Many industries, from fashion and luxury, to consumer goods to industrial goods, use unique and innovative product designs to set themselves apart from the competition and provide an aesthetic attractive product for their customers. Protection of innovative designs against competitors and knockoffs is an important part of their business strategy. Such designs traditionally were protected by design patents.
But the Supreme Court’s decision earlier this year in Star Athletica LLC v. Varsity Brands Inc., 137 S.Ct. 1002 (2017), seemingly expanded the scope of copyrightable designs that are incorporated into useful articles. Subsequent district court cases further elucidate how that case is to be applied, and its effect on the scope of copyright protection. These decisions point to a need to rethink protection strategies for product design, and consider increasing use of copyright protection.
The groundbreaking decision in Star Athletica was applied in two later decisions, one from the Central District of Illinois, the other from the Southern District of New York. The IP bar should take note. These decisions, in our view, require strategies for protecting decorative designs incorporated into useful articles to be rethought.
Such designs have often been thought, by many members of the intellectual property bar, to be protectible only by design patents, which by statute cover the ornamental elements of articles of manufacture. Design patents are much more exacting to obtain, both substantively and procedurally, and can be significantly more expensive, than copyright protection. For these reasons, many clients shy away from using design-patent protection.
Counsel are now well advised to consider carefully whether copyright protection might be used to cover decorative elements of such designs, either instead of, or as a supplement to, design patent protection.
We turn to discussing these decisions and their effect on the scope of available copyright protection:
The Copyright Act limits the scope of copyright coverage for designs of useful articles:
[T]he design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work [subject to Copyright protection] 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.
17 U.S.C. § 101.
This provision has generally been understood to incorporate the Supreme Court’s holding in Mazer v. Stein, 347 U.S. 201 (1954), where the Court held that sculptural works that were incorporated into the base of a lamp were copyrightable. Nevertheless, federal courts have been sharply divided as to how to apply the statutory standard – how to determine when the aesthetic or decorative elements are considered separate (or separable) from the utilitarian aspect of the item.
In Star Athletica, the Supreme Court adopted a simple and expansive test: a feature of a useful article is copyrightable if (1) it can be perceived as a two- or three-dimensional work of art separate from the useful article; and (2) the feature would by itself qualify for copyright – meaning the feature could have an independent existence that is not itself either a useful article nor “normally a part of” a useful article, and, of course, would otherwise qualify for copyright protection (meaning it was original to the designer, and incorporates at least a minimal degree of creativity).
In Star Athletica, the dispute was whether decorative designs on uniforms – the arrangements of colors, shapes, stripes, and chevrons – were sufficiently separate from the overall design of the useful object, uniforms, to be protectable. Two of the designs at issue follow:
Previously, many courts would have ruled not – but the Supreme Court, applying its two-step test, ruled they were protectible. It reasoned that the designs could be imagined as a two-dimensional work (like a painting) and that by itself would be copyrightable.
(While the imagined work would not be in the shape of a rectangle like a painting in an art gallery, that is not required by the Copyright Act. Two-dimensional works can be any shape.)
The Sparrow Clip Decision
Three months after Star Athletica, the Central District of Illinois in Design Ideas, Ltd. v. Meijer, Inc., 2017 WL 2662473 (2017) considered the copyrightability of a design, known as a “Sparrow Clip,” an artistic riff on a clothespin, that appears like this:
The top “bird” portion of the item clearly could be separated (physically, and certainly conceptually) from the standard clothespin portion to which it is attached. The defendant, however, argued that the bird portion has useful applications – it can hang from a rod or string by the “beak.” (Indeed, it appears that the plaintiff’s advertising showed such practical uses.)
No matter, ruled the court in Design Ideas. Applying Star Athletica, it held that even if the sculptural portion was intended and designed for such a useful function, the bird portion, once imagined separately from the entire design, would have no useful function, and would thus qualify for copyright protection.
The Tear Drop Light Set Decision
In August, the Southern District of New York held in Jetmax Ltd. v. Big Lots, Inc., 2017 WL 3726756 (2017) that the design for a “Tear Drop Light Set,” comprised of a series of molded, decorative tear shaped covers to a string of lights, was copyright protectible. The design appears like this:
A set of lights, of course, has a utilitarian function – to light a room. But the decorative covers, the Jetmax court held, were copyrightable under Star Athletica: (1) they could easily be imagined as separate from the lightbulb base, the portion that provides the utilitarian function of illumination; and (2) the decorative covers, standing alone, would qualify as sculptural works protectible by copyright.
The fact that the covers reduce the glare from the lights and contribute to the utilitarian function of the lights was of no moment. Star Athletica held that the imagined remainder of the item (once the pictorial or sculptural portion is imaginatively removed) need not remain as a functioning item at all, and certainly can be a less useful item.
The decisions in Design Ideas and Jetmax confirm that district courts are interpreting Star Athletica broadly, to permit copyrightability of decorative or ornamental elements of designs of utilitarian objects – so long as they can be imagined as separate from the useful portion of the item.
And this is so even if they contribute to the utility of the overall item.
The designs in Design Ideas and Jetmax likely would have also qualified for design patent protection (assuming they met the statutory requirements), but now it is clear they also qualify for copyright protection. As we discussed above, the IP bar is well advised to take note of this new opportunity when advising clients as to how best to protect their designs.
A previous version of this post appeared in the New York Law Journal, October 18, 2017