Amicus Curiae Brief — Star Athletica, L. L.C. v. Varsity Brands, Inc., 136 S. Ct. 1823 (2016) (No. 15-866)

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Suprome Gout. US.

No. 15-866 FILED

SEP ? 1 2016

IN THE

OFFICE OF THE CLERK

Supreme Oot of the United States

STAR ATHLETICA, L.L.C.,

Petitioner,

VARSITY BRANDS, INC., ET AL.,

tesporudents.

On Writ of Certiorari

to the United States Court of Appeals

for the Sixth Circuit

BRIEF OF PROFESSORS JEANNIE SUK GERSEN

ANDC. SCOTT HEMPHILL AS AMICI CURIAE

IN SUPPORT OF RESPONDENTS

JEANNIE SUK GERSEN SCOTT B. WILKENS

HARVARD LAW SCHOOL Counsel of Record

1563 Massachusetts Ave. MATTHEW S. HELLMAN

Cambridge, MA 02138 SAMUEL C. BIRNBAUM*

JENNER & BLOCK LLP

C. SCOTT HEMPHILL 1099 New York Ave. NW

NEW YORK UNIVERSITY Suite 900

SCHOOL OF LAW Washington, DC 20001

40 Washington Sq. South (202) 639-G000

New York, NY 10012 swilkens@jenner.com

“Adie tted outly in New York,

Practicing uader the supervision oj the

jetrtnership of Jenner & Black LLP.

Counsel for Anvci Curiae

September 21, 2016

QUESTION PRESENTED

What is the appropriate test to determine when a

feature of a useful article is protectable under § 101 of

the Copyright Act?

TABLE OF CONTENTS

. ID cencccccnsscssenscsennsenniccnssccerenisseininn i

3 cecccectenccstcntnccncccccctennitsicintiniiaan iii

INTEREST OF AMICI CURIAE. . . l

SUMMARY OF ARGUMENT ccccccccccccsccccscccccscccsccsscesscceces ]

r AAA PA SIRI So AE 8 4

I. General Copyright Principles Apply

yA CE SL 4

II. The Term “Utilitarian Function” In

Section 101 Refers To Mechanical Or

Similarly Practical Utility, Not Every

RE ae cee eae 12

III. Expressive Features Are

Conceptually Separable Where They

Are Not Dictated By Utilitarian

—̃7⅛ Q— — ——— 19

IV. The Copyrightability Of Overall

iii

TABLE OF AUTHORITIES

Page(s)

CASES

Baby Buddies, Inc. v. Toys “R” Us, Inc.,

611 F.3d 1308 (11th Cir. 20100. . . . . 20

Baker v. Selden,

TE 6, 7, 10, 16, 17, 18

Bleistein v. Donaldson Lithographing

Co.,

eee 23

Carol Barnhart Inc. v. Economy Cover

Corp.,

77 F.2d 411 (2d Cir. 1985)... 21, 22

Chosun International, Inc. v. Chrisha

Creations, Ltd.,

Dee 20-21

Corley v. United States,

. 15

Fashion Originators’ Guild of America,

Inc. v. FTC,

r 29

Feist Publications, Inc. v. Rural

Telephone Service Co.,

r 28

es SS EE N es ee ,:CL.C

Gay Toys, Inc. v. Buddy L Corp.,

522 F. Supp. 622 (E.D. Mich. 1981),

vacated, 703 F. 2d 970 (6th Cir. 1983) 14, 15

Gay Toys, Inc. v. Buddy L Corp.,

708 F.2d 970 (6th Cir. 1988)———.—————————— 15

Kieselstein-Cord v. Accessories by Pearl,

Inc.,

F.2d 909 (2d Cir. 19800———————. 21, 22

Kirtsaeng v. John Wiley & Sons, Inc.,

Le Se 19, 20, 29

Mazer v. Stein,

EE 7, 8, 9, 17, 25

Peel & Co., Inc. v. The Rug Market,

238 F. ad 391 (Sth Cir. 2001) ————.—.——— 17, 23

Pivot Point International, Inc. v.

