navigating separability after star athletica: applying the...
TRANSCRIPT
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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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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.”
30
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”?
31
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”?
33
Is it a “Useful Article”
18
“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)
27
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 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
25
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)
27
“[T]he designer has clearly adapted the original aesthetic
elements to accommodate and further a utilitarian purpose.”
Id. at 1147.
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
31
32
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)
33
COPYRIGHTED DESIGN ACCUSED DESIGN
Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)
34
Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)
COPYRIGHTED DESIGN ACCUSED DESIGN
35
Star Athletica v. Varsity Brands, No. 15-866 (U.S. Supreme Court, argued Oct. 31, 2016)
36
• 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)
38
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)
39
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)
41
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)
42
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)
43
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)
44
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)
45
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)
46
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)
48
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)
49
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)
51
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)
52
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.”
58
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?
63
Eligible Subject Matter?
64
Eligible Subject Matter?
66
Eligible Subject Matter?
“Other Non-Functional Medium”
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
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
Theodore C. Max
Sheppard Mullin Richter & Hampton
Julie Zerbo
The Fashion Law
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