Conceptual Separability Conceptualized

By Joseph Tromba, J.D. Class of 2018 Touro Law Review Associate Editor

Courts have struggled to devise a test to establish “whether ‘the pictorial, graphic, or sculptural features’ incorporated into the design of a useful article ‘can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article’ when those features cannot be removed physically from the useful article.”[1] This doctrine is applied to countless commodities that directly and indirectly impact the day-to-day lives of everybody in society.[2] Further, an establishment of separability, either conceptual or physical, is a precondition to copyrightability for a design of a product.[3]

The distinction between design elements that are protectable and functional elements that are not protectable can be unclear.[4] Generally, the concept of separability is the standard of copyrightability for useful articles’ designs.[5] The types of works that are subject to the separability analysis are broad; courts have implemented the separability doctrine to decide “the copyrightability of the designs of a variety of everyday objects, including furniture, shoes, and objects of entertainment for both children and adults.”[6] There exists “two ways to determine whether a pictorial, graphic, or sculptural work is separable from the utilitarian aspects of an article—physical separability and conceptual separability.”[7]

The Copyright Office outlines “the physical-separability test as follows: ‘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 completely intact.’”[8] For example, the Office contemplates a creative decorative ornament of a vehicle,’ which could be removed from the vehicle without demolishing the vehicle or the ornament, a physically separable aspect a vehicle, which can be recognized independently from and is able to exist separately of, the functional aspects of the vehicle.[9] However, the physical separability test is not as effective when the useful article is not three-dimensional since it is difficult to physically remove the useful article from the item it appears on.[10] When features cannot be physically separated from an object, the conceptual separability test is applied.[11]

There have been many different approaches presented for confronting the issue of conceptual separability.[12] Courts have struggled to establish one universal test for whether the design of a useful article and the utilitarian aspects of a useful article can be separated and exist independently of one another.[13] Around ten different tests exist within legal commentary to determine separability.[14] Some of these tests are misguided and got muddled down by focusing on other factors, such as the marketability of the design or useful article.[15] To prevent any further inconsistencies and struggles as to how to approach conceptual separability, the Supreme Court finally adopted a general rule.[16]

In Varsity Brands, Inc. v. Star Athletica, L.L.C., Varsity brought a copyright infringement claim against Star Athletica.[17] Varsity alleged that Star marketed uniforms that were substantially similar to Varsity’s copyrighted designs.[18] The Supreme Court decided, in a 6-2 holding, that an aspect that is included in the design of an article can qualify for copyright protection “only if the feature (a) 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” if the design could be conceived separately from the product in which it is involved.[19] Accordingly, the Court held that Varsity’s designs satisfied the test.[20] Essentially, if the design could be conceived separately from the product in which it is involved then the conceptual separability test is satisfied and the design is copyrightable.[21]

Finally, the test creates a national standard for conceptual separability that differs from physical separability.[22] The test is clear, in that it does not confuse physical separability.[23] It places an emphasis on the specific aesthetic features, which are capable of existing separately as intangible features in relation to the solely utilitarian aspects of the article.[24] This test, in theory, looks as if it will accomplish what the physical separability test cannot do, such as dealing with the intangible aspects of the useful article as actually being intangible aspects, and is a competent rule to exist alongside the physical separability test.[25] This test firmly establishes a basic approach that could be applied widespread, and will hopefully be an effective approach to compliment the physical separability standard.[26] Further, the test addresses the actual purpose of conceptual separability better than the preexisting approaches that existed in legal precedent because this test is clearer and does not get muddled in other factors, such as marketability.[27] This standard is a focused test that allows the courts to tackle the issue of whether the aesthetic element of a product is conceptually separable from the utilitarian aspect.[28]

The Court’s recent conceptual separability holding finally provides a national standard for conceptual separability.[29] Conceptual separability is all around us, and it will only continue to expand as time goes on and new designs and useful articles are created.[30] The concept of conceptual separability was thought to have reached its vanishing point because of various the different approaches and interpretations of the idea.[31] Hopefully, this holding will prove to have finally clarified a dividing line between copyrightable designs and noncopyrightable useful article designs.[32] Since the Court’s opinion was released on March 22, 2017, we will have to wait and see how this new test is executed when separability issues arise.[33] Many believe that the future of a $300 billion industry is going to be determined based on this decision.[34]

[1] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 484 (6th Cir. 2015) (holding that the graphic attributes of a creator’s designs were protectable in accordance with the Copyright Act because the Act protects graphic attributes of designs even if the attributes cannot be physically extracted from the article).

[2] Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separability in American Copyright Law, 69 Ohio St. L.J. 109, 111 (2008).

[3] Id. at 110.

[4] Eliya, Inc. v. Kohl’s Dep’t Stores, No. 06 Civ 195(GEL), 2006 WL 2645196, at *10 (S.D.N.Y. Sept. 13, 2006) (holding that a specific shoe design was not conceptually separable because the design of the parts of the shoe could not exist independently).

[5] Sepehr Shahshahani, The Design of Useful Article Exclusion: A Way Out of the Mess, 57 J. Copyright Soc’y U.S.A. 859, 864 (2010).

[6] Keyes, supra note 2, at 111.

[7] Varsity Brands, Inc., at 481.

[8] Id. at 481-82.

[9] Id. at 482.

[10] Id.

[11] Id. at 483.

[12] Varsity Brands, Inc., at 484.

[13] Id.

[14] Mark Hannemann, Star Athletica v. Varsity Brands: Supreme Court Evaluating Copyrights in Features of Useful Articles, Shearman (Apr. 7, 2017), http://www.shearman.com/en/newsinsights/publications/2016/11/star-athletica-v-varsity-brands-supreme-court.

[15] Galiano v. Harrah’s Operating Co., Inc., 416 F.3d 411, 419 (5th Cir. 2005) (ruling that designs were not eligible for copyright protection absent any showing that the designs were marketable separately of their practical function as uniforms).

[16] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010-11 (2017).

[17] Varsity Brands, Inc., 799 F.3d at 471-76.

[18] Id.

[19] Star Athletica, L.L.C., 137 S. Ct. at 1010-11.

[20] Gene Quinn & Steve Brachmann, Copyrights at the Supreme Court: Star Athletica v. Varsity Brands, IPWatchdog, http://www.ipwatchdog.com/2017/03/22/copyrights-supreme-court-star-athletica-v-varsity-brands/id=79767/.

[21] Star Athletica, L.L.C., 137 S. Ct. at 1010-11.

[22] Id.

[23] Id.

[24] Id.

[25] Id.

[26] Star Athletica, L.L.C., 137 S. Ct. at 1010-11.

[27] Hannemann, supra note 14; Galiano, 416 F.3d at 419.

[28] Masquerade Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663, 670 (3d Cir. 1990) (holding that a nose mask is not a “useful article” and cannot be copyrighted).

[29] Star Athletica, L.L.C., 137 S. Ct. at 1010-11.

[30] Keyes, supra note 2, at 111.

[31] Sally M. Donahue, The Copyrightability of Useful Articles: The Second Circuit’s Resistance to Conceptual Separability, 6 Touro L. Rev. 327, 357 (1990).

[32] Quinn & Brachmann, supra note 20.

[33] Star Athletica, L.L.C., 137 S. Ct. at 1010-11.

[34] Hannemann, supra note 14.

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