Charlene Products, Inc.,

372 F.3d 913 (7th Cir. 2004) . 20, 21

Tilley v. TJX Companies,

345 F. ad 34 (Ist Cir. 200 3)— . —.—.—— 23

Tufenkian Import/Export Ventures, Inc.

v. Einstein Moomjy, Inc.,

BBB FBS 1ST CBS Car. — ——ẽ—ẽ 17, 23

Universal Furniture International, Inc.

„. Collezione Europa USA, Inc.,

618 F.3d 417 (4th Cir. 2010) (per

. —— 20

STATUTES AND RULES

_j § | 4, 5, 6, 12, 14, 15, 20, 26

og 48 — — „ 28

r 8. 9

. hb‚. 8

OTHER AUTHORITIES

Compendium of U.S. Copyright Office

Practices § 924.2(B) (3d ed. 2014) 29, 30

1 P. Goldstein, Copyright § 2.5.3 (3d ed.

EE ce 7,8

H.R. Rep. 94-1476 (1976), reprinted in

1976 U.S. C. C. A. N. 5859 8. 12, 14, 17, 20

C. Seott Hemphill & Jeannie Suk, The

Fashion Originators’ Guild of

America: Self-Help at the Edge of 1P

and Antitrust, in Intellectual

Property at the Edge: The Contested

Contours of IP 159 (Rochelle C.

Dreyfus & Jane C. Ginsburg eds..,

C. Seott Hemphill & Jeannie Suk, The

Law, Culture, and Economics of

Fashion, 61 STAN. L. REV. 1147 (2009) .................... 28

1 M. Nimmer & D. Nimmer, Copyright

—— — —ůůů ů— — 9, 10, 22

Oxford English Dictionary (1933) 13

2 W Patry, Copyright (2016) 7, 8, 15, 21, 22

Webster’s Third New International

Dx ß ——————— 13

]

INTEREST OF AMICI CURIAE’

Amici are law professors at universities in the

United States and teach, research. and write

extensively on intellectual property law, including

outcome of this case. Instead, they have a professional

interest in ensuring that the copyright law is

interpreted in a consistent, well-reasoned manner, with

close adherence to the statutory text and this Court’s

foundational copyright jurisprudence. Amici are:

Jeannie Suk Gersen

John H. Watson, Jr. Professor of Law

Harvard Law School

C. Seott Hemphill

Professor of Law

New York University School of Law

Institutional affiliations are given for identification

purposes only.

SUMMARY OF ARGUMENT

The question presented by this case goes to the

heart of copyright law and implicates the Copyright

Act’s guiding definitions as well as this Court’s

foundational precedents reaching back to the 1870s.

In the Copyright Act, Congress carefully addressed

the copyrightability of works of authorship that possess

utilitarian functions. In defining “useful article” in

' Pursuant to Rule 37.6, amici affirm that no counsel for a party

authored this brief in whole or in part and that no person other

than amici and their counsel made a monetary contribution to its

preparation or submission. Petitioner's and Respondents’ consent

to the filing of amicus briefs is filed with the Clerk.

section 101 of the Copyright Act, Congress made clear

that the design of a useful article, whether two-

dimensional or three-dimensional, is protectable as a

pictorial, graphic, or sculptural work, as long as its

pictorial, graphic, or sculptural features are separable

from its utilitarian aspects. This definition codified this

Court’s decisions in Baker v. Selden and Mazer v. Stein,

which, among other things, rejected any notion that

useful articles are categorically excluded from

understanding that existed prior to the 1976 Copyright

Act. “Useful articles” do not stand apart from the rest

of copyright as a carved out exception to protectability,

but rather, like all other works, are subject to

In contrast, Petitioner and its amici seek to carve

out garment designs as a special category of works that

are unprotectable. In doing so, Petitioner and its amici

would undermine the coherence of copyright law and

would render unprotectable not only garment designs

but a far broader swath of works, including many that

have long been protected. That result is entirely

unwarranted.

Petitioner and its amici assert that the term

“utilitarian function” in section 101’s definition of

“useful article” means something extremely broad.

