Prof. Jane C. Ginsburg, Columbia University School of Law*
June 29, 2016

Courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article’s utilitarian function.

Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 478 (6th Cir. 2015), cert. granted, 194 L. Ed. 2d 829 (2016), quoting, Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038, 1041 n.2  (9th Cir. 2014), quoting, Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670  (3rd Cir. 1990).

United States copyright law explicitly enumerates “pictorial, graphic or sculptural works” [henceforth “PGS works”] among the subject matter of copyright.1  These include “works of artistic craftsmanship,” but copyright covers the design of a useful article “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.”2  Inseparable design features, whatever their aesthetic appeal, are not protected under copyright law; any coverage available to the designers must come from other regimes, particularly federal utility or design patent law.3  The “separability” test has resisted coherent application, but one thing is clear: In the 1976 Copyright Act, Congress intended to impose a high threshold to copyrightability of useful articles.  Copyright, which “subsists” in a work of authorship upon creation and lasts for 70 years post mortem auctoris (or 95 years following first publication),4 was not the appropriate regime for most industrial designs.  Whatever “separability” means, it excludes more designs than would a test that merely inquires whether there exist other designs for the same kind of useful article.  The “separability” threshold therefore will in most cases set a higher bar than the idea/expression “merger” doctrine.  The latter inquires whether the “idea” is susceptible to multiple forms of expression, or whether instead plaintiff’s work represents the only way, or one of only a few ways, of presenting the idea.  By contrast, that the overall shape of a table or chair may be expressed through multiple different designs does not itself suffice to make any one of those designs “separable” in whole or in part.5

The U.S. Copyright Act distinguishes “useful articles” from works whose function is “merely to portray the appearance of the article or to convey information.”6  The latter are PGS works (or, in the case of works whose function is to convey information, other kinds of works of authorship, such as literary works) in themselves, and there is no need to undertake an inquiry into the “separability” of aesthetic and useful elements, because the utility at issue, such as a religious painting’s stimulation of spiritual contemplation,7 is not the kind of usefulness that the statute reserves to the patent system (or to the public domain).  Similarly, the depiction of a useful article, such as a model airplane or a drawing of a bottle, is not itself a useful article.  The statute, however, makes clear that a protected representation of a useful article gives the author no rights in the article depicted.8  A blueprint for constructing a car is not a “useful article” because its functions are to portray the appearance of the car, and to convey information about how to build it.  The car, once built, however, is a useful article; any copyright would be limited to elements, such as a hood ornament, that are separable from the car’s utilitarian aspects.

The statute also specifies that the author of a PGS work has the exclusive right to reproduce it “in or on any kind of article, whether useful of otherwise.”9  For example, an artist holds the exclusive right to reproduce her drawing onto a t-shirt, a tablecloth, a shower curtain, etc.; a sculptor can authorize or prohibit the incorporation of his work into a paperweight or to ornament fireplace andirons.  In the case of three-dimensional works, however, it becomes necessary to distinguish between incorporating the sculptural work “in or on” a useful article, and altering the form of the work in order to adapt it into a useful article; in the latter instance, the copyright in the original sculpture subsists as a PGS work, but the adapted version becomes a useful article, and its characterization as a PGS work in its own right will depend on whether its form, or parts of its form, are “separable” from the article’s function.  For example, imagine a sculpture of a crocodile, with moving jaws.  The sculptor’s copyright extends to inserting salad tongs into the jaws; in that event, the sculpture is reproduced “on” a useful article, and its legal status as a PGS work remains unchanged.  But if the article consists of salad tongs shaped to resemble a crocodile’s toothy maw, then it is a useful article whose status as a PGS work turns on the separability test.  In the first crocodile example, the sculpture pre-exists its encounter with a useful article; in the second, the three-dimensional form is contemporaneously a useful article.  This birth order distinction may yield arbitrary outcomes, among them the apparent privileging of shapes that are sub-optimally functional (the first set of crocodile salad tongs may not seize salad as well as the second), but that is the result of a legislative policy choice to exclude functional items from the copyright domain, thus confining them to the realm of patents, or, more often, to the public domain.10

If the article at issue has “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information,” then the statute directs that copyright extends only to those elements (if any) of the object’s design that are separable from its function:

“Pictorial, graphic, and sculptural works” 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.11

