The Supreme Court recently issued its decision in Star Athletica v. Varsity Brands, which addressed whether copyright protection can extend to the graphic designs depicted on cheerleading uniforms. The sole inquiry in Star Athletica was the meaning of a provision in the Copyright Act which permits copyright protection for the design of a pictorial, graphic or sculptural work, but only to the extent that the design can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article. Prior to the Supreme Court’s decision, I published a post on IPWatchdog that discussed the legal background of the case, and considered what the outcome might be. I noted that on first blush, the separation of graphic ornamentation from the underlying useful object seemed like an easier call than the one the Court previously made in Mazer v. Stein, which involved a copyright for a lamp statuette. Indeed, the Court of Appeals in the Star Athletica litigation agreed, and so concluded that original aspects of the uniform graphics could be copyrighted. Thus, it seemed odd that the Supreme Court decided to review this decision.
For this reason, I believed that the Justices must have determined that the appellate court used an inappropriate standard of analysis that likely led to the wrong result. On this basis, I thought that the Court might possibly take the copyright principles that are applied to computer programs and integrate them into the evaluation of industrial designs. After all, both types of works have utilitarian attributes; the only difference is that industrial designs have their own special limiting provision in the Copyright Act while judges have to rely on Section 102(b), which generally prevents protection for ideas, to arrive at the appropriate result with computer programs. If the Court had indeed followed this path, the door might then have opened for it to rule that the graphic designs were too inextricably tied to the physical uniforms to warrant copyright protection.
Now, of course, we know that my predictions did not quite hit the mark. First, the Supreme Court affirmed the decision that the graphic designs were copyrightable subject matter. Second, it reached this conclusion without any reference to the standards used with other forms of useful products, such as computer programs, or the importance of reaching an appropriate balance between the roles of patents and copyrights. Rather, it announced a very simple test that it claimed provided a clear and straightforward way to solve the line-drawing problems that have perplexed judges in this field for decades. Specifically, the Court stated: “[A] feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic or sculptural work either on its own or when fixed in some other tangible medium.” The Court did add a few explanatory sentences within the decision, which I will address soon, but my first instinct is that this so-called definitive test will fail to decisively guide judges in subsequent cases. The following are just a few of the questions that I have about the decision in this case.
How Does One Determine the Contours of the Useful Article?
I recognize that the Copyright Act defines a useful article as an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or convey information. However, I find this definition often to be circular and too dependent on context to be very helpful. So, in Mazer, the Supreme Court apparently assumed that the utilitarian aspects of a lamp are the lights, wires and sockets, so that when the base is conceptually removed, the resultant separate work is free of any intrinsic utilitarian attribute, even though, as the Court admits, it provides the necessary function of holding the useful components in the context of the operational lamp. I presume this means that a modernistic external housing that holds, or completely surrounds, the lighting elements also must be deemed a sculptural work, despite questions in previous cases, such as Esquire v. Ringer. Taking this a step further, what about a modern original shape of glass that serves to cover LED lights in a light bulb? In the context of the bulb, the glass serves to contain and protect the lighting elements, but when it is conceptually removed from those elements, it has no more intrinsic utilitarian function than any other piece of modern art sculpture. Could one argue that a bulb covering is normally a part of a useful article, and thus can’t be protected? Yes, but the same is true of a lamp base, so round and round we go, and where we stop, who really knows.
Is There a Distinction Between Mechanical and Aesthetic Functionality?
Assuming that an external lamp housing can be protected as a sculptural work under the Star Athletica standard, what if the sculpture contains metal slits that serve to direct illumination toward the ground when the sculpture is integrated with the lighting elements? Similarly, what if the light bulb cover has visually distinct elements that serve to focus an internal light source, making it brighter at the top of the bulb? My gut reaction is that these elements are somehow intrinsically utilitarian and should not be protected by copyright. However, when dismissing the argument that the cheerleader designs serve to make the wearer look taller and slimmer, the Court stated, “An artistic feature that would be eligible for copyright protection 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 the article more useful.” If one takes this statement at face value, then seemingly these features that serve to make the light systems more useful are copyrightable as sculptural works, assuming protection is not barred by some other provision of the Act.
In defense of the Court, the question in Star Athletica was whether a copyright could extend to a graphical design that allegedly made a useful product more desirable because it satisfied the aesthetic demands of target purchasers. I think the Court may have wanted to avoid this avenue for several reasons. First, I doubt that the Justices wanted to entertain a discussion about favorable body image objectives. Also, recognizing psychological utility might open the door to those who allege other kinds of useful consequences, such as attracting attention or soothing emotions. In addition, the realm of purely aesthetic responses clearly belongs within the structure of copyrights; it’s only when we’re dealing with mechanical utility that we need to be concerned about overreach into the world of patents. So, the Court’s statement makes sense within the narrow facts of the case. But I still don’t know what the test means, or how to draw the lines, when addressing artistic features that have physical implications to the operation of useful products.
