted certiorari this term in Star Athletica, L.L.C. v. Varsity Brands, Inc., which considers whether typical designs on cheerleading uniforms can be copyrightable subject matter. The appeals court believed that the designs were appropriate, but my guess is that several Supreme Court justices reacted with skepticism, which is why they decided to take the appeal. Those engaged with product development eagerly await the decision in this case because there is significant judicial uncertainty about the application of copyrights to useful products, and in particular, with how to draw the line between artistic craftsmanship and industrial design. Unfortunately, this case raises rather narrow issues, and the Court will be able to resolve them while skirting the most difficult debates. Thus, I believe that those looking for hard-and-fast rules will ultimately feel no more satisfied than observers did after the Court’s decisions with patentable subject matter, such as in Bilski v. Kappos.
In theory, the patent and copyright laws establish distinct and finely tuned systems intended to stimulate investments in creativity. The patent regime centers on utilitarian inventions and ornamental product designs while copyright focuses on artistry. There has never been a question that utilitarian attributes are thus within the sole province of patents, but product designs are a different matter since visual configurations can also be the works of artists. A possible solution is to simply allow some degree of overlapping protection. However, one also can argue that those selling useful products without the benefit of design patents effectively dedicate their designs to the public, thus making them entirely off-limits for copyrights.
This very argument was presented to the Supreme Court in Mazer v Stein, when it addressed whether copyrights could protect statuettes of human figurines that stood on their own as works of art, but primarily served as lamp bases. The Court determined that artists retain the ability to copyright their works even when they intend that the works be reproduced in useful commercial products. Of course, the facts in this case were somewhat unique because the statuettes were designed and copyrighted separately before they were attached to the wiring, sockets and shades of the lamps. The design process for most commercial products, though, is not so sequential, and the separation between art and utility is not as easy to discern. Thus, the case raised significant questions about the suitability and extent of copyright protection when the designs are more intimately integrated with the utilitarian attributes of the articles.
Congress attempted to clarify the situation in its 1976 revision of the Copyright Act by codifying that copyrights could potentially protect the artistic attributes of useful products, but only under very limited circumstances. It did this by providing in section 102(a)(5) that copyright protection extends to expressions in original “pictorial, graphic and sculptural works,” but then by restricting the application to useful articles in its definition of such works. In particular, section 101 states:
“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art … 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.
Courts and scholars have struggled for decades with formulating the contours of the separation and independent existence required by the statutory language. There is no question that features that can be physically removed without affecting a product’s utility, such as a car hood ornament, are copyrightable. However, the legislative history makes it clear that conceptually separable attributes, such as the lamp statuettes, can also be copyrighted. Here, one must note that even the statuettes cannot entirely exist independently of the utilitarian aspects of the lamps because the statuettes provide the mass, height, support, and stability, among other useful contributions, required to hold the lamp elements in place. However, in this instance, it feels intuitively correct that there is conceptual separation between the artistic craftsmanship and the utilitarian lamp functions. The problem, therefore, has been finding concrete rules that help explain the intuitive conclusions not only in this instance, but also in other situations having vastly different and unique contexts.
Over the years, the courts have appraised various kinds of artistically designed products, such as belt buckles, bike racks, modern light fixtures, clothing display stands, mannequins, furniture and Halloween costumes, and they have applied numerous disparate rationales to justify their conclusions in each instance regarding conceptual separation. For instance, the list of tests, among a host of others, include whether (1) the product could be marketable as art, (2) the design was conceived without function in mind, (3) the artistic features are primary to the subsidiary utilitarian function, and (4) the artistic feature can exist and be perceived as a separate work side-by-side with the useful article. Naturally, product designers and legal practitioners would like the Supreme Court to provide more certainty to this field by narrowing the list and perhaps guiding the application of the remaining rules to the appropriate circumstances. However, Star Athletica is not a good vehicle for the Court to do so.
The issue in Star Athletica is whether designs appearing on cheerleading uniforms, consisting of commonly-used chevrons, zigzags, stripes and color blocks, are not copyrightable, even if original, because they cannot be separated from and exist independently of the utilitarian functions of the outfits. Significantly, there is no dispute in this case that all the other attributes of the attire, including the shape, cut, length, fit and materials, are not copyrightable. Some of these features, by the way, are the kinds of integrated three-dimensional forms that normally could raise difficult issues with conceptual separability, and so a debate about them might be instructive. However, the only question in Star Athletica regards the illustrations depicted on the uniforms.