That interpretation cannot be correct, because it has

the practical effect of excluding useful articles from

Stein squarely foreclose. Properly understood,

“utilitarian” in section 101 refers to mechanical or

similarly practical utility or usefulness. It does not

refer to usefulness for aesthetic, decorative, or cultural

purposes, such as making someone look attractive or

stylish. Those kinds of functions of a work are

paradigmatic non-utilitarian functions, even though it is

possible to characterize those functions of a work in

some very broad sense as “useful.” Treating a work's

decorative function as “utilitarian” would make almost

every pictorial, graphic, or sculptural work utilitarian

and thus unprotectable, because almost every such

work has that kind of decorative function. That

understanding of “utilitarian” would not only lead to

absurd results, but would also contradict the text and

structure of section 101 and make a hash of the statute.

The dispositive question in this case is whether the

pictorial, graphic, or sculptural features of a particular

piece of clothing are separable from its utilitarian

aspects. For the vast majority of clothing, such

features are not separable because, in general, most

clothing designs are _ dictated by utilitarian

considerations. However, to the extent that the design

may have pictorial, graphic, or sculptural features that

are separable from utilitarian aspects, then those

features are protectable. The instant amici propose

the following test for separability, which is consistent

with the statutory text and this Court’s precedents:

The design of a useful article is protectable if it is not

dictated by, or necessary to, utilitarian or functional

considerations. The Second Circuit has employed this

analytical approach in several important cases, and it is

the only test consistent with copyright law’s

longstanding principle that mere functional influences

do not disqualify a work from copyright protection.

ARGUMENT

1 General Copyright Principles Apply To Useful

Articles.

The area of copyright law dealing with “useful

articles” suffers from two common and related

misperceptions that run against the text of the

excluded from copyright, and that the separability

analysis is categorically more hostile to three-

dimensional useful articles than to two-dimensional

useful articles. These categorical ways of reasoning

overcomplicate the Copyright Act, and have caused

many lower courts to proliferate confusing, varied, and

inconsistent tests that fail to follow the statute’s simple

logic.

In the Copyright Act, Congress carefully addressed

the copyrightability of works of authorship that possess

utilitarian functions. The Court should clarify that the

statute’s separability requirement for the protectability

of “useful articles,” whether those articles are two-

dimensional or three-dimensional, is a logical

manifestation of copyright’s longstanding general

approach to protectable works of authorship that

possess utilitarian functions.

Whether a two-dimensional or three-dimensional

“useful article” is protected by copyright is governed

by section 101 of the Copyright Act, which provides in

relevant part:

“Pictorial, graphic, and sculptural

works” include two-dimensional and

three-dimensional works of fine,

graphic, and applied art, photographs,

prints and art reproductions, maps,

globes, charts, diagrams, models, and

technical drawings, including

architectural plans. Such works shall

include works of artistic craftsmanship

insofar as their form but not their

mechanical or utilitarian aspects are

concerned; the design of a useful article,

as defined in this section, shall be

considered a pictorial, graphic, or

sculptural work only if, and only to the

extent that, such design incorporates

pictorial, graphic, or sculptural features

that can be identified separately from,

and are capable of existing

independently of, the utilitarian aspects

of the article.

A “useful article” is an article having an

intrinsic utilitarian function that is not

merely to portray the appearance of the

article or to convey information. An

article that is normally a part of a useful

article is considered a “useful article.”

17 U.S.C. § 101.

On its face, this language makes clear that “the

design of a useful article,” whether “two-dimensional”

or “three-dimensional,” is protectable as a “pictorial,

graphic, or sculptural work,” and explains the

circumstances in which it is protectable: “only if, and

only to the extent that, such design incorporates

pictorial, graphic, or sculptural features that can be

identified separately from, and are capable of existing

independently of, the utilitarian aspects of the article.”

17 U.S.C. § 101.

The Supreme Court’s landmark decision in Baker v.

Selden, 101 U.S. 99 (1879), made clear well over a

century ago that copyright may protect a work of

authorship that has a utilitarian function, while not

protecting the utilitarian function of that work. Thus,

there simply has never been a blanket exclusion from

Baker v. Selden, there was no question that a book that

had the function of explaining a utilitarian system of

bookkeeping was protectable, while the actual

utilitarian system of bookkeeping explained in the book

was not protectable. 101 U.S. at 104 (“The use of the

art is a totally different thing from a publication of the

book explaining it. The copyright of a book on book-

keeping cannot secure the exclusive right to make, sell,

and use account-books prepared upon the plan set forth

in such book.”). As the Court explained:

But there is a clear distinction between

the book, as such, and the art which it is

intended to illustrate. The mere

statement of the proposition is so

evident, that it requires hardly any

argument to support it. The same

distinction may be predicated of every

other art as well as that of book-

keeping. A treatise on the composition

and use of medicines, be they old or

new; on the construction and use of

ploughs, or watches, or churns; or on the

mixture and application of colors for

painting or dyeing; or on the mode of

drawing lines to produce the effect of

perspective, —would be the subject of

that the copyright of the treatise would

give the exclusive right to the art or

manufacture described therein.

