Star Athletica v.
Varsity Brands presents the justices with a classic
intellectual-property problem: the use of copyright to protect functional
objects. The issue in this case is whether the respondent, Varsity Brands, has
a protectable interest in the design of cheerleading uniforms arguably copied
by the petitioner, Star Athletica.
The case starts from Section
102 of the Copyright Act, which protects “original works of authorship fixed in
any tangible medium of expression.” Under Section 113 of the act, “the
exclusive right to reproduce a copyrighted … work … includes the right to
reproduce the work in or on any kind of article, whether useful or otherwise.”
At the same time, it has been recognized since the 19th century that copyright
protection extends only to the “expressive” content of the work. It does not
reach functional ideas or objects; only patents can protect those attributes of
a creative work.
Courts have struggled for
decades to define the line between the copyright-protected expressive aspects
and the utile aspects of tangible objects. The leading case is the Supreme
Court’s 1954 decision inMazer v. Stein, which upheld copyright
protection for a statuette that was intended for
use, and was used, as the base for a table lamp. The court explained that the
Copyright Act protected the expression – the particular statuette in question –
but not the idea of using “statuettes of human figures in table lamps.” Thus,
competitors could make table lamps with other human figures as bases; they
could not, however, copy the particular sculptural work created by the
plaintiff in Mazer.
The court has not revisited
this topic often, but lower courts have struggled in articulating consistent
tests for the relatively fact-specific problem of drawing the line between the
expressive (protected) and functional (unprotected) aspects of useful objects.
Among other things, it has become increasingly obvious that broad protection
for industrial designs provides considerable market power for industry leaders.
This case, for example, involves a relatively small firm (Star Athletica)
founded by a former employee of the dominant industry leader Varsity Brands;
the market niche of the smaller firm seems to be selling garments similar to
those of the market leader at substantially lower prices.
Against that backdrop, the
insurgent Star Athletica argues that copyright protection categorically should
exclude garments. Because Congress has considered many times adopting a statute
to protect industrial designs, but has never done so, Star Athletica argues
that courts should adopt a presumption against affording protection to any
garment. In Star Athletica’s view, protection should be available only if the
design feature in question is entirely separate from the useful functions of
the garment. In this case, because the principal design features – stripes,
chevrons, zigzags and the like – are essential to the use of the article as a
cheerleading uniform, they cannot be regarded as conceptually “separable” from
the uniform. If they are not separable from the uniform, then they can receive
no copyright protection.
Varsity Brands, by contrast,
argues that a work is conceptually separable if it can exist in a tangible
medium other than the uniform. Because a graphic design can exist on a piece of
paper, or any piece of fabric, Varsity Brands argues for a bright-line rule protecting
all two-dimensional designs. For Varsity Brands, the only hard cases are those
that involve three-dimensional designs, because a three-dimensional object
(such as a statue) can hardly exist apart from its shape, and if its shape has
functional attributes, it then becomes difficult to determine whether a copier
has copied the expressive aspects or merely the functional aspects of the
shape.
The solicitor general’s brief
in support of Varsity Brands is powerful. Among other things, it shows that the
U.S. Copyright Office has had an unbroken tradition of accepting registration
of graphic designs used on clothing for many decades. The best part of the
brief is a series of images of clothing designs that reproduce famous works of
art. Demonstrating that “a picture is worth a thousand words,” the brief
displays dresses that include images immediately identifiable as taken from
paintings by Vincent van Gogh and Gustav Klimt.
The garments speak for
themselves because they are so indisputably “copied” from the expressive
aspects of the famous paintings that the reader’s overwhelming intuition is
that the dresses must violate the artists’ copyrights.
To be sure, Star
Athletica’s legal rule would allow protection for those dresses (because the
paintings plainly exist separately), but my guess is that the presentation will
leave the justices doubtful about erecting any presumption against the
protection of designs on garments. And once it is clear that the designs of
garments are protectable, the court presumably will be reluctant to adopt a
rule that limits protection to designs that are “high” art (like the Van Gogh
and Klimt dresses) as opposed to “low” art (like Varsity Brands’ cheerleading
uniforms).
Under the Roberts court, it is
usually quite difficult for either party to win outright in a case like this
one, which essentially asks the justices to articulate a form of words that
draws a line to resolve a commonly arising fact-intensive dispute. The usual
practice of the court in such cases is to do its best to articulate a test and
then remand the case to the lower court for application in the first instance.
This has been especially true in intellectual-property cases, in which the
court has taken a strongly minimalist approach, plainly concerned that broad pronouncements
might cause undue disruption in rapidly developing markets.
To be sure, the solicitor
general and Varsity Brands present some bright-line rules that would make it
easy for the court to select a rule under which the design would be so plainly
protectable as to obviate any need for a remand. We should know a lot more
about the inclination of the bench after the argument. It will be interesting
to see if the justices’ frustration with the imprecision of ideas about
separability will bleed over from the Samsung v. Apple argument on the last day
of the October session (which I also covered) to this argument on the
first day of the November session.
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