The Doctrine of Conceptual Separability

by Michael J. Borger, J.D. Class of 2018 Touro Law Review Junior Staff Member

Whenever law school students and legal scholars have the opportunity to discuss the most intriguing intellectual property issues of the day, the typical conversation will likely focus on the fascinating patent infringement litigation between Samsung Electronics, Co. and Apple, Inc.,[1] two companies that have revolutionized and dominated the technology sector for decades. Considering that these high-stakes, billion dollar lawsuits symbolize the cutting edge field that intellectual property law has developed into— a field that many future attorneys aspire to become a part of—it is not surprising that these discussions take place.[2] That being said, even without a formal scientific study, it might be assumed that most individuals intrigued by the complexities and excitement of intellectual property law would not dedicate time to observe the current copyright litigation originating in the heart of Memphis, Tennessee.[3]

Over the last decade, copyright litigation has frequently focused on the development of the fair use doctrine in areas such as the music recording and film industries.[4] However, an affirmative expansion of the seemingly limited applications of copyright law to artistic aspects of useful articles could bestow significant advantages on designers and businesses that seek protection for their innovative products and goods sold in a variety of markets throughout the United States.[5] As explained below, depending on how the Supreme Court rules in Varsity Brands, Inc. v. Star Athletic, LLC,[6] the “Birthplace of Rock ‘n’ Roll” might soon become the city that revived copyright law, making this area of intellectual property relevant to virtually every single manufacturing and enterprising industry.[7]

In Star Athletica, the main controversy presented to the District Court for the Western District of Tennessee involved a copyright infringement claim brought on by Varsity Brands, a manufacturer and seller of cheerleading uniforms.[8] To prove that Star Athletica, a competing manufacturer of athletic apparel, infringed on Varsity Brand’s copyrighted uniform designs, Varsity Brands needed to show that it owned valid copyrights to the designs and that Star Athletica copied protected elements of these designs.[9] Varsity Brands not only submitted evidence to the court that five of its best-selling uniform designs had received registered protection from the Copyright Office, but it also showed that Star Athletica reproduced exact copies of these designs and sold and distributed them on its own website for profit.[10] Even with this strong evidence supporting its copyright infringement claim, Varsity Brands still faced significant challenges as it struggled to convince the District Court that its design copyrights were actually valid.[11]

Unlike patent law which seeks to grant individuals the exclusive rights to their novel inventions and discoveries, copyright law affords legal protection to authors and designers who create works of artistic expression.[12] Since copyright law does not extend protection to the utilitarian aspects of a designer’s creation—the actual cheerleading uniform in this instance—one of the most unique and challenging problems in intellectual property law is the judicial task of separating the artistic features of a design that are mixed together and intertwined with other non-copyrightable utilitarian features.[13] This process is critical in determining which features of a design can in fact be given protection.[14] When these artistic elements are not capable of being physically separated from the article,[15] courts use what is known as the doctrine of conceptual separability to guide them in the process.[16] If it is determined that the artistic features are not separable from the useful article, these features are classified as “useful articles” and copyright protection will not be granted.[17]

Congress grants copyright certificate holders with a legal presumption that their copyright is valid.[18] To prevail in Varsity Brands, Inc. v. Star Athletica, LLC,[19] Star Athletica needed to prove that the Copyright Office erred in granting Varsity Brands copyright protection for the designs of their cheerleading uniforms, specifically the “lines, patterns, and chevrons” which were featured on them.[20] To establish that the five copyrights were issued in error, Star Athletica asserted that the copyrights issued to Varsity Brands were not valid because the creative features that Varsity Brands sought protection for were neither physically nor conceptually separable from the utilitarian cheerleading uniform.[21] The District Court agreed with Star Athletica and granted its motion for summary judgment on the copyright infringement claims.[22] The Court of Appeals for the Sixth Circuit reversed on the ground that the creative features affixed to the cheerleading uniform were conceptually separable and therefore capable of receiving protection.[23]

This case exemplifies how challenging the application of the doctrine of conceptual separability has become since the Federal Circuit Courts have articulated more than nine tests to determine whether artistic features are capable of being conceptually separated from the utilitarian article they are attached to.[24] To make matters even more complicated, courts within the same circuit regularly apply different variations of the same test which often leads to even more confusion and inconsistency in these high-stakes copyright litigations.[25] The procedural history discussed below will shed some light on the complexities of this type of analysis.