Id. at 102.

Following Baker v. Selden, works that possess

utilitarian functions have long been understood to be

copyrightable, so long as they satisfy the requirements

specified by copyright law. The question then, has been

how to determine to what extent works that possess

utilitarian functions are copyrightable.

The 1976 Copyright Act, which set out the

requirement that to be protectable, a useful article’s

design must have pictorial, graphic, or sculptural

features that are separable from its utilitarian aspects,

is widely thought to have given effect to the Copyright

Office’s interpretation of pre-1976 law, including its

interpretation of this Court’s decision in Mazer v. Stein,

347 U.S. 201 (1954), which is discussed below. 1 P

Goldstein, Copyright § 2.5.3, p. 2:70 (3d ed. 2016

Supplement) (hereinafter “Goldstein”); 2 W. Patry,

(stating that the “useful article” language in section 101

“is an amalgam of the 1948 and 1959 [Copyright Office

regulations]”).

The 1976 Copyright Act’s legislative history makes

this explicit. The House Report indicates that the first

clause of section 101’s definition of “pictorial, graphic,

and sculptural works,” which includes “works of

artistic craftsmanship insofar as their form but not

their mechanical or utilitarian aspects are concerned,”

tracks the Copyright Office’s 1949 regulation relied

upon in Mazer. H.R. Rep. No. 94-1476, at 54 (1976)

(“House Report”), reprinted in 1976 U.S.C.C.A.N. 5659,

5667; 1 Goldstein § 2.5.3, p. 2:70.” The second clause,

requiring that the protected subject matter be

separable from the useful article’s utilitarian aspects,

tracks the Copyright Office’s 1959 regulation

interpreting Mazer. House Report, at 54-55; 1

Goldstein § 2.5.3, p. 2:70."

In Mazer v. Stein, the Court examined whether a

valid copyright existed in “statuettes of male and

female dancing figures. used as bases for table

lamps, with electric wiring, sockets and lamp shades

attached.” 347 U.S. at 202. In answering this question

in the affirmative, the Court rejected any notion that

useful articles—in Mazer v. Stein, electric lamp bases—

are categorically excluded from copyright. /d. at 214

(“The conclusion that the statues here in issue may be

copyrighted goes far to solve the question whether

their intended reproduction as lamp stands bars or

invalidates their registration.”); id. at 218 (“We find

nothing in the copyright statute to support the

argument that the intended use or use in industry of an

* That regulation, published at 37 C.F.R. § 202.8 (1949), provided

that “{wJorks of art includes works of artistic craftamanship, in

so far aa their form but not their mechanical or utilitarian aspects

are concerned, such as artistic jewelry, enamels, glassware, and

tapextries, as well as all works belonging to the fine arts, such as

paintings, drawings and sculpture. Mazer, 347 U.S. at 212-13.

That regulation, codified at 37 C.F.R. § 202.10(c) (1959), provided

that “{i]f the shape of a utilitarian article incorporates features,

such as artistic sculpture, carving, or pictorial representation,

which can be identified separately and are capable of existing

independently as a work of art,” those features are protected by

article eligible for copyright bars or invalidates its

registration. We do not read such a limitation into the

In reaching its holding, the Court analyzed the

development of copyright coverage from the founding

of the Republic through the early 1950s, and concluded

that “(t]he successive acts, the legislative history of the

1909 Act and the practice of the Copyright Office unite

to show that ‘works of art’ and ‘reproductions of works

of art’ are terms that were intended by Congress to

include the authority to copyright these statuettes.”

