In general, no copyright protection is available for the design of something that is “useful.” “Useful” is defined by the Copyright Act as something with “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101. For example, the designs for claw or ball peen hammers are not eligible for copyright protection.
However, there is an exception for copyrighting design elements of a useful article “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. These are the so-called “separate-identification” and “independent-existence” requirements for copyrighting the design features of a useful article.
Star Athletica: Clarifying “Separate-Identification” and “Independent-Existence”
Star Athletica concerned two-dimensional designs on the surface of cheerleading uniforms. The court held that the designs were copyrightable and, in the process, clarified how the “separate-identification” and “independent-existence” requirements should be applied.
The court articulated that the first requirement in this manner: “The first requirement — separate identification — is not onerous. The decision maker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” With respect to the cheerleading uniforms, this was easy. The surface of the uniforms had an “arrangement of colors, shapes, stripes, and chevrons on the surface” that one could identify as having pictorial, graphic, or sculptural qualities.
The court then defined the second requirement thusly: “The decision maker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article. … In other words, the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in § 101 once it is imagined apart from the useful article.” Again, the court found this easy. If the colors and stripes and chevrons were separated and then applied to a painter’s canvas, according to the court, said canvas would qualify as a two-dimensional work of art and would be copyrightable. In addition, applying the designs to another medium would not replicate the uniforms. As such, the decorations are separable and could exist independently from the uniforms and were eligible for copyright protection.
The court made it clear that these inquiries are made from the vantage of the perceiver, that is how the article and the design elements are perceived. The court rejected any need to consider how or why the articles were designed.
Concurrence and Dissent
The majority’s opinion was signed by five Justices. As for the remaining three Justices, Justice Ginsburg concurred in the result but not in the opinion. Justice Ginsburg felt that the majority’s analysis was unnecessary because, for her, the designs at issue are not designs of useful articles but were themselves copyrightable pictorial or graphic works reproduced on useful articles
Justices Breyer and Kennedy dissented arguing that the designs could not be separated out from the uniforms. As Justice Breyer phrased it, if you painted the designs on a canvas, you would only have “… pictures of cheerleader uniforms. And cheerleader uniforms are useful articles.”
The core issue seemed be a difference of opinion concerning how to define the “usefulness” of a cheerleading uniform. The majority took the view that removing the designs did not make the uniforms useless. Even blank all-white uniforms can still be used by cheerleaders to lead cheers. The dissent took the view that what makes a cheerleading uniform is the particular arrangement of colors, stripes and chevrons. As such, the designs cannot be separated out.
Recent Lower Court Decisions on Copyrighting Design Elements
Since the Supreme Court’s decision in March 2017, at least two lower federal courts have had occasion to apply the Star Athletica test.
In the case of Design Ideas, Ltd., v. Meijer, Inc., No. 15-cv-03093 (US Fed. C.D. Ill. 2017), the plaintiff claimed that Meijer, a chain of grocery and general merchandise stores, infringed on its copyright for Sparrow Clips. A Sparrow Clip is a clothespin with a silhouetted bird design on top with a beak. Plaintiff claimed copyright only in the separate bird portion and the color selection shown in each set of Sparrow Clips.
The lower court applied the Star Athletica test and found that the bird portion of the Sparrow Clips was subject to copyright protection. The court said that the first requirement was met. The bird portion could be perceived as a three-dimensional work of art separate from the useful article. The bird portion also met the second requirement: the bird portion would qualify as a protectable sculptural work on its own if it were imagined separately from the useful article and if it had it been originally fixed in some tangible medium other than a clothespin.
The court also rejected the defendant’s additional argument that the separated bird portion was, by itself, useful because the separate bird portion could be hung from a rod or on a string by its beak. The court rejected that argument essentially saying: “What is the use of a bird beak hanging on a rod or by a string?”
The second case was Jetmax Limited v. Big Lots, Inc., No. 15-cv-9597 (KBF) (US Fed. S.D. NY). This case involved ornamental covers for a light set comprised of a series of molded, decorative tear shaped, wire frame covers over a string of lights. The plaintiff alleged that Big Lots, a chain of retail stores, sold a light set that was substantially similar. Everyone agreed that the light set was “useful” with the intrinsic utilitarian function of providing light. The parties however disagreed about whether the covers contained artistic elements that were sufficiently separable and independent to warrant copyright protection.
The court applied the Star Athletica test and concluded that the design elements of the plaintiff’s light set were copyrightable. The court noted that the designs on decorative covers could be identified separately from, and were capable of existing independently of, the utilitarian aspects of the article. The court concluded: “The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.”
It is always tough to judge how much impact any given Supreme Court decision will have. But the Star Athletica simplifies how to determine if design elements are protectable. As such, it is likely that more artistic works and designs will receive copyright protection.
Contact Revision Legal
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