Leveraging copyright protection for design aspects of useful products

As of late, there has been a great deal of discussion about the Supreme Court’s Star Athletica decision regarding the scope of copyright protection for design features incorporated into useful products. The Supreme Court provided much needed clarity with respect to the landscape of conceptual and physical separability that led up to the decision. Questions, however, persist about exactly how corporations can leverage copyright protection for design aspects of products.

Rod Berman, partner at Jeffer Mangels sat down with IPWatchdog to discuss the significance of the Supreme Court’s Star Athletica decision as it relates to copyright protection for design.

Moving forward, according to Berman, the decision will make it easier for manufacturers of useful articles, e.g., apparel, to obtain copyright protection for the designs placed on the article. For example, in Star Athletica, the useful articles at issue were cheerleading uniforms, and the designs at issue were surface decorations, like, “combinations, positionings, and arrangements of elements” that include chevrons, lines, curves, stripes, angles, diagonals, inverted chevrons, coloring, and shapes. So, the decision will make it easier to determine if a useful article has a design feature that is subject to copyright protection.

“Additionally, it should make it easier for manufactures of useful articles to stop knock-offs, particularly if the knock off does not use the manufacturer’s trademark and the manufacturer did not obtain a design patent for the design element of the useful article,” he explained. “On the other hand, the decision does not allow for the copyright protection extend to the useful article itself, for example, with Star Athletica in mind, to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut and dimensions to the ones on which the decorations in this case appear.”

More specifically, this decision has impacted copyright protection for design features incorporated into useful products. Design features can be protected by design patent too, according to Berman, but the process for obtaining a design patent is expensive, and because of the plethora of designs that apparel makers introduce each year, reliance on design patent protection has been sparse.

Leading up to the decision, the state of the law allowed for copyright registration of designs on useful articles if the design was either physically or conceptually separable from the useful article. For example, if a lamp had as its base a statue of Helena, the statue could plainly be separated physically from the remainder of the lamp and therefore one could seek to register the copyright to the statue on the lamp.

“Meanwhile, conceptual separability has been difficult to define as conceptual separability applies if the feature physically could not be removed from the useful article by ordinary means,” he said. “For instance, ornamental costumes could not be protected under copyright law as the design could not be conceptually separated from the costume.”

Some courts have even found designs on useful articles to be conceptually separable, according to Berman. For example, as stated by the Star Athletica Court, in Kieselstein-Cord v. Accessories by Pearl, Inc., the plaintiff’s belt buckle designs were copyrightable. Taken as a whole, the belt undeniably was a useful article, which performed the service of preventing one’s pants from falling down. The ornate buckle design, however, was conceptually separable from that useful belt function.

“The design-which did not enhance the belt’s ability to hold up one’s trousers-could properly be viewed as a sculptural work with independent aesthetic value, and not as an integral element of the belt’s functionality,” he said.

The statute provides that a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article” is eligible for copyright protection if it can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article. Per Berman, to meet the first requirement, the decision-maker needs to be able to look at the article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. To meet the requirement, the design must qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.

So, when applying this test to the surface decorations on the cheerleading uniforms, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. If the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium, they would qualify as “two-dimensional… works of art.” Thus, be copyrightable material under § 101 of the Copyright Act.

As the Star Athletica Court stated, “Imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression – different types of clothing – without replicating the uniform…The decorations are therefore separable from the uniforms and eligible for copyright protection.”

So, how can corporations leverage copyright protection for design aspects of products?

Berman explained, “Instead of using claims of trademark infringement and more expensive design patent infringement (if a design patent is even obtained), one can expect manufacturers of useful articles such as apparel manufacturers and designers to rely more often upon copyright to enforce their rights against knock-offs, and to seek more copyright registrations for design features on useful articles.”