Copyright on a Useful Article

I want to discuss a major copyright case that the Court added to its docket for the Fall.  The question presented in Star Athletica, LLC v. Varsity Brands, Inc. is “What is the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act?” This is an issue that has long vexed the circuit courts and is exactly the type of case that the Court should be taking while it’s a man down.

Here is the problem.  Copyright law says that functional/useful items generally cannot get protection. This makes sense because they are only supposed to get patents given the costs that exclusive rights in those sorts of products impose. But what if something has both functional and aesthetic features? Take a belt buckle.  It is functional in the sense that it holds up your pants.  But a jeweled belt buckle might well be an adornment that is more properly considered artistic and thus copyrightable.  How do you know?

Courts have put forward several possible tests.  One says that the issue is whether the item is primarily aesthetic or functional.  Another looks to the intent of the designer.  A third simply considers the totality of the circumstances. A fourth suggests that the aesthetic aspect must be “conceptually separable” from the functional one and able to stand on its own as a work.  And so on.

The Sixth Circuit reviewed the precedents and came up with this answer:

We believe the best approach to determining whether a design is a copyrightable “pictorial, graphic, or sculptural work[],” 17 U.S.C. § 102, is to ask a series of questions that are grounded in the text of the Copyright Act: (1) Is the design a pictorial, graphic, or sculptural work? (2) If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article—“an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”? Id. If the design is not the design of a useful article, then there is no need to inquire into whether there are “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.

Before addressing separability, a court should ask: (3) What are the utilitarian aspects of the useful article? For example, the utilitarian aspect of a chair is to provide a place for a person to sit. “Portray[ing] the appearance of the [useful] article” and “convey[ing] information” are two utilitarian aspects that courts may not use to determine whether pictorial, graphic, or sculptural features are separable. 17 U.S.C. § 101 (defining “useful article”). We believe that considering these two functions’ “utilitarian aspects” in addition to an article’s other utilitarian functions for the purpose of determining the separability of a graphic design would be at odds with the Copyright Act’s definition of what makes an article a useful article.

. . .

Once we have identified permissible utilitarian aspects, we ask the final two questions that have to do with separability. (4) Can the viewer of the design identify “pictorial, graphic, or sculptural features” “separately from . . . the utilitarian aspects of the [useful] article[?]” 17 U.S.C. § 101. If the viewer cannot identify pictorial, graphic, or sculptural features within the design of the useful article, then the design of the useful article is not copyrightable. (5) Can “the pictorial, graphic, or sculptural features” of the design of the useful article “exist[] independently of[] the utilitarian aspects of the [useful] article[?]” Id. The objectively necessary approach is useful to answer this final question. 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. Carol Barnhart, 773 F.2d at 419. The design- process approach may also help courts determine whether a design feature is necessary to the utilitarian aspects of the article because the designer’s testimony may offer clues as to which components of the design are essential to the functionality of the useful article. See Pivot Point, 372 F.3d at 931–32 (employing the design-process approach to determine whether the design of a head mannequin is conceptually separable from the mannequin’s utilitarian aspects). But we do not endorse the design-process approach in its entirety. Finally, the Copyright Office has provided a helpful way to think about answering questions four and five: the pictorial, graphic, and sculptural features incorporated into the design of a useful article are conceptually separable if “the artistic feature [of the design] 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.”

I submit that this is a ridiculously complex test that cannot be applied coherently by courts or litigants. Over the next few months, I will post again on how I think that the issue should be resolved (given that Congress is unlikely to amend this part of the Copyright Act.)

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2 Responses

  1. Chris says:

    Good read…. Looking forward to other follow-ups.

  2. Brian L. Frye says:

    Wow, what a mess. I’m at a loss as to why the court can’t simply ask whether the presence or absence of the allegedly copied element affects the functionality of the object. If yes, it’s functional & can’t be protected by copyright. If no, it’s not function & can be protected by copyright, if “original.”