R.I.P. Conceptual Separability Test

The the States Supreme Court held on March 22, 2017 that a characteristic incorporated into the blueprint of a useful article is eligible for copyright protection “if, when identified too imagined apart from the useful article, it would qualify every bit a pictorial, graphic, or sculptural function either on its ain or when fixed inward or so other tangible medium.” The instance is Star Athletica LLC v .Varsity Brands. Justice Thomas wrote the sentiment of the Supreme Court.

Conceptual Separability is Much Safer

Readers of this spider web log may remember that this instance is close whether cheerleading uniforms tin last protected past times copyright. Both parties are creating too selling cheerleading uniforms. Varsity Brands has registered or so 200 copyrights for two-dimensional designs appearing on the surface of their uniforms too other garments. It sued Star Athletica for copyright infringement, claiming that its competition had copied 5 of its designs protected past times copyright. The Western District Court of Tennessee granted summary judgment to Star Athletica, reasoning the designs could non last protectable past times copyright, every bit they could non last separated from the utilitarian part of the uniforms (see here for more). On appeal, the Sixth Circuit Court of Appeals reversed, finding Varsity's designs to last copyrightable graphic works. The Supreme Court affirmed.

Useful articles cannot last protected past times copyright, but a pictorial, graphic, or sculptural function incorporated inward the useful article tin last protected if it is separable from the useful article. However, such blueprint must last capable of beingness “identified separately from, too [must be] capable of existing independently of the utilitarian aspects of the article,” 17 U.S.C. § 101. The blueprint tin last physically separable or “conceptually separable” from its utilitarian aspect. Physical separability occurs if the characteristic seeking copyright protection tin “be physically separated from the article past times ordinary way spell leaving the utilitarian aspects of the article completely intact,” Compendium §924.2(B). This is easily understandable, but conceptual separability, which applies if physical separability past times ordinary way is non possible, is the materials [bad] dreams [of IP attorneys] are made of. Or, at least, it was, every bit today’s sentiment signals its demise.

The starting fourth dimension part of the novel bear witness requires that the blueprint seeking copyright protection must last able to last perceived every bit a ii or three-dimensional function of fine art split from the useful article. This was the instance here. Justice Breyer dissented from the majority, reasoning that the designs on the cheerleading uniforms are non separable because if ane would take away them from the uniforms too house them on or so other medium of expression, such every bit a canvas, it would create “pictures of cheerleader uniforms.” But Justice Thomas wrote that this does non forestall these deigns to last protected past times copyright, because

“[j]ust every bit two-dimensional fine fine art corresponds to the shape of the sheet on which it is painted, two-dimensional applied fine art correlates to the contours of the article on which it is applied.  A fresco painted on a wall, ceiling panel, or dome would non lose copyright protection, for example, precisely because it was designed to runway the dimensions of the surface on which it was painted” (p. 11).

The minute part of the novel bear witness requires that the blueprint must last able to be apart from the utilitarian aspect of the article, every bit its ain pictorial, graphic, or sculptural work. If it can’t, so it is ane of the useful article's utilitarian aspects. Thus, the blueprint itselfcannot last itself a useful article (p. 7).

This interpretation is consistent amongst Mazer v. Stein, a 1954 Supreme Court instance studied past times all U.S. copyright students. Justice Thomas noted that ii of its holdings are relevant inward our instance (p. 9).  The Court held inward 1954 that a function of fine art which serves a useful role tin last protected past times copyright. In the instance of Mazer v. Stein, it every bit was statue which served every bit a light base. The Court also held inward 1954 that a function of fine art is copyrightable fifty-fifty if it was starting fourth dimension created every bit a useful article. Justice Thomas specified that, inward our case, the Court interpreted the Copyright Act inward a way which is consistent with Mazer v. Stein every bit today’s sentiment “would afford copyright protection to the statuette inward Mazer regardless of whether it was starting fourth dimension created every bit a standalone sculptural function or every bit the base of operations of the lamp.”

R.I.P. conceptual separability test. Justice Thomas explains it is no longer needed, every bit “[c]onceptual separability applies if the characteristic physically could non last removed from the useful article... Because separability does non require the underlying useful article to remain, the physical-conceptual distinction is unnecessary” (p.15).

Justice Thomas clarified the orbit of the sentiment every bit such:

“To last clear, the only characteristic of the cheerleading uniform eligible for a copyright inward this instance is the two-dimensional function of fine art fixed inward the tangible medium of the uniform fabric. Even if respondents ultimately succeed inward establishing a valid copyright inward the surface decorations at number here, respondents accept no correct to prohibit whatever mortal from manufacturing a cheerleading uniform of identical shape, cut, too dimensions to the ones on which the decorations inward this instance appear” (p. 12).

But what makes a item uniform characteristic of stripes too chevrons particular, is it because they are applied on the uniform, or because the uniform is cutting inward such a way too uses such contrasting colors  on which the designs are appearing?

Justice Ginsburg concurred, but she took the take in that “[c]onsideration of [the separability] bear witness is unwarranted because the designs at number are non designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic plant reproduced on useful articles… [and may thus] gain copyright protection every bit such” (p. 23 too p. 24).

Should nosotros cheer? Time volition tell.