Can One Always Identify Industrial Design Without the Functional Influence Test?
In Brandir v. Cascade Pacific Lumber, the appeals court determined that copyrights did not extend to a modernistic ribbon-styled bicycle rack because the artist altered the original design to satisfy functional objectives. In Star Athletica, the Supreme Court explicitly rejected this test. Nevertheless, the ribbon rack would fail the conceptual separation test articulated by the Court because after the separation, “there necessarily would be some aspects of the original useful article left behind.” Presumably, the rack would have to include an additional bracket or mechanism that contributes to functionality for the overall ribbon structure to be conceived as a separate artistic sculpture without an intrinsic utilitarian function.
So, what happens if a sculptor, such as Mark di Suvero recognizes that one of his existing sculptures can be used without modification to effectively and beautifully hold bikes? Under the Supreme Court’s formulation, would competitors now be free to copy his bike racks? This was the intellectual dilemma that led to the adoption of the functional influence test, so what happens now?
What Role Will Section 102(b) Now Play?
In my previous post, I examined how section 102(b) is used to police the limits of copyright law for computer programs, and argued that it also can be used to impose the same contours on all other forms of utilitarian works, if necessary. Based on doctrines such as merger and scenes a faire, section 102(b) effectively rejects copyright protection when external considerations, such as physical constraints, standard industry practices or the demands of market participants effectively limit design choices (see Computer Associates v. Altai). Based on these principles, I argued that virtually all the elements of Varsity Brands’ registered graphic designs, at least when actually applied to cheerleading uniforms, should be freely available to competitors who wish to sell the same outfits. This includes the shape, layout and position of many elements because they are dictated by the structure of the unprotected uniforms.
At oral argument, the Justices spent time trying to relate the utility of camouflage on clothing with the allegedly useful attributes of Varsity’s designs, which Star Athletica claimed made the wearer appear taller and slimmer. As we know, the Supreme Court determined that such designs were copyrightable as graphic works despite their potential utilitarian benefits. That result does not really trouble me in light of section 102(b), on the assumption that there are several alternative designs that can achieve similar useful results. One might appeal to copyright doctrines, such as the availability of multiple expressions, to justify this result. But would the conclusion be different if someone developed the best design for camouflage ever conceived? Wouldn’t this make the design an unprotectable idea, at least in the context of clothing, based on the principle of merger? And if this is correct, are these the kinds of things we should expect the Copyright Office to catch at the time of registration, or will the resolution have to be settled in litigation?
The Supreme Court did not discount the possibility that the Varsity Brands designs might not be copyrightable because they are not sufficiently original or do not meet other prerequisites of a valid copyright. Although the Justices did not directly state what other conditions these might be, perhaps the limitations in section 102(b) were on the top of their minds.
Will Star Athletica Lead to More Expansive Protection For Clothing Designs?
According to the Supreme Court, a graphic that appears on a piece of clothing is conceptually separable, even when it covers the entire outfit, because it can be imagined as an independent work on a separate media (or on its own) without intrinsic utilitarian functions. So what if the designer includes three-dimensional ornamental elements, such as frills or sequins, to the clothing? I see no reason to distinguish them from the graphics in lieu of the Court’s test. Likewise, I presume that one might include originally shaped cutouts to a dress and have them meet the conceptual separation test. Also, one can apparently designate the position of these elements within the work while still maintaining their conceptual separation. The Court did admit that the copyright could not prevent others from manufacturing clothing with the same shape, cut and dimensions that might be depicted in the separate work, presumably based on section 113(b). But the Court did not actually address whether these elements are necessarily and forever off-limits because the parties did not contest the issue in the litigation. So, as we move down this slippery slope seemingly opened by the Court, will it be possible to challenge whether the style and cut of a dress are intrinsic utilitarian functions of clothing? Just as a lamp’s useful functions can be reduced to lights and wires, might one successfully argue that the core functions of clothing are merely to cover certain private areas while providing appropriate protection from the elements?
I must say that I sympathize with the concurrence of Justice Ginsburg, who believed that this case, with its rather simple facts, was not the best vehicle to address the conceptual separability test. The result, I fear, is that the decision will serve to raise more questions than it resolved.