Varsity Brands originally crafted its entire legal argument based on the Seventh Circuit’s “aesthetic influence test” which looks at whether the artistic elements of the object were designed independently of the utilitarian function of the article to which it is affixed.[26] It argued that because its uniform design team essentially has free reign to create and is not required to adapt its designs to meet the needs of production, it satisfied this test and protection should have been granted.[27] The District Court rejected this argument and adopted the Fifth Circuit’s version of the “marketability test” for conceptual separability which looks at whether the utilitarian object is still likely to be marketable once the artistic elements are physically or conceptually removed from it.[28] According to the court, once the creative design elements were conceptually removed from the uniform—the braided stripes and colored chevrons—the article lost its “cheerleading-uniform-ness” and would not be marketable to any significant segment of the community.[29]

The Court of Appeals for the Sixth Circuit reversed and subsequently rejected both of the previously mentioned tests.[30] In ruling in favor of Varsity Brands, the court gave substantial deference to the Copyright Office’s decision to issue registered copyrights to Varsity Brands and adopted a “hybrid” separability test which featured different elements from a variety of separability tests used throughout all of the Circuit Courts.[31] Specifically, it adopted elements of the Second Circuit’s “objectively necessary” test which was first articulated in Carol Barnhart, Inc. v. Economy Cover Corp.,[32] and considers whether the artistic features of the design are merely ornamental and not necessary to the performance of the utilitarian article itself.[33] Interestingly enough, the Sixth Circuit looked favorably upon Judge Newman’s dissenting opinion in Carol Barnhart as well, adopting elements of his proposed “ordinary observer” test which looks at whether a reasonable observer of the article is capable of conceptualizing two separate products “side by side” of each other—the utilitarian object and the artistic elements.[34]

The Supreme Court is expected to articulate the appropriate test lower courts should use to determine whether an artistic feature is conceptually separable from the useful article that it is attached to and thus protectable under copyright law.[35] This decision is exceptionally critical because depending on which test the Supreme Court adopts as the baseline standard, the effect on virtually every single manufacturing industry could be significant.

There is no question that if a business owns the exclusive rights to a design or product, that business will have a tremendous advantage over its competitors operating in the same market space. Another important consideration is that unlike patent protection which is generally very expensive to obtain and only grants exclusive rights to its holder for a relatively short period of time, copyright protection grants exclusive rights to the holder for the life of the creator plus seventy years.[36] In many instances, if the court had applied a different conceptual separability test from another circuit, it is possible that drastically different results would have occurred.[37]

For instance, in Jovani Fashion, Ltd. v. Fiesta Fashions,[38] the special arrangement of sequins and decorative beads incorporated in the design of one of Jovani’s best-selling prom dresses was denied copyright protection from the Second Circuit because it failed the “design process test” which requires the design elements to “reflect the designer’s artistic judgment exercised independently of functional influence.”[39] This decision demonstrates the substantial impact the Supreme Court’s holding in Varsity Brands could have on the entire fashion industry. Perhaps if the “ordinary observer” test was applied in this case, a test which looks at the effect of the design on a reasonable observer and asks whether the observer can conceptualize two different products, it is possible that Jovani would have received copyright protection for the dress and could have prevented other dress designers from selling their highly popular and profitable design.[40]

Although Silicon Valley tech giants frequently find themselves involved in the most highly publicized and exciting patent litigation, it is important for law school students to observe other areas of developing intellectual property law as well. A simple dispute arising between two competing cheerleader uniform manufacturers over colored stripes and chevrons has the capability of not only impacting virtually every manufacturing industry, but also shaping the future of copyright litigation in the United States. On October 31, 2016, the Supreme Court will hear oral arguments from both Varsity Brands and Star Athletica. It has yet to be determined when a decision will be handed down.

[1]Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012).

[2] Laura L. Pollander, “First-Inventor-To-File” May Prove Fatal to Patent Rights Upon the Death of an Inventor, 27 Quinnipiac Prob. L.J. 186, 186-92 (2014).