Given the language of the statute, it’s hard to imagine anything associated with a useful product that would be more conceptually separable from utilitarian function than surface ornamentation. Obviously, one could draw the image separately on a piece of paper and then subsequently attach that image to the utilitarian attributes of the uniform. This is really no different than what was done with the statuettes in Mazer, and if anything, the conceptual separation is easier to entertain.
Consider, for example, if the abstract artist, Gerhard Richter, were asked to create a graphic work for a cheerleading uniform. I doubt there would be any question that the design would retain copyrightability despite appearing on a useful product. So what makes the chevrons and zigzags different than Richter’s work, besides the possibility of originality? The answer, according to Star Athletica, is with how one defines utility. The chevrons and zigzags immediately tell the public that they are looking at a cheerleading uniform, thus satisfying an inseparable utilitarian objective not achieved with the Richter. The lower court believed that the utility included the informational function while the appeals court did not. That is really all this case is about and that is all the Court should address, something it can do by relying on traditional copyright principles without disturbing the thoughtful guideposts developed to address what is primarily a different issue.
So, are the standard images on a cheerleading uniform “utilitarian” under the statute because they immediately convey to viewers that they are looking at a cheerleader? On the one hand, the lower court is correct that the designs are tied to the cheerleading function, and the close association should somehow be relevant to whether they can be copyrighted. On the other hand, subject matter that conveys the expression of information is clearly within copyright’s domain, and is not something typically addressed though patents. Thus, providing information about identification may not be the kind of utility that Congress had in mind when fashioning the definition of a “pictorial, graphic and sculptural work.” Indeed, one must be careful here because this line of thought might jeopardize copyrighted works that are used as trademarks, which are also designed to facilitate identification.
The resolution of this debate, I believe, should not be clouded by the tests intended to separate, let’s say, the stylistic elements of an artistic belt buckle from its ability to clasp a belt with an integrated tongue. These tests address fundamentally different issues, and frankly ones that are more challenging than the pertinent question in Star Athletica. Instead, what is important here is that Congress intended the definition of “pictorial, graphic and sculptural” works to be a further limitation to the general notions applicable to all copyrighted materials. This means that even if ornamentation on cheerleading uniforms comes within the definition of a “pictorial, graphic and sculptural” work, it still must be original, as emphasized by the appeals court, and also must consist of more than “ideas” under section 102(b). In this regard, the most relevant precedents are probably those related to computer programs since they, like the designs for utilitarian products, are employed for functional uses.
As we know, the ideas of all works can be subjected to a series of abstractions ranging on a spectrum of increasing generality. The challenge, therefore, is to determine the proper level of abstraction so that copyright maintains the proper balance of incentives within the relevant creative environment. With computer programs, the courts have recognized that the basic idea is the functional purpose of the program along with everything necessary to achieve that purpose (Whelan v Jaslow). Based on doctrines such as scenes a faire, a program’s idea also includes elements dictated by the external environment, such as the computing platform, compatibility requirements, the demands of the market being served, and widely accepted practices in the industry (Computer Associates v. Altai). The bottom line is that where extrinsic considerations significantly limit design choices, those choices will not be copyrightable.
By applying these principles in Star Athletica, the Supreme Court will very likely determine that the Varsity Brands uniform graphics are not protected by copyright. The purpose of the graphic designer is to adorn a specific physical uniform structure. Many elements of the graphics are dictated by the requirements of the particular uniform or are standard accepted practices in the cheerleading industry. So, the decision to use chevrons, stripes and color blocks should not be protected by copyright because these elements are common with graphics in that field and are demanded by purchasers who wish to be readily identified as cheerleaders. Also, the shape and position of many elements, such as those that follow the contours of the neckline or the cut of the blouse, are dictated by the external environment (the physical dress) and thus are not copyrightable. When all is said and done with this filtering process, there will be virtually nothing left. Truly, whatever the definition of “pictorial, graphic and sculptural” works may give to Varsity Brands in light of its focus on mechanical and utilitarian attributes, section 102(b) will surely take away. Of course, it is possible that the Court may roll the section 102(b) exclusionary principles into the definition of a “pictorial, graphic and sculptural” work by including them into the meaning of “utilitarian.” But at the end of the day, it doesn’t matter; the result will be the same.
This analysis explains why the Court would rule in favor of the Gerhard Richter graphic, yet reach the opposite conclusion for Varsity Brands. Interestingly, the Court determined that human figurines designed for lamp bases could be copyrighted, but I am confident that the result would have been different had the sculptures been a modern artist’s conception of more typical lamp bases. The important point is that nothing in this discussion requires a close evaluation of the tests that have proven so controversial in the field. Thus, I predict that the Supreme Court’s upcoming decision in Star Athletica will sorely disappoint those who crave more certainty and direction.