The New Standard for Copyright Protection of Useful Articles

Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 94 PTCJ 738, 7/14/17. Copyright

! 2017 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com

COPYRIGHTS

A recent ruling by the U.S. Supreme Court regarding the protectability of designs on

cheerleader uniforms offers a more uniform and expansive standard for determining

whether features appearing on clothing are conceptually separable and protectable as sepa-

rate works of expression. The ruling is also likely to have an important impact on the

emerging 3-D printing industry.

The New Standard for Copyright Protection of Useful Articles: Star Athletica and

its Impact on the 3-D Printing Industry

BY JIM STRONSKI,PREETHA CHAKRABARTI, AND

JORDON PARKER

The Supreme Court had us biting our nails this term,

as we waited for its decision on the copyrightability of

useful articles. In March, the Supreme Court addressed

the copyrightability of cheerleading uniforms inStar

Athletica, LLC. v. Varsity Brands, Inc., No. 15-866, 137

S. Ct. 1002 (2017), holding that chevron-patterned uni-

forms met its new separability test for copyright protec-

tion.

Star Athletica established a new standard to deter-

mine when such articles, however useful, may still be

protected by copyright due to their aesthetic features.

The metes and bounds of what is protectable under Star

Athletica will of course be developed through litigation;

however, two important things may be said now about

the case.

First, it appears to broaden significantly the scope of

useful articles that may be protected by copyright, and,

second, it supplants varying tests articulated by the Cir-

cuits with a uniform standard and although major fash-

ion labels had some of the widest eyes and loudest

voices during the hard-fought copyright case, younger

industries also had skin in the game.

Because the issue was the proper interpretation of

‘‘separability’’ for ‘‘useful articles’’ under the Copyright

Act, emerging industries such as 3-D printing took no-

tice too.

Section 101 of the Copyright Act recognizes that

‘‘pictorial, graphic, and sculptural’’ (‘‘PGS’’) works may

contain uncopyrightable ‘‘mechanical or utilitarian as-

pects.’’

The protectable non-utilitarian PGS aspects of a use-

ful article can only be protected if they ‘‘can be identi-

fied separately from, and are capable of existing inde-

pendently of, the utilitarian aspects of the article.’’

The act defines a useful article as ‘‘having an intrin-

sic utilitarian function that is not merely to portray the

appearance of the article or to convey information.’’

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And, that’s pretty much all Congress wrote. Needless

to say, federal circuits diverged on the definitions of

‘‘identified separately from,’’ ‘‘existing independently,’’

and ‘‘intrinsic utilitarian function.’’

The greater consistency that the application of a

single test should achieve will no doubt be welcome by

many in the 3-D printing industry. But the expanded

scope of protection, however more consistently applied,

can be expected to create new risks and opportunities

for the stakeholders in this emerging industry.

How Did We Get Here?

It all started with a lamp sculpture that incorporated

statuettes of male and female dancing figures. The dis-

pute over the extent of the copyrightability of the statu-

ettes made it all the way to the Supreme Court in Mazer

v. Stein, 347 U.S. 201 (1954). Mazer ended up setting in

motion the useful articles doctrine, holding that ‘‘artis-

tic articles are protected in form but not their mechani-

cal or utilitarian aspects.’’

Mazer said that ‘‘nothing...support[s] the argument

that the intended use or use in industry of an article eli-

gible for copyright bars or invalidates its registration.’’

It was pretty easy to conceptualize a sculpture sepa-

rately from the cords and bulb of a lamp. The more en-

meshed the aesthetic and useful features become, how-

ever, the more difficult it is to draw the line between the

two.

In the Second Circuit, the test evolved around orna-

mental aspects being ‘‘conceptually separable from

their subsidiary utilitarian function’’ (Kieselstein-Cord

v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.

1980)).

This meant that, ‘‘where design elements can be iden-

tified as reflecting the designer’s artistic judgment exer-

cised independently of functional influences, concep-

tual separability exists’’ (Brandir Int’l, Inc. v. Cascade

Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987)).

The Seventh Circuit followed the Second, with nearly

identical analysis: ‘‘If the elements do reflect the inde-

pendent, artistic judgment of the designer, conceptual

separability exists’’ (Pivot Point Int’l, Inc. v. Charlene

Prods., 372 F.3d 913, 931 (7th Cir. 2004)).

If conceptual separability sounded easy, you would

be right at home in the Second or Seventh Circuits. But

if, like many of us, you squinted your eyes and

scratched your head, pondering what in the world it all

means, the Fifth Circuit was on your side. This ‘‘concep-

tual separation continues to flummox federal courts,’’

according to Galiano v. Harrah’s Operating Co., 416

F.3d 411, 419 (5th Cir. 2005).

For ease of application, Galiano held the test to be

satisfied where ‘‘there is substantial likelihood that

even if the article had no utilitarian use it would still be

marketable to some significant segment of the commu-

nity simply because of its aesthetic qualities.’’

There were more tests throughout the circuits, sig-

nificantly arming the litigator’s arsenal. Unfortunately,

this meant considerable uncertainty for many indus-

tries.

