Outline for CLE presentation: June 6, 2017

Copyright Society of the USA, Annual Meeting, Philadelphia, PA

Sis boom bah? Should Makers of Useful Articles Be Cheering About Star Athletica?

Moderator: Cynthia Dahl

Panelists: Jacqueline Charlesworth, Michael Risch, Peter Bressler

The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U. S. C. §101. Separability is important, because “[i]n no case does copyright protection for an original work of authorship extend to idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. §102(b). Circuit and district courts have employed at least ten different tests to assess whether a copyrightable design can be separated from the useful article on which it is placed, normally with a focus on ensuring that protection of the design does not extend to protection over the article’s function.

The U.S. Supreme Court has decided a case that on its face appears to be about protection of designs placed on cheerleader uniforms. Many commentators believed that the Court would articulate a clear test for separability. However, the Court either expressly or impliedly rejected the tests of the lower courts, and did not place emphasis on keeping copyright from encroaching into an article’s functionality—“[t]he focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction. The statute does not require the decision-maker to imagine a fully functioning useful article without the artistic feature.”

The implications of the decision may range well beyond fashion. This panel will explore some of the many considerations and issues posed by this decision. These include:

  • The historical development of the separability tests throughout various Circuits;
  • The potential application of the decision beyond fashion into areas of useful article design, including industrial design;
  • The interplay between copyright, trade dress, and design patent protection;
  • The importance of industrial design in driving consumer adoption of technology and the impact on the overall economy;
  • Policy implications of extending greater protection to industrial designs.

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