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<img class="alignright wp-image-2347 size-medium" src="https://copyrightcontentplatforms.bakerhostetlerblogs.com/wp-content/uploads/sites/21/2016/02/copyright-iStock_000014261845_Full-300x200.jpg" width="300" height="200">On March 22, 2017, the U.S. Supreme Court decided the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. regarding the scope of copyright protection for “pictorial, graphic or sculptural features” that have been added to useful articles—in this case, cheerleading uniforms.   The case has mostly gained attention because its facts crystalize the tension between allowing copyright to subsist in designs applied to useful articles, while at the same time preventing copyright law from controlling the useful article’s functional aspects—which are not copyrightable.  Most observers thought the central issue would be how to define a useful article’s function: Is a cheerleading uniform’s function to clothe the body and absorb perspiration (in which case the design at issue has no real coverage on functionality), or to identify the wearer as a cheerleader (in which case the design has quite a lot to do with the uniform’s functionality)?  Many, including these authors, expected the Court to sift through the ten different functionality tests that had been developed by the circuit courts and to either adopt one of the ten or develop some synthesis combining elements from different tests.  What we received instead was a Gordian knot-slicing opinion by Justice Thomas that either will have little impact on what is currently considered copyrightable—or potentially will allow all manner of copyright “creep” over a useful article’s functionality.

We assume you are familiar with the facts and the issues.  If not, here are our posts on the underlying district court <a href="https://www.ipintelligencereport.com/2014/10/apparel-designs-and-the-metaphysics-of-copyright-protection/https:/www.copyrightcontentplatforms.com/2014/10/apparel-designs-and-the-metaphysics-of-copyright-protection/">opinion</a>, on the Supreme Court’s decision to accept <a href="https://www.ipintelligencereport.com/2016/05/how-will-the-supreme-court-function-with-the-varsity-brands-test/">certification</a>, and on an 11th Circuit <a href="https://www.ipintelligencereport.com/2015/10/drawing-a-line-in-the-floor-courts-are-struggling-with-the-overlap-between-design-patent-and-copyright/">opinion</a> issued at around the same time as the 6th Circuit opinion.  In those posts, we discussed our expectation that the Court might 1) clarify how to assess a useful article’s “functions”; 2) clarify what public policy decisions should be considered in assessing the protectability of useful article designs; 3) engage in the kind of clear line-drawing that it did in Dastar and that it refrained from doing in MazerSee, e.g., Seiko Epson Corp. v. Nu-Kote Int'l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999) (Design patent statute requires “that the design must not be governed solely by function, i.e., that this is not the only possible form of the article that could perform its function.”).  Under the Supreme Court’s new standard, there appears to be no limitation on the extent to which a useful article’s “functional capabilities” could become subject to copyright protection, so long as the copyrighted “pictorial, graphic or sculptural features” are found by the court to be non-functional.

This doctrine could have an enormous impact on industrial design.  Take, for example, the fin of a 1959 Cadillac.  Can the fins be imagined as standalone sculptures apart from the car?   And even if they can, is the separability requirement satisfied if the sculpture is merely understood to be a detached fin of a 1959 Cadillac as opposed to an independent artistic expression?  Or consider the recent <a href="https://www.ipintelligencereport.com/2016/10/not-dat-function-dis-function/">example</a> of a sculptural element added to a USB drive but designed in a way to promote ease of use in plugging into a computer.  Or of a software screen display that promotes intuitive use.  Even within the fashion industry, the impact of the Varsity Brand decision remains uncertain.  This was underscored by the Court’s two dissenters—Justices Breyer and Kennedy—who purportedly applied the Court’s test to reach the opposite result.

Under the Varsity Brand decision, considerations about the impact of subjective design decisions on functionality, or the impact on the market, or the impact on the underlying article itself, are now all irrelevant.  If the copyrighted matter can stand alone conceptually as a work of art, its application to a useful article is subject to copyright protection.

Does Copyright Now Cover Functionality?