Where Are We Now?

Three-D printing industry stakeholders have faced

considerable uncertainty about whether and under

what circumstances useful articles made with this tech-

nology are protected.

Members of the industry banded together to argue to

the Supreme Court, as amici, that ‘‘users of 3-D scan-

ners and cloud sharing platforms cannot be sure

whether they can lawfully create and share digital and

physical 3-D replications of real-life objects.’’

Because the scope of copyright protection for useful

articles is important to many industries—not least of

which are the fashion and the emerging 3-D printing

industries—the court took up the case and articulated a

new standard to identify, in useful articles, separable

aesthetic features subject to protection.

This is the test Star Athletica has given us:

A feature incorporated into the design of a useful article is

eligible for copyright protection only if the feature (1) can

be perceived as a two- or three-dimensional work of art

separate from the useful article, and (2) would qualify as a

protectable pictorial, graphic, or sculptural work—either on

its own or fixed in some other tangible medium of

expression—if it were imagined separately from the useful

article into which it is incorporated.

Prong two of the new standard introduces a concept

that seems to depart from the Section 101 ‘‘existing in-

dependently’’ requirement for the incorporated feature.

Arguably, this standard appears to further erode the di-

viding line between applied art and industrial design,

expanding the scope of copyrightable features.

Some IP scholars have opined that the courts have al-

ready ‘‘abstracted away from the distinction Congress

intended,’’ arguing that, once extracted, the feature

should ‘‘stand alone as an original . . . (PGS work) that

is not a useful article.’’

Echoing this, law professors Christopher Buccafusco

and Jeanne Fromer argued in their amicus brief that

both the Copyright Act and the court ‘‘have long recog-

nized the dangers of allowing creators to use the copy-

right system to receive protection for utilitarian features

....Functionality is more properly channeled to the de-

sign or utility patent systems.’’

Clearly, the court was not as fearful that this decision

would cross the dividing line, but instead gave the use-

ful articles doctrine a new leg to stand on.

By virtue of coming from the Supreme Court, the new

test may introduce greater consistency, but frustrat-

ingly, its application may be as confusing as the pre-

existing circuit law. But it is clear that this test is more

expansive than most of the previous circuit law and

should be more easily satisfied.

The Star Athletica district court found that the chev-

ron patterns and cheerleading uniforms in question

could not be ‘‘physically or conceptually’’ separated un-

der Section 101 ‘‘from the utilitarian function’’ of the

uniform.

Before the Sixth Circuit reversed and the Supreme

Court granted certiorari and decided Star Athletica, this

narrower view of separability under Section 101 was

common in district courts across the country. The dis-

trict courts of the Second Circuit, for example, would

have likely come to a similar conclusion, limiting the

protection of useful articles based on Section 101.

Interestingly, Section 101’s literal language requires

the protectable design feature to be ‘‘capable of existing

independently of the utilitarian aspects.’’ The court’s

test allows for the feature to exist ‘‘either on its own or

fixed in some other tangible medium of expression.’’

7-14-17 COPYRIGHT ! 2017 BY THE BUREAU OF NATIONAL AFFAIRS, INC. PTCJ ISSN 0148-7965

The language of the new standard that allows the

work of art to be perceived in some other medium, and

not simply in the useful article, would seem to be a ma-

terial expansion of the scope of protection that should

grant some level of protection to the aesthetic features

of many useful articles that under earlier standards

would not have been protected.

While the ripple effect of this decision will be decided

in the coming years of litigation, we can comfortably

say that copyright protection in the realm of useful ar-

ticles has been widened.

Features of useful articles that previously were not

protected will now be protectable under copyright, and

the bow for those in any design-focused industry seek-

ing to protect the original, aesthetic design features of

useful articles.

We address the impact this brave new copyright

world may have on stakeholders in 3-D printing.

Individual Creators

Individual creators will most assuredly enjoy ex-

panded copyright protection. Many courts would have

found the chevron patterns at issue in Star Athletica in-

separable from the uniforms. It’s unclear to what extent

the scope of aesthetic expression has been expanded,

and individual creators will still have to surpass origi-

nality requirements. The court did express at least some

reservation whether the surface decorations on the

cheerleading uniforms met the threshold originality re-

quirement.

Now, the portions of underlying computer aided de-

sign (CAD) files and standard tessellation language

(STL) files written for 3-D renderings and productions

that were once thought largely uncopyrightable be-

cause of their utilitarian nature may now contain mate-

rial protected by the author’s copyright.

Defining and separating the protectable portions of

these files has been difficult in the past, but this new ex-

pansion may lead to more blanketed copyright rights.

Downstream and Add-on Innovators

Because the initial creator will likely be able to claim

more in the underlying CAD or STL file, those who ac-

cess non-public domain files in order to build on top of

them will need to be more cautious. What once may

have been thought to be uncopyrightable may now be

copyrightable.

To protect oneself as a downstream creator, borrow-

ing from other works, it will become increasingly more

important to rely on Creative Commons attribution li-

censes, public domain files, and familiarization with

fair use.

