Last week, the Supreme Court ruled in a copyright case that addresses the principle of “separability.” This is one of those areas of IP that a colleague of mine would call the “metaphysics of law,” and that’s not a criticism. In fact, I happen to think the more subtle aspects of copyright—the ones that challenge judges to weigh esoteric ideas like “art” or “originality” are actually part of the fun for nerds like me.
At issue in Star Athletica v. Varsity Brands are designs for cheerleader uniforms. Both Star and Varsity make these uniforms, and when Star apparently copied some of Varsity’s designs, Varsity sued for copyright infringement. But fashion is not protected by copyright, you say. And that’s true. Mostly.
Clothing is a category of what the law calls “useful articles,” and as a rule, we do not want copyright’s exclusive protections to stifle the production of everyday items like clothes, furniture, coffee mugs, and earbuds. In the case of wardrobe or fashion, for instance, one may not copyright the shape or cut of a dress or pair of pants. One can easily see how this would choke an industry of producers making garments for customers who generally conform to a consistent humanoid structure. It’s why every fashion maker, from couture to K-Mart, can offer the market a version of the proverbial “little black dress.”
Separability considers whether or not a “pictorial, graphic, or sculptural” (PSG) work, which would be eligible for copyright protection, can be imagined as separate from the useful article. For instance, in the world of fashion, a designer may create a copyrightable, abstract design that is then reproduced as a textile, which is then used to make a skirt. Because that textile design is protected by copyright, and because one of the exclusive rights of copyright includes “the right to reproduce the work in or on any kind of article, whether useful or otherwise,” this is one way in which a clothing designer can, in a limited way, copyright fashion.
Because the designer may not copyright the actual cut, shape, or materials used for the skirt itself, the two interests are balanced. The “useful article” is still free to be copied by anyone, but an article that copies the protected work of art may only be used by license of that creator. Clearly, the protectable design is understood to exist separately from the article of clothing and can easily be imagined reproduced in some other form—as decorative art, wallpaper, coasters, mousepads, etc.
This example seems the most instructive in understanding the rationale applied by the majority in Varsity, although the consideration is very subtle to the casual observer for two reasons: 1) the designs used by Varsity are only marginally original—stripes, chevrons, and such; and 2) because it is a little difficult to imagine these designs in any context other than cheerleader uniforms, which are unquestionably “useful articles” not protected by copyright. Justice Thomas explains the second of two prongs applied in weighing separability thus: “The decision maker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.” The majority opinion states …
“… if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as ‘two-dimensional . . . works of . . . art,’. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.”
The crux of the dissenting opinions of Justices Breyer and Stevens holds that these designs cannot reasonably be perceived as separate from the uniforms. The dissenting opinion states …
“Were I to accept the majority’s invitation to “imaginatively remov[e]” the chevrons and stripes as they are arranged on the neckline, waistline, sleeves, and skirt of each uniform, and apply them on a “painter’s canvas,” ante, at 10, that painting would be of a cheerleader’s dress. The esthetic elements on which Varsity seeks protection exist only as part of the uniform design—there is nothing to separate out but for dress-shaped lines that replicate the cut and style of the uniforms.”
Justice Ginsberg concurred with the majority judgment but not with its opinion, stating that in her view, it was not necessary to consider “separability” in this case at all. “Consideration of that test is unwarranted,” she writes, “because the designs at issue are not designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.” In Ginsberg’s view, because Varsity’s designs begin first as illustrations that are protectable by copyright, then the right extends to the reproduction of those works onto uniforms or anything else, as would be the case in the textile example I presented.
How Significant is This Case?
Mike Masnick at Techdirt offers his own analysis along with his concerns that it could be “potentially very dangerous to a variety of innovations.” In particular, he refers to the growing market for 3D printed “useful articles,” but I suspect Masnick’s fears are unwarranted because I believe he errs in two ways—one historical, the other analytical. With regard to the former, it remains to be seen how instructive this decision really will be to future cases weighing “separability.”
Although Justice Thomas states that the Court granted cert in Varsity “to resolve widespread disagreement over the proper test for implementing §101’s separate-identification and independent-existence requirements,” this case is also the latest in a very long narrative of American intellectual property law, going back to at least the mid-19th century when the courts were weighing decisions that helped clarify distinctions between patent and copyright. These specialties were a little blurrier in the first half of America’s first century.
For instance, in the 1865 case Baker v. Selden, the author of a book describing his own accounting system (it was really his widow) pursued a judgment that would have exceeded the purview of copyright because the claim was seeking protection for the accounting system itself. If anything, the Baker accounting system might have been granted a patent (and it wasn’t), but the Supreme Court affirmed that a copyright in a work, like a book, “…does not extend to any ‘procedure, process, system, method of operation’ embodied in such works, any more than to any ‘idea,…principle, concept or discovery’ in them.”
