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Presenting a live 90-minute webinar with interactive Q&A

Navigating Separability After Star Athletica:

Applying the New Test Reassessing Protecting Aesthetics, Implications for the Fashion Industry to Product Design

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, MAY 9, 2017

Christopher V. Carani, Shareholder, McAndrews Held & Malloy, Chicago

Theodore C. Max, Partner, Sheppard Mullin Richter & Hampton, New York

Julie Zerbo, Founder, The Fashion Law, New York

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1) Statutory Framework & Origins of

Separability Doctrine

2) Star Athletica, L.L.C. v. Varsity Brands

3) Impact on Fashion Industry

4) Impact Beyond Fashion Industry

TODAY’S DISCUSSION

Road Map

COPYRIGHTED DESIGN

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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1. Statutory Framework

Basic Requirements Expression: Original, Creative, Fixed

17 U.S.C. §102

“Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, …”

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Additional Requirement:

there must be a minimum level of “creativity.”

*Feist Publications, Inc., v. Rural Telephone

Service Co., 499 U.S. 340 (1991)

§ 102. Works of authorship include

the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

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§ 102. Works of authorship include

the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

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Examples of PGS “Pictorial, Graphical and Sculptural

Works”

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Jackson Pollack Pablo Picasso

4 Main Checks on

Copyrightable Subject Matter

1. Idea-Expression Dichotomy

2. Merger Doctrine

3. Scenes a Faire Doctrine

4. “Useful Articles”

a. Exception for Pictorial, Graphic & Sculptural Aspects

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“Useful Articles” as a whole are not

Copyrightable

13

Threshold Question: “Useful Article”?

Hasbro Bradley, Inc. v. Sparkle Toys, Inc. (2d Cir. 1985)

HOLDING: Action figures are sculptural works,

not “useful articles.”

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Lanard Toys, Ltd. v. Novelty, Inc. (9th Cir. 2010)

HOLDING: Toy helicopters simply portray flight of real

objects and are not “useful articles.”

Threshold Question: “Useful Article”?

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Boyds Collection, Ltd. v. Bearington Collection, Inc. (M.D. Pa. 2005)

HOLDING: Clothing on teddy bear has no utilitarian

function and is not a “useful article.”

Threshold Question: “Useful Article”?

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Carol Barnhart Inc. v. Econ. Cover Corp. (2d Cir. 1985)

HOLDING: Mannequins of partial human torsos used

to display articles of clothing are “useful articles.”

Threshold Question: “Useful Article”?

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Is it a “Useful Article”

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“Non- Useful”

Article

Useful

Article

Exception to “Useful Article” Exception

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How about artistic aspects of useful articles???

“Useful” articles are generally not copyrightable

Mazer v. Stein 347 U.S. 201 (1954)

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Mazer v. Stein 347 U.S. 201 (1954)

• Stein registered copyright on sculpture of dancer, made into lamp base, sued for infringement

• Trial Court

• Copyrights cannot protect utilitarian items

• Appellate Court

• Inclusion of artistic work in useful article does not preclude copyright protection

• Supreme Court

• Lamp base is copyrightable work of art (and could also be protected with design patent)

• “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.”

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Copyright Act of 1976

• Codifies separability doctrine

• “‘Pictorial, graphic, and sculptural [PGS] works’ include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.” (17 U.S.C. §101)

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Copyright Act of 1976 17 U.S.C. § 101

17 U.S.C. § 101

“[T]he design of a useful article … 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

1. can be identified separately from, and

2. are capable of existing independently of, the utilitarian aspects of the article.”

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The Dilemma

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The element can be physically removed without

altering the useful aspects of the article

Compendium of U.S. Copyright Office Practices, 3rd ed. §924.2(A)

Physical Separability

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Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)

Vaquero Belt Buckle

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Conceptual Separability?

Brandir Int’l, Inc. v. Cascade Pacific Lumber

834 F.2d 1142 (2nd Cir. 1987)

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“[T]he designer has clearly adapted the original aesthetic

elements to accommodate and further a utilitarian purpose.”

Id. at 1147.

Pivot Point Int’l v. Charlene Prods., 372 F.3d 913, 931 (7th Cir. 2004)

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Asserted Work

Numerous Tests for

Conceptual Separability

1. Copyright office: the artistic and useful works can exist

side by side and each be fully realized

2. Primary-Subsidiary: the artistic features are “primary”

to the utilitarian features

3. Objective necessity: the artistic features are not

necessary to the function of the article

4. Design-Process: the artistic design is not significantly

influenced by functional considerations

5. Stand Alone: the function remains intact without the

artistic features

6. Likelihood of marketability: even without function, the

features would appeal to a significant segment of the

community

7. (even more)

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Copyright Office Approach

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1. This artistic feature must be capable of being

visualized as a work of authorship that is

independent from the overall shape of the useful

article.

