By Tamar Duvdevani
Federal courts have long addressed when and if aspects of functional items can be subject to copyright protection. In the United States, “useful articles” such as lighting fixtures, furniture, appliances, and apparel, are generally not afforded copyright protection, and a plaintiff seeking recourse for misappropriation would need to look to trademark and patent law. Nevertheless, there have been hundreds of federal lawsuits over the years asserting copyright infringement over these useful articles, with varying degrees of success. For example, back in 2011, we discussed an Eleventh Circuit decision regarding the copyrightability of wood flooring (see https://www.remarksblog.com/2015/04/eleventh-circuit-rules-district-court-did-not-see-the-forest-for-the-trees-when-it-came-to-copyright/). While that article largely focused on whether the flooring in question met the requisite originality threshold for artistic works that mimic nature, the court also discussed whether the artistic aspects of the work were “separable” from the underlying useful article, and therefore worthy of protection, given the Copyright Act’s mandate that:
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.)
This “separability” requirement has been analyzed in copyright infringement decisions throughout the country, including in apparel copyright disputes. The Second Circuit, for example, has explained that the Copyright Act, 17 U.S.C. § 101, affords protection to design elements of clothing only when those elements, individually or together, are separable—“physically or conceptually”—from the garment itself. Jovani Fashion, Ltd. v. Fiesta Fashions, 500 Fed. Appx. 42, 44 (2d Cir. 2012). “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.” Id. (internal quotation marks omitted). The court added that “[n]o 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.’” Id.
When it comes to copyright infringement suits relating to apparel, the Ninth Circuit is the most active circuit in the country, resulting from a number of fabric mills that repeatedly bring actions against retailers for allegedly incorporating their fabric patterns into items of clothing. At any given time, there are dozens of pending copyright infringement litigations in the Central District of California brought by these fabric mills. Generally speaking, these plaintiffs assert protection over the designs that appear on clothing (i.e., floral prints); not the silhouettes (i.e., wrap dresses). But these cases often deal primarily with threshold originality issues and registration defects, and not with conceptual separability.
The Sixth Circuit had not dealt with the issue of separability until Varsity Brands, a cheerleading uniform company, filed a copyright infringement suit against its competitor, Star Athletica, for the geometric designs appearing on both parties’ uniforms. See Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 481 (6th Cir. 2015) (“We have not yet adopted an approach to determining whether the pictorial, graphic, or sculptural features of the design of a useful article are separable from the utilitarian aspects of a useful article, and so we do so now.”). One of the alleged copyrighted designs is pictured below:
The design above arguably incorporates both a silhouette and a graphic print, which made the analysis more complex than what is seen in the typical Ninth Circuit case. The district court ultimately invalidated plaintiff’s designs, finding that the designs were not separable from their utilitarian function – after all, a cheerleading uniform would not be recognizable without such graphics.
After the district court ruled that plaintiff’s copyrights are invalid because “a cheerleading uniform is not a cheerleading uniform” without stripes, chevrons, zigzags, and colorblocks, plaintiff appealed. Star Athletica, 799 F.3d at 470-71.
On appeal, the Sixth Circuit reversed and remanded, and in doing so, addressed the separability test in a lengthy opinion that seemingly called for Supreme Court review, given the different approaches taken by various courts throughout the country. Indeed, the dissent was explicit: “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.”
The Star Athletica court first reviewed the status of the relevant separability law in various jurisdictions, and explained that “Since Congress passed the Copyright Act of 1976, no court has relied exclusively on the physical-separability test without considering whether the pictorial, graphic, or sculptural features of a design are conceptually separable from the utilitarian aspects of the useful article. And we decline to be the first to reject conceptual separability altogether.” Star Athletica, 799 F.3d at 483.
The Star Athletica court then studied the multiple approaches taken by the Copyright Office, courts, and scholars, to make the conceptual separability determination:
- 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.”