Here, I am partly quoting a 2004 paper about Baker v Selden, written by law Professor Pamela Samuelson at UC Berkeley, in which she notes that the same question of copyright’s limitation in Varsity goes all the way back to this case. She writes, “Baker also lives on in the statutory rule that denies copyright to pictorial, graphic, or sculptural works having functions beyond conveying information or displaying an appearance (e.g., clothing and chairs),as well as in the rule that copyright in a drawing does not create rights in useful articles depicted therein.” (Emphasis added)
As a scholar who leans more toward limiting copyright, Professor Samuelson may disagree with the opinion in Varsity (I cannot speak for her), but I cite her paper to emphasize the historical context for these considerations. Suffice to say that when we get into the separability of copyrightable elements in useful articles, we’re deep into the metaphysics of IP law; and future courts may continue to wrestle with this same question on a case-by-case basis regardless of the majority opinion in Varsity.
Can This Ruling Be “Dangerous” to 3D Printing?
There may be some way in which this decision will adversely affect some future innovation in the 3D printing world, but if this is true, I think Masnick needs a better example than the one he chose for his analysis. Citing a product called the “Birdsnest Eggcup” by designer Studiogijs, Masnick labels the test applied in Varsity as a “copyright first” approach to separability, which he contrasts with his own notion of a “useful first” approach. He then signifies the difference between the two by asserting that the former produces more copyrightable elements than the latter and that this greater mass of copyright, if you will, is where the potential danger lies for innovation in 3D printing. I think this analysis is flawed.
Masnick suggests that, by applying the test used in Varsity, separability would insist that the egg cup could be deconstructed into individually copyrightable parts. He is correct to say that the Court would allow the useful article to be deconstructed to the point of uselessness under it’s test, but I believe he is incorrect to suggest that any copyrightable work may be substantially deconstructed into parts that are each individually protectable by copyright. One may not, for instance, break a novel into separate phrases and then copyright each phrase.
The arrangement of elements is an essential aspect in assessing “originality” under copyright, and the idea/expression distinction (which also harkens back to Baker) is why another creator is free to make and sell a different birds nest egg cup as long as it is different enough from the one made by Studiogijs. At least that’s true insofar as copyright is concerned. (Studiogijs may be eligible for a design patent in this case, but I am unfamiliar with the boundaries of that area of IP; and it is not germane to the SCOTUS ruling in Varsity.)
Studiogijs “Birdsnest Egg Cup“
The egg cup, with its arrangement of branches and perched little bird, could easily be copyrighted as a sculptural work regardless of whether or not it is ever marketed as a “useful article.” Additionally, the design could be reproduced in some other form, for example as a 2D illustration and printed on coffee mugs to go with the breakfast set. This does not mean, however, that each branch, or segment of the original work could be protected by copyright in an actual litigation.
This is because the bar of minimal originality is counter-balanced by the fact that the less original (i.e. more minimal) a work is, the more subtly distinct a similar, subsequent work can be without infringing. In the Varsity case, this means that Star Athletica should be able to make designs that are quite similar, but not identical, to Varsity’s uniforms because Varsity can only claim copyright in its precise arrangement of commonly-used design elements. The same principle applies to the birds nest design whether it’s useful as an egg cup or not.
Or to look at this in context to Masnick’s notion of a “useful first” test, the egg cup could utterly fail in its marketed purpose to hold eggs, and that fact would have no bearing on the copyright in the object as a sculptural work. In fact, a competing designer could theoretically make a birds nest egg cup that customers find functions better as an egg holder and so threatens Studiogij’s market.* And if Studiogijs chose to pursue a copyright claim in response, it could not hope to assert multiple copyrights in each design detail of its product.
Instead, the court would compare and contrast the two sculptures as whole works to determine the amount of similarity that the second bears to the first; and separability would probably not even be an issue in the case. In this regard, I fail to see where the concern lies that Masnick is raising. Nothing in copyright, before or since this ruling, would prevent another 3D producer from making a different egg cup that looks like a bird’s nest, and which competes with Studiogij, as long as it does not copy Studiogij’s design. This is well-travelled copyright territory.
Finally, for what it’s worth, I think the elegance of Justice Ginsberg’s opinion in the Varsity case should help allay fears about the effect this ruling might have on future innovation. Her view that Varsity’s design work was copyrightable and then reproduced onto useful articles applies to the birds nest egg cup; and it would apply in so many probable scenarios in which form meets function, that I doubt we will see a measurable increase in new barriers no matter how “useful articles” are made.
* NOTE: This is all hypothetical, nothing I’m saying in any way implies a review of Studiogij’s product.
© 2017, David Newhoff. All rights reserved.