Mazer, 347 U.S. at 213-14. The Court relied heavily on

Baker v. Selden, “reaffirming the gist of the holding in

Baker and . . . the idea—first articulated in Baker

that useful works do not ipso facto become ineligible for

“Nimmer”) (conceding that prior editions of the

Nimmer treatise had erroneously “interpreted Mazer

to nari ow the scope of the Court’s holding in Baker’).

In short, the 1976 Copyright Act relied heavily on

pre-1976 Copyright Office regulations, which in turn

relied heavily on Mazer v. Stein and Baker v. Selden.

Section 101’s specification of the circumstances under

which “the design of a useful article” is protectable

should thus be understood as a careful codification of

Baker v. Selden’s conclusion: that the protection of a

particular copyrightable work of authorship does not

Indeed, the Court stated that “[aJs a standard we can hardly do

better than the words of the present [1949] Regulation, naming the

things that appertain to the arts.” 347 U.S. at 214 (citation

omitted). For the text of that regulation, published at 37 C.F.R.

§ 202.8 (1949), see supra note 2.

also extend to the utilitarian function of that very work.

Baker, 101 U.S. at 102, 104; 1 Nimmer, § 2A.06, p. 2A-

27 - 2A-28 (“much of the Court’s holding in Baker v.

Selden has since been codified in the current Act”).

Some assume that section 101 somehow struck a death

blow to the protectability of useful articles, see

Petitioner’s Brief (“Pet. Br.”) at 24, but that is

incorrect. Section 101 instead indicates the features of

a useful article’s design that are protectable, and in so

doing, closely implements the understanding that

existed prior to the 1976 Act, of copyright in works of

authorship that possess a utilitarian function.

In light of the foregoing, it is also incorrect to think

that the term “utilitarian function” in section 101’s

definition of “useful article’ means something

extremely broad and different from the very utilitarian

function that Baker v. Selden and Mazer v. Stein meant

to exclude from protectability in an otherwise

copyrightable work of authorship. £.g., Pet. Br. at 22,

38-39, 44-45 (defining utilitarian to include all of an

article’s “inherent, essential, or natural functions”;

ſeſven the slightest utilitarian function results in no

Christopher Buccafusco and Jeanne Fromer as Amici

Curiae in Support of Petitioner (hereinafter “Profs.

Buccafusco & Fromer Amicus Br.”) at 11 (defining

utilitarian to include any “designs or aspects of designs

.. . whose value is dependent on their effect on other

objects”; concluding under this very broad definition

that “[tlo the extent that aspects of garment design

affect the way in which the wearer is perceived, they

are utilitarian” (emphasis in original)). Interpreting

“utilitarian” in such an expansive fashion has the

practical effect of excluding “useful articles” from

Stein squarely foreclose. To the contrary, copyright

protects a design of a useful article to the extent that

its pictorial, graphic, and sculptural features can be

separated from its utilitarian aspects.

In using the term “utilitarian aspects of the article,”

section 101 means the same thing in the context of

“useful articles” that it means in any other copyright

context involving works of authorship that also have a

utilitarian function. In other words, “useful articles” do

not stand apart from the rest of copyright as a carved

out exception to protectability, but rather, like all other

works, are subject to copyright’s general conditions of

protectability. Thus, if Baker v. Selden is understood

to mean that utilitarian aspects of a work of authorship

are not protectable, then similarly, in the subset of

works of authorship that are considered “useful

articles,” utilitarian aspects of such useful articles are

not protectable, but their pictorial, graphic, and

sculptural features are.

As this case makes plain, the question of the

separability of a useful article’s utilitarian aspects from

its pictorial, graphic, and sculptural features has led

courts, litigants, amici, and commentators to adopt a

dizzying array of standards and tests for separability.

Brief of the Intellectual Property Law Association of

Chicago as Amicus Curiae in Support of Neither Party

at 8-11 (describing eleven different separability tests);

Brief of Amicus Curiae New York Intellectual

Property Law Association in Support of Neither Party

at 13-17 (describing ten different separability tests).

Petitioner’s own proposed test includes four distinct

steps and would cause a host of problems, discussed in

Part III infra. Pet. Br. at 38-39. These many different

approaches to separability overcomplicate a simple

statutory scheme. As this brief will explain, the proper

test for “separability” for two-dimensional and three-

dimensional works flows from and must respect

influences do not disqualify a work from copyright

protection. The proper test for separability, set forth in

Part III infra, therefore relies on the concept of

conceptual separability, which is endorsed in the

legislative history to the 1976 Copyright Act. See

House Report, at 55.

