The following is a guest post by Rachel E. Fertig, a 2015–2017 Barbara A. Ringer Copyright Honors Fellow, serving as an attorney-advisor in the Office of General Counsel and Office of Policy & International Affairs.
The Supreme Court’s March 22 opinion in Star Athletica, LLC v. Varsity Brands, Inc. answered a question that has perplexed courts across the nation for decades: When is an artistic feature incorporated into the design of a useful article eligible for copyright protection? Appellate courts had adopted numerous, and at times conflicting, approaches. The answer provided by Star Athletica, however, establishes a single standard for determining the extent to which copyright protects art applied on or incorporated into cheerleader uniforms, hookahs, hubcaps, lamps, casino costumes, crash-test dummies, and the like.
Drawing the line between protectable art and non-protectable useful articles is necessary because the Copyright Act does not protect useful articles such as cheerleading uniforms or other “article[s] having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. 101. Instead, as the Court noted, the Act “establishes a special rule for copyrighting a pictorial, graphic, or sculptural work incorporated into a ‘useful article,’” which limits protection to the “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.” 17 U.S.C. 101.
To “give effect to the clear meaning of the statute as written,” a five-member majority of the Court held that “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”
The Court then applied this test to the infringement dispute between Star Athletica and Varsity Brands—rival cheerleading uniform manufacturers—and assessed Star Athletica’s argument that Varsity Brands’ “designs appearing on the surface of their uniforms” were not separable from the uniforms and, therefore, were not eligible for copyright protection. The Court disagreed and held that Varsity Brands’ graphic designs—various arrangements of colored stripes, chevrons, and geometric shapes—could be imagined separately from the cheerleading uniforms (useful articles) on which they were applied and were eligible for copyright protection. Importantly, the Court did not decide whether the graphic designs were sufficiently original (i.e., creative) to qualify for copyright protection under the “extremely low” threshold it established in the 1991 case Feist Publications, Inc. v. Rural Telephone Service Co.
So what does this mean for registering works of art incorporated into useful articles at the Copyright Office—what’s the same and what’s different post-Star Athletica?
What’s the Same?
The fundamental principles of which features of useful articles can and cannot be registered remain consistent with longstanding Supreme Court precedent and Copyright Office practice. In the 1954 case Mazer v. Stein, the Court held that a ballet-dancer statuette, manufactured as a lamp base, was properly protected by copyright and that “it was irrelevant to the copyright inquiry whether the statuette was initially created as a freestanding sculpture or as a lamp base.” The Star Athletica decision confirms that “[a]n 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” and that “this has been the rule since Mazer.”
The consistency of the copyrightability of such artistic features, as highlighted in the opinion, stems in part from the fact that the Copyright Office regulation implementing the Mazer decision “introduced the modern separability test to copyright law” and was “essentially lifted [by Congress]. . . and placed into § 101 of the 1976 Act.”
|Copyright Office’s Post-Mazer Regulation (1960)||Section 101 of Copyright Act of 1976: Definition of Pictorial, Graphic, and Sculptural Works|
|If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration. 37 C.F.R. § 202.10(c)(1960).||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. 17 U.S.C. § 101.|
Accordingly, Star Athletica confirms that “Congress has provided copyright protection for original works of art, but not for industrial designs.”
Although Star Athletica confirms the longstanding distinction between protectable works of art and non-protectable industrial designs, it also eliminates certain components of separability analysis that had been “adopted based on the Copyright Act’s legislative history.” See H.R. Rep. No. 94-1476, p. 55 (1976). Indeed, the Court’s stated basis for granting certiorari in this case was to resolve the “widespread disagreement over the proper test for implementing § 101’s” separability requirement.
Chief among the Court’s clarifications is its decision to “abandon the distinction between ‘physical’ and ‘conceptual’ separability.” Previously, where an artistic feature could be “physically separated from the [useful] article by ordinary means while leaving the utilitarian aspects of the article completely intact,” such feature would be deemed “physically separable,” and thus eligible for copyright protection. Star Athletica, however, clarifies that the “statutory text indicates that separability is a conceptual undertaking” and that it “does not require the underlying useful article to remain” as a “fully functioning useful article at all, much less an equally useful one.”
With regard to the remaining conceptual separability inquiry, the Court provides three key clarifications. First, the focus of the separability inquiry “is on the extracted feature” and whether it “would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium.” Second, the focus of this inquiry is “not on any aspects of the useful article that remain after the imaginary extraction.” And third, the inquiry focuses exclusively on “how the article and feature are perceived, not how or why they were designed” or whether the feature would be marketable because neither design process nor marketability are “grounded in the text of the statute.”
While this last clarification alters the conceptual separability analysis applied in certain jurisdictions, the Office, as noted in the Government’s amicus brief, “has never required applicants for registration to provide” information to evaluate design process or marketability. The Office will, however, provide updated guidance on registration of separable features of useful articles and revise its Compendium of U.S. Copyright Office Practice (3d ed.) to reflect the many helpful clarifications provided by the Star Athletica decision.
Please note that the Copyright Office is unable to provide specific legal advice to individual members of the public. See 37 C.F.R. 201.2(a)(3). The views expressed in this blog post are not the official views of the U.S. Copyright Office.
After reading Justice Breyer’s dissent, I was amused to find a ceremonial shovel on display in the UCLA Library.
Did Varsity correctly register its copyrights to protect the use of the artwork on uniforms. Should it have submitted photos of the actual uniforms as the published version of the work. Is the confusion over this issue reflected in the concurring and dissenting opinions.
Varsity Brands sought copyright registrations for two-dimensional decorations for garments sold as cheerleading apparel. The Copyright Office based its decision to register those decorations on the specific materials that the applicant submitted to the Office. For three of the claims at issue in the case, Varsity submitted a drawing of the decorations, and for the rest it submitted photographs of the decorations on actual garments.
The deposit requirements for “works reproduced in or on sheetlike materials” are set forth in sections 202.20(c)(2)(x) and 202.21 of the Copyright Office’s regulations. The regulations state, in part, that “[i]f the sheetlike material in or on which a published work has been reproduced has been embodied in or attached to . . . wearing apparel . . . and the work has been published only in that form, the deposit must consist of identifying material complying with § 202.21” of the regulations. Section 202.21(a), in turn, states that “in any case where the deposit of identifying material is permitted or required . . . the material shall consist of photographic prints . . . drawings, or similar two-dimensional reproductions or renderings of the work.”