Three-D Printing Providers

The 3-D printing industry now has its single stan-

dard. This is a good thing in that legal departments for

companies such as Shapeways and Formlabs can now

draft uniform service agreements and copyright terms.

However, with growing copyrightability in the realm

of useful articles, these companies will need to have in

place stringent takedown procedures pursuant to the

safe harbor provided for in Section 512 of the Digital

Millennium Copyright Act, since undoubtedly more

claim expanded rights in the designs of their useful ar-

ticles.

So, while certain transaction costs may be reduced,

insofar as uniform service agreements are concerned,

time will tell whether those resources will just need to

be funneled back into these companies’ legal depart-

ments for takedown reviews.

One thing 3-D printing companies and downstream

innovators should not do is be bullied by copyright

holders claiming IP rights too broadly. Some companies

such as Shapeways rely on the freedom of users to up-

load, alter, download, and print in a relatively open and

burden-free virtual space.

These providers should remember that these are still

useful articles, and ‘‘ownership of a copyright in a pic-

torial representation of a useful article does not vest the

owner of the picture with a derivative copyright in the

useful article itself’’ (Eliya, Inc. v. Kohl’s Dep’t Stores,

No. 06 Civ 195 (GEL), (S.D.N.Y. Sep. 13, 2006)).

Those who offer 3-D printing resources should be ap-

prised of the extent to which copyrightability in CAD

files of useful articles may or may not extend.

Three-D Scanners

The risks and challenges arising from Star Athletica

may have the most obvious impact on the 3-D scanning

industry. Previously, devices that had more than signifi-

cant IP-infringing capabilities could nevertheless be

saved if they possessed substantial non-infringing uses.

Sony’s Betamax escaped contributory infringement be-

cause it was ‘‘capable of commercially significant non-

infringing uses’’ (Sony Corp. of Am. v. Universal City

Studios, Inc., 464 U.S. 417, 442 (1984)).

Meanwhile, Grokster’s peer-to-peer file-sharing plat-

form performed few noninfringing functions, and its

creators expressly intended for it to be used to down-

load copyrighted works, thus providing grounds for a

compelling record in that case for induced infringement

(MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913

(2005)).

Grokster left a little wiggle room for unanticipated

technologies, saying, they are ‘‘mindful of the need to

keep from . . . discouraging the development of tech-

nologies with lawful and unlawful potential.’’

‘‘[J]ust as Sony did not find intentional inducement

despite [general] knowledge,’’ Grokster held that ‘‘mere

knowledge of infringing potential or of actual infringing

uses would not be enough here to subject a distributor

to liability.’’

Of course, Grokster was liable in that case. In 2017,

is a 3-D scanner more like a 1984 Betamax or a 2005

peer-to-peer file-sharing platform?

When it comes to ‘‘induced infringement,’’ evidence

of ‘‘active steps taken to encourage direct infringe-

ment’’ will be necessary, according to Grokster.

This risk thus may be mitigated with appropriate con-

tractual terms, terms of condition of use, and certain

policies. But what is the contributory liability risk for

3-D scanners? Do they have ‘‘commercially significant

noninfringing uses?’’ The technology behind 3-D scan-

ning does indisputably attempt to capture as exact a

copy as possible of the 3-D object.

A copyright suit requires (1) the plaintiff’s valid copy-

right and (2) that the defendant copied the copyrighted

PATENT, TRADEMARK & COPYRIGHT JOURNAL ISSN 0148-7965 BNA 7-14-17

work. The copying element may be proved by (1) the

defendant’s access to the copyrighted work and (2) the

substantial similarity to that work.

Three-D scanning of a copyright protected useful ar-

ticle would necessarily involve access and the produc-

tion of a substantially similar work. Indeed, it would in-

volve copying by its very use.

As disconcerting as it may be, 3-D scanners may need

to rely on the Grokster dicta, that courts should remain

‘‘mindful’’ of the ‘‘development of technologies.’’

Some articles scanned or printed with 3-D printing

technology should continue to be merely useful articles

not protectable under Star Athletica and so a reason-

able record to support a finding of commercially signifi-

cant noninfringing uses to address the contributory in-

fringement issue should be maintained.

The risk of liability for 3-D scanner makers may also

be limited by the prudent and consistent use of terms of

use language and certain policies that clarify that the

created product is in no way intended to be used to re-

produce things with valid copyrights or to otherwise in-

fringe an intellectual property right of another.

Moving Forward

The Supreme Court has now given us what should be

a more uniform and expansive separability standard for

useful articles.

A single standard and the uniformity it should breed

will enable stakeholders to develop policies on use and

licensing where copyright protection is more likely to

exist, so as to limit infringement risk.

And at the same time, authors of design features of

useful articles should have expanded opportunities to

protect their works. For the 3-D printing industry, Star

Athletica poses new risks and opportunities for those

who most effectively address these new risks. It un-

doubtedly will have an important impact on this emerg-

ing industry.

7-14-17 COPYRIGHT ! 2017 BY THE BUREAU OF NATIONAL AFFAIRS, INC. PTCJ ISSN 0148-7965