II. The Term “Utilitarian Function” In Section

101 Refers To Mechanical Or Similarly

Practical Utility, Not Every Possible Benefit.

“Utilitarian” in section 101 refers to mechanical or

similarly practical utility or usefulness. It does not

refer to usefulness for aesthetic, decorative, or cultural

purposes. The statutory text expressly distinguishes

the “form” or other aesthetic aspects of a work] of

artistic craftsmanship” from the work’s “mechanical or

utilitarian aspects.” 17 U.S.C. § 101 (emphasis added).

Thus, for example, “utilitarian” does not mean

usefulness for making something or someone look

attractive or beautiful, or showing that they are stylish.

A painting may be useful for making a room look

beautiful, or communicating that the owner is an

admirer of abstract expressionism, but that does not

make the painting “utilitarian.” Just the opposite is

true. Those kinds of functions of a work are

paradigmatic non-utilitarian functions, even though it is

possible to characterize those functions of the work as

“useful.”

Contemporaneous definitions of “utilitarian”

confirm that Congress was not referring to a work’s

aesthetic, decorative, or cultural purposes. Webster's

Third New International Dictionary 2525 (1966)

(defining “utilitarian” as “characterized by or aiming at

utility as distinguished from beauty or ornament;”

defining “utility” as “the quality or state of being

useful” or “something useful or designed primarily for

use”); 11 Oxford English Dictionary 484 (1933) (defining

“utilitarian” as “[o}f or pertaining to utility; relating to

mere material interests,” lin quasi-depreciative use:

Having regard to mere utility rather than beauty,

amenity, etc.,” and “preferring mere utility to beauty or

amenity;” and defining “utility” as “[tJhe fact,

character, or quality of being useful or serviceable”).

Along these same lines, clothing’s usefulness in

decorating or flattering a person’s appearance does not

make that aspect of the clothing utilitarian or useful in

the practical, mechanical sense that the Copyright Act

is concerned with. The useful aspect of clothing in

practical terms is its physical utility in providing

covering for the body or keeping the body warm or

cool. Similarly, the utilitarian function of a chair is

holding up a sitting person’s body. That the chair

accentuates its surroundings may make the chair

aesthetically useful for someone who takes pride in the

beauty of his home. But that does not make the chair’s

aesthetic appearance a utilitarian function of the chair.

Indeed, treating a work’s decorative function as

“atilitarian” would make almost every pictorial,

graphic, or sculptural work utilitarian, because almost

every such work has that kind of decorative function.

An impressionist painting of a garden would be

utilitarian and unprotectable because it conveys to

others the owner's love of gardens and flowers, or of

the impressionist style. A chair with a nineteenth

century English carving on its back would be utilitarian

and unprotectable because it enhances the appearance

of a Victorian-era house. Cf. House Report, at 55

(offering as an example of a protectable design “a

carving on the back of a chair”).

That cannot be right, as it would contradict the text

and structure of section 101. In section 101, Congress

clearly intended the word “utilitarian” as a limitation

on, not a broadening of, the works and aspects of works

that are not copyrightable. First, section 101 specifies

that “[plictorial, graphic, and sculptural works” include

“works of artistic craftsmanship” that have

“mechanical or utilitarian aspects” as distinguished

from their “form” or other artistic features. 17 U.S.C.

$101 (emphasis added). Petitioner’s definition of

“utilitarian” eliminates that distinction. Second, section

101 draws a distinction between “pictorial, graphic, or

sculptural work[s]” that are “useful articles” from those

that are not. /d. “{Plictorial, graphic, or sculptural

works” that are “useful articles . . . hav[e] an intrinsic

utilitarian function that is not merely to portray the

appearance of the article or to convey information.” /d.

Petitioner’s definition of “utilitarian” would break down

this distinction too and make virtually all pictorial,

graphic, or sculptural works useful articles.”

The absurd consequences from such a broad definition of

utilitarian are readily apparent in the case of Gay Toys, Inc. v.