For our crocodile-shaped salad tongs to be protectable in whole or in part as a PGS work, it would be necessary to determine which if any design elements are separable from the function of seizing and serving salad.  Perhaps a shaft shaped to represent the reptile’s scaly tail and body would qualify, but the snapping toothsome jaws perform the function of tongs.  Do they nonetheless incorporate “separable” features, so that the entire shape of the tongs would qualify for copyright protection?  As the chorus of judicial laments quoted at the outset of this column reveals, courts have failed to interpret the meaning of the statutory separability standard in any consistent or coherent manner.  In Varsity Brands, for example, the Sixth Circuit identified nine tests of “conceptual separability” (a term found not in the statute but in the legislative history12) employed by courts or commentators, then added a tenth test of its own.  Perhaps the Supreme Court will select among the separability tests that have “twisted [lower courts] into knots,” or devise yet another, but I would like to suggest that the courts in Varsity Brands could have avoided the Gordian enterprise altogether, because the design in which the plaintiff claimed rights was not of a “useful article.”

In Varsity Brands, the Sixth Circuit ruled that team insignia applied to cheerleader uniforms (pictured below)13 were separable and protectable from the overall design of the uniforms.  While the court found separability because “the arrangement of stripes, chevrons, color blocks, and zigzags are ‘wholly unnecessary to the performance of’ the garment’s ability to cover the body, permit free movement, and wick moisture,”14 it could instead have treated those elements as fabric design, a category long recognized as a pictorial or graphic work.15  Copyright does not protect the garments into which the design-bearing fabric is cut, but neither does the fashioning of the fabric into an article of clothing cancel out the copyright of the design imprinted thereon.

Rather than addressing the cheerleading garments as a whole (and detailing ten different tests of conceptual separability), the court could have recognized that the design elements at issue – the fabric designs representing team insignia – were not useful articles in the first place.  The facts the court discussed might have alerted it to the difference between the design elements (insignia) and the useful article (the garment).  Indeed, the court distinguished between the “graphic design” and the uniform:

The five Varsity designs are examples of how a cheerleading uniform still looks like a cheerleading uniform no matter how different the arrangement of the stripes, chevrons, colorblocks, and zigzags appear on the surface of the uniform.  All of Varsity’s graphic designs are interchangeable.  Varsity’s customers choose among the designs in the catalog, including the five designs at issue, select one of the designs, and then customize the color scheme.  The interchangeability of Varsity’s designs is evidence that customers can identify differences between the graphic features of each design, and thus a graphic design and a blank cheerleading uniform can appear “side by side” – one as a graphic design, and one as a cheerleading uniform.16

In highlighting the graphic designs’ “interchangeability,” the Sixth Circuit effectively applied the statutory standards of separate identifiability and independent existence of the designs relative to the uniforms.  But the court could have made shorter work of its analysis had it drawn a different conclusion from its characterization of “the stripes, chevrons, colorblocks, and zigzags” as the “graphic design,” and from the customers’ selection among the graphic designs: these elements are PGS works “reproduced on” the uniform (the useful article); the graphic designs’ status as PGS works did not require assessing the characteristics of the uniforms.17

Varsity Brands is not the only “conceptual separability” case that would better have been analyzed as an instance of a pre-existing PGS work affixed “in or on” a useful article.  For example, in Home Legend v. Mannington Mills,18 the useful article was floorboards made of compacted resin and sawdust, onto which the plaintiff had laminated paper painted to resemble “distressed” woodgrain so that the floorboards would convey the appearance of true wood planks (pictured below)19.  The court held the design separable.  One may easily envision lifting off the design (as indeed it had been pasted on), without affecting the flooring, other than aesthetically.  That the ersatz wood grain made unsightly pressed sawdust floorboards more aesthetically desirable undoubtedly affected their commercial appeal, but aesthetic “functionality” is not a utilitarian function in the copyright sense.  The court could instead have recognized that the “work” allegedly infringed was the depiction of the wood grain, not the floorboards onto which the pictures had been glued.  Like Varsity Brands, Home Legend could have avoided inquiry into conceptual separability had it perceived the case as an instance of reproducing a PGS work on a useful article.

Disposing of Varsity Brands on the ground that the case does not require determining which aesthetic “features” of a “useful article” “can be identified separately from and are capable of existing independently of” the article’s function would leave interpretation of physical or “conceptual” separability for another day.  But that approach would also usefully remind litigants and lower courts first to examine carefully whether the work whose copyright is at issue is in fact a “useful article” as statutorily defined (to which the separability test applies), or is instead a PGS work in its own right, reproduced “in or on” a useful article.  In the latter instance, the copyright inheres in the pre-existing PGS work; the useful article is not itself a “work of authorship” but its reproduction and distribution come within the scope of the exclusive rights encompassed by the PGS work’s copyright.