- Treatise Author Bill Patry’s Approach: There is no need to engage in a separability analysis if (A) the work is the design of a three-dimensional article, and (B) the design is not of a “useful article.” When determining whether pictorial, graphic, or sculptural features are protectable under the Copyright Act, the focus should be on whether those pictorial, graphic, or sculptural aspects are separable from the “utilitarian aspects” of the article, not the “article” because “the protected features need not be capable of existing apart from the article, only from its functional aspects.” This task requires two additional steps. First, the court “must be able to discern pictorial, graphic, or sculptural features.” Second, the pictorial, graphic, or sculptural features “must be capable of existing as intangible features independent of the utilitarian aspects of the useful article, not independent of the whole article . . . .” This necessitates asking “whether the pictorial, graphic, or sculptural features are dictated by the form or function of the utilitarian aspects of the useful article.” If form or function—rather than aesthetics—dictates the way that the pictorial, graphic, or sculptural features appear, then those pictorial, graphic, and sculptural features are not capable of existing independently of the utilitarian aspects of the useful article.
- The Subjective-Objective Approach: Conceptual separability is determined by balancing (A) “the degree to which the designer’s subjective process is motivated by aesthetic concerns”; and (B) “the degree to which the design of a useful article is objectively dictated by its utilitarian function.” “The first factor requires courts to consider the degree to which aesthetic concerns, as opposed to functional ones, motivate the designer.” The second factor considers whether “the design is mostly dictated by function” or “hardly dictated by function at all.” If the design of the useful article “is mostly dictated by function,” then that fact “weigh[s] against conceptual separability, and therefore, against copyright protection.” If the design “is hardly dictated by function at all” then that fact “weigh[s] in favor of a finding of conceptual separability.”
Id. at 484-85 (all citations omitted). After this review, the Star Athletica court adopted the Second Circuit test (also used by the Fourth Circuit), which it deemed a “hybrid” approach, and offered three preliminary questions:
- Is the design a pictorial, graphic, or sculptural work?
- If so, then is it a design of a useful article (having an intrinsic utilitarian function)?; and, if so, before addressing separability:
- What are the utilitarian aspects of the useful article?
The court then moved to two additional questions:
- Can the viewer of the design identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? If not, the design of the useful article is not copyrightable; and finally:
- Can the pictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?
With regard to the final question, the court explained that if the pictorial, graphic, or sculptural features of the design of the useful article are not required by the useful article’s utilitarian functions, or are “wholly unnecessary to performance of the utilitarian function” of the useful article, then the pictorial, graphic, or sculptural features are not dictated by the function of the useful article, and therefore can exist without the useful article. Id. at 485-87. This final point harkened back to the first sentence of the decision: “Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks?”
After analyzing the cheerleader uniform designs at issue through these questions, the court decided that the answer to this question is a resounding yes, and reversed the district court’s finding of copyright invalidity. Star Athletica, 799 F.3d at 493. In doing so, the court analogized the cheerleading designs to fabric patterns, and not unprotectable (and inseparable) silhouettes, explaining that “[b]ecause we believe that the graphic features of Varsity’s cheerleading-uniform designs are more like fabric design than dress design, we hold that they are protectable subject matter under the Copyright Act.” Id.
As the Star Athletica court anticipated, defendant filed a petition for a writ of certiorari. On May 2, 2016, the Supreme Court announced that it would hear arguments in the case relating to the separability test — the petition was granted on the first question, “What is the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act?”
The Supreme Court’s decision will have significant ramifications for the apparel industry, where taking inspiration from existing apparel is not only expected, but necessary in an industry where “trend” is what makes the world go round. At the same time, it is unlikely that the case will directly impact fabric pattern litigation, and the longstanding tenet that prints are subject to copyright protection so long as sufficient originality exists. However, the decision should provide much needed guidance on other aspects of apparel design, including placement of border prints, decorative elements such as rhinestones and beadings, and, of course, separability of allegedly artistic aspects of uniforms and even Halloween costumes. The case will certainly also have broader implications for copyright protection of all useful articles. In an era where artistic design is demanded for everything from tea kettles to wood flooring, nearly every consumer product company should be paying attention to this veritable legal cheer-off.