2. The feature must be imagined separately and

independently from the useful article without

destroying the basic shape of that article.

3. The artistic feature and the useful article could both

exist side by side and be perceived as fully

realized, separate works.

Compendium of U.S. Copyright Office Practices, 3rd ed. §924.2(B)

Copyright Office Factors Considered for Conceptual Separability

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2. Star Athletica, L.L.C. v.

Varsity Brands, Inc.

No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

COPYRIGHTED DESIGN

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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COPYRIGHTED DESIGN ACCUSED DESIGN

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

COPYRIGHTED DESIGN ACCUSED DESIGN

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Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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• The design of a useful article is entitled to

copyright protection if it “can be identified

separately from, and . . . existing

independently of, the utilitarian aspects of the

article.” Id.

• 17 U.S.C. § 101.

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

37

Question presented:

What is the appropriate test to

determine when a feature of a

useful article is protectable under

§ 101 of the Copyright Act?

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Star Athletica’s argument:

The design as applied to a uniform is not

capable of being “identified separately”

or “existing independently” of the

utilitarian aspects of the uniform.

As such, Varsity could not prevent others

from making a uniform with the design

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Star Athletica’s argument:

Varsity chose its particular uniform design

in order to

(1) make the wearer appear “slimmer,”

“taller,” and “curvier,” and

(2) identify the wearer as a cheerleader.

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

40

Varsity Brands’ argument:

The uniforms are utilitarian – they “cover

the body” and “provide mobility”

The graphic designs (stripes, chevrons,

and color blocks) are separable because

they do not serve the utilitarian purpose of

designating the wearer of the uniform as a

cheerleader.

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Split panel of the 6th Circuit :

The arrangement of colors, stripes,

chevrons, zigzags and other designs on a

cheerleading uniform are copyrightable,

separate from the utilitarian aspects of

the uniform itself. 799 F. 3d 468.

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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6th Circuit Dissent:

The case turned on how “function” is

defined (i.e., in terms of the decorations in

issue), which would determine whether the

designs were copyrightable.

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Star Athletica’a Counsel:

“Stella McCartney dresses on Kate

Winslet . . . she's got those

slimming, dark lines along the

sides that change how she is

perceived. It makes her shape

look different to someone who is

looking at her . . . .”

Justice Sotomayor: How could

anyone copyright anything

under your definition?”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Justice Kennedy

“Suppose you have a

Picasso painting . . . and

suppose [he is] alive and

[he] licensed the use of

[his] picture on a

garment . . . ‘This

Picasso painting . . . just

completely captures

the shape of the article

you want.’ ”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Justice Kagan

“In other words, the utilitarian

function that camouflage has is

to hide you in the woods.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Justice Breyer

“So when Marcel

Duchamp has a shovel on

the wall and says it's a

work of art, he can have a

copyright as long as he

doesn't try to sue people

who make shovels.”

Star Athletica v. Varsity Brands, 6-2 Decision AFFIRMING 6th Circuit

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6-Justice Majority Dissent

J. Sotomayor

J. Kagan

J. Thomas

J. Ginsburg

J. Alito

J. Roberts J. Breyer

J. Kennedy

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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MAJORITY:

On March 22, 2017, the United States Supreme Court, in

the majority opinion written by Justice Clarence Thomas

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 tangible medium of

expression -- if it were imagined separately from the

useful article into which it is incorporated.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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The Court set forth a new two-part separability test, resolving a

split between circuit courts and upholding the previous Sixth

Circuit holding that the stripes, chevrons and other visual

elements of Varsity Brands’ cheerleading uniform are eligible for

copyright protection.

New Two-Step Test:

1)Separate Identification:

“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.”

2) Independent Existence:

“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.” (i.e. on some other non-useful medium like a

canvas.)

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

50

The Court set forth a new two-part separability

test, resolving a split between circuit courts and

upholding the previous Sixth Circuit holding that

the stripes, chevrons and other visual elements of

Varsity Brands’ cheerleading uniform are eligible

for copyright protection.

The Court held that the Copyright Act does not

protect “useful articles” but that “the design of a

useful article” may be “considered a pictorial, graphic,

or sculptural feature” to the extent that “it can be

identified separately from, and are capable of existing

independently of the utilitarian aspects of the article.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Applying this new two-part test to the facts of the case, Justice

Thomas concluded:

•The decorations are separable from the uniforms and therefore

eligible for copyright protection because:

(1) one can identify the decorations as features having

pictorial, graphic, or sculptural qualities and

(2) the surface decorations would qualify as two-

dimensional works of art if separated from the uniform

and applied in another medium, for example, a painter’s

canvas.