[3] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F3d 468, 481 (6th Cir. 2015) (contemplating the highly debated question as to which of the nine tests for conceptual separability tests existing among the Circuit Courts is the appropriate test for determining whether artistic elements and features of a design can be conceptually separated from the useful article that the features are attached to).

[4] Patricia Aufderheide & Peter Jaszi, Reclaiming Fair Use (2011).

[5] Universal Furniture Int’l, Inc., v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010) (deciding whether a furniture manufacturer could receive copyright protection for designs carved into its products); Pivot Point Int’l, Inc., v. Charlene Prods., Inc., 372 F.3d 913, 915 (7th Cir. 2004) (deciding whether a manufacturer of mannequin heads for cosmetic and hair stylists could receive copyright protection for the unique design elements of its products); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 990 (2d Cir. 1980) (deciding whether a manufacturer of western belt buckles could receive copyright protection for its designs).

[6] Varsity Brands, 799 F.3d at 481, cert. granted, 136 S. Ct. 182 (U.S. May 2, 2016) (No. 15-866).

[7] Memphis, (last visited Oct. 8, 2016); see also, supra, note 5 (listing the variety of industries and markets seeking design protection via copyright law).

[8] Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 at *2 (W.D. Tenn. Mar. 1, 2014).

[9] Id. at *3.

[10] Id. at *2.

[11] Id. at *3-4.

[12] Marshall A. Leaffer, Understanding Copyright Law § 3.11 (Matthew Bender, 6th ed. 2014).

[13] Paul Goldstein, 1 Goldstein on Copyright § 2.5.3, at 2:67 (3d ed. 2013) (“Of the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectable [PGS] works and unprotectible utilitarian elements of useful articles”).

[14] Goldstein, supra, note 12.

[15] Compendium of U.S. Copyright Office Practices § 924.2 (A) (3d ed. 2014) (“Physical separability means that the useful article contains pictorial, graphic, or sculptural features that can be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article intact… [such as] a sufficiently creative decorative hood ornament on an automobile.”).

[16] Compendium of U.S. Copyright Office Practices § 924.2 (B) (3d ed. 2014) (“Conceptual separability means that a feature of the useful article is clearly recognizable as a pictorial, graphic, or sculptural work, notwithstanding the fact that it cannot be physically separated from the article by ordinary means”).

[17] Gay Toys, Inc. v. Buddy L. Corp., 703 F.2d 970, 972 (6th Cir. 1983) (“‘[U]seful articles’ are not generally copyrightable, although certain features of ‘useful articles’ may be copyrighted separately”).

[18] 17 U.S.C. § 410 (C) (2012) (stating that a certificate of registration “constitute[s] prima facie evidence of the validity of the copyright and of the facts stated in the certificate”).

[19] Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 at *2 (W.D. Tenn. Mar. 1, 2014).

[20] Id. at *9.

[21] Defendant’s Memorandum of Law in Opposition of Plaintiff’s Motion to Dismiss at 8, No. 10-cv-02508-BBD-cgc, Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 at *1 (W.D. Tenn. Mar. 1, 2014).

[22] Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 at *10 (W.D. Tenn. Mar. 1, 2014).

[23] Varsity, 799 F.3d at 492.

[24] Id. at 484-85.

[25] Id. at 485 (“In recent years, our colleagues on the Second and Fourth Circuits have used multiple of the above-listed [conceptual separability] approaches in the same case.”).

[26] Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 at *7 (W.D. Tenn. Mar. 1, 2014).

[27] Id.

[28] Id. at *1.

[29] Id. at *1, *8.

[30] Varsity, 799 F.3d at 487, 494.

[31] Id. at 487.

[32] 773 F.2d 411, 419 (2d Cir. 1985).

[33] Varsity, 799 F.3d at 487, 494

[34] Carol Barnhart, 799 F.3d at 421-22 (Newman, J., dissenting).

[35] Varsity Brands, 799 F.3d at 481, cert. granted, 136 S. Ct. 182 (U.S. May 2, 2016) (No. 15-866).

[36] 17 U.S.C. § 302(a).

[37] Appellants’ Reply Brief at 5, Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (No. 14-5237).

[38] 500 Fed. Appx. 42 (2d Cir. 2012).

[39] Id. at 45; see also, Brandir Intern., Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987).

[40] Carol Barnhart, 799 F.3d at 421-22 (Newman, J., dissenting).


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