For the purposes of this analysis, it does not matter that

applying such designs onto a canvas will result in creating

“pictures of cheerleader uniforms” and would retain the

outline of a cheerleading uniform.

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

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Concurrence:

Justice Ginsburg concurred in the Court’s

judgment but not in its opinion and wrote that

consideration of the separability test “is

unwarranted because the designs at issue

are not designs of useful articles. Instead, the

designs are themselves copyrightable

pictorial or graphic works reproduced on

useful articles.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

53

Justice Ginsburg did not view the designs as inherent

elements of the cheerleading uniforms that would be

useful in distinguishing them from other dresses, as

argued by Star Athletica and noted in the Sixth

Circuit’s Judge McKeague’s dissenting opinion:

“In short, Varsity’s designs are not themselves useful

articles meet for separability determination under

§101; they are standalone PGS [i.e., pictorial,

graphic, or sculptural] works that may gain copyright

protection as such, including the exclusive right to

reproduce the designs on useful articles.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

54

Dissent:

The dissent, which was written by Justice Breyer with Justice

Kennedy joining, argued for a narrow interpretation of the

majority decision and focused on the policy and economic

implications.

Justice Breyer noted that, even though Congress had rejected

approximately seventy design protection bills since 1914, the

fashion industry had means of protection:

“Patent design protection is available. . . . A maker of clothing

can obtain trademark protection under the Lanham Act for

signature features of clothing. . . . And a designer who creates

an original textile design can receive copyright protection for that

pattern as placed, for example, on a bolt of cloth, or anything

made with that cloth.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

55

Justice Breyer’s dissent expressed concern about how the new

standard would be applied in light of the low standard of

originality: “Were I to accept the majority’s invitation to

‘imaginatively remov[e]’ the chevrons and stripes as they are

arranged on the neckline, waistline, sleeves, and skirt of each

uniform, and apply them on a ‘painter’s canvas,’ . . . that

painting would be of a cheerleader’s dress.”

Justice Breyer’s dissent voiced a fear that the majority holding

may result in increased litigation if the new standard is broadly

interpreted, which will “risk increased prices and unforeseeable

disruption in the clothing industry, which in the United States

alone encompasses nearly $370 billion in annual spending and

1.8 million jobs.”

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

56

The Breyer dissent also viewed copyright protection in general

as a cost-benefit analysis:

“Years ago Lord Macaulay drew attention to the problem when

he described copyright in books as a ‘tax on readers for the

purpose of giving a bounty to writers.’ . . . He called attention to

the main benefit of copyright protection, which is to provide an

incentive to produce copyrightable works and thereby “promote

the Progress of Science and useful Arts.” U. S. Const., Art. I, §8,

cl. 8. But Macaulay also made clear that copyright protection

imposes costs. Those costs include the higher prices that can

accompany the grant of a copyright monopoly. They also can

include . . . the costs of discovering whether there are previous

copyrights, of contacting copyright holders, and of securing

permission to copy.”

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3. Impact of Fashion

Industry

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Eligible Subject Matter?

Jovani Fashion, Ltd. v. Fiesta Fashions, Docket No. 12-598-cv, 2012 WL 4856412 (2nd Cir. 2012)

Eligible Subject Matter?

59

Sequined prom dress

Protectable Subject Matter?

60

camouflage

dress?

Eligible Subject Matter?

61

62

Eligible Subject Matter?

Puma SE v. Forever 21, Inc.

2:17-cv-02523 (C.D. Cal)

63

Eligible Subject Matter?

64

Eligible Subject Matter?

65

Eligible Subject Matter?

66

Eligible Subject Matter?

“Other Non-Functional Medium”

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4. Impact of Beyond

Fashion Industry

Eligible Subject Matter?

68

Eligible Subject Matter?

69

heart-shaped measuring cups

70

Protectable Subject Matter?

Car Body

1964 Ferrari 275 GTB Carrozzeria Pininfarina

Eligible Subject Matter?

71

Blue-Tooth Speaker

Eligible Subject Matter?

72

Eligible Subject Matter?

73

Cordless Drills

green

rubberized

ornamental

molding

Plain Stylized

Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)

74

“Other Non-Functional Mediums”

Thank You

Christopher V. Carani

McAndrews Held & Malloy

ccarani@mcandrews-ip.com

Theodore C. Max

Sheppard Mullin Richter & Hampton

tmax@sheppardmullin.com

Julie Zerbo

The Fashion Law

julie.zerbo@gmail.com

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