Buddy L Corp., 522 F Supp. 622 (E.D. Mich. 1981), vacated, 703

F.2d 970 (6th Cir. 1983). There, the district court held a toy

airplane was a non-copyrightable useful article because it

“possesses utilitarian and functional characteristics in that it

permits a child to dream and to let his or her imagination soar.”

Third, with respect to “useful articles,” the statute’s

separability test is premised on the notion that at least

in some cases, “pictorial, graphic, or sculptural

features” are separate and distinct from “utilitarian

aspects.” 17 U.S.C. § 101. Again, Petitioner’s definition

of utilitarian would eliminate this distinction, rendering

superfluous the statutory command that courts must

assess the non-utilitarian aspects of useful articles to

determine if they are separable from the utilitarian

aspects. See Corley v. United States, 556 U.S. 303, 314

(2009) (“A statute should be construed so that effect is

given to all its provisions, so that no part will be

inoperative or superfluous, void or insignificant.”)

(quoting Hibbs v. Winn, 542 U.S. 88, 101 (2004)).

It would make a hash of the statute to define

utilitarian so broadly that it swallows every feature of a

work. Yet that is how Petitioner and Petitioner’s amici

contend that “utilitarian” should be understood: that it

knows no bounds. See Pet. Br. at 32 (defining

utilitarian with respect to a prom dress to include

causſ ing] an observer to perceive that the wearer is

attending the prom, draw attention to certain parts of

the wearer's body and not others, and generally create

a slimming effect”); Profs. Buccafusco & Fromer

522 F. Supp. at 625. The Sixth Circuit reversed, explaining that “a

toy airplane is to be played with and enjoyed, but a painting of an

airplane, which is copyrightable, is to be looked at and enjoyed.

Other than the portrayal of a real airplane, a toy airplane, like a

painting, has no intrinsic utilitarian function.” Gay Toys, Inc. v.

Buddy L Corp., 703 F.2d 970, 972 (6th Cir. 1983). See also 2 Patry

§ 3:149, pp. 3-477 3-478 (“Toys and other playthings are not

useful articles despite the purpose of stimulating children’s (or

adults’) imaginations, since such intent is not an intrinsic

utilitarian purpose within the meaning of the statute.” (footnotes

omitted)).

Amicus Br. at 4 (defining “the full scope of what is

utilitarian” to include “expressive features of clothing

designs” that affeetſ] how the wearer is perceived”), at

8 (stating that garment design has utility “beyond

standard mechanical or technological utility,” in that it

“is intended to make the wearer look attractive”

(emphasis in original)), at 11 (defining any types of

“designs or aspects of designs . whose value is

dependent on their effect on other objects,” as

utilitarian; based on this broad understanding of

utilitarian, defining the utility of clothing to include not

only “the mechanical utility related to use, warmth, and

modesty,” but also “design features that influence the

wearer's appearance” (emphasis in original)). That

cannot be what Congress intended, as it would conflict

with section 101’s statutory structure and text as

described above.

This Court’s decisions in Baker v. Selden and Mazer

v. Stein, which are codified in section 101, leave no

doubt on this point. In Baker v. Selden, the Court

explained that the division between utilitarian and

expressive functions is an articulation of the border

between copyright and patent. See Baker, 101 U.S. at

102. The bookkeeping system was not copyrightable

because it fell into the category of “the rules and

methods of useful art that] have their final end in

application and use.” /d. at 104. In other words, the

bookkeeping system was a practical activity; its value

was in the tangible benefits it could bring about, not in

the “pleasure in [its] contemplation.” Id. By contrast,

the text of the book was protectable because the unique

arrangement of words and pictures describing the

bookkeeping system was expressive—as the Court put

it, it was the kind of object whose “essence consists

only in lits] statement.” Id. Thus, the book was

expressive, artistic, and copyrightable, notwithstanding

its “practical” subject matter, or the fact that it was

“useful” insofar as it served the useful function of

teaching readers how to perform bookkeeping.

In Mazer, there was no question that the lamp base

statuette at issue had practical, utilitarian elements

that were not copyrightable: it supported a light bulb,

its attendant wiring, and a lampshade. See Mazer, 347

U.S. at 202. But if “utilitarian” were given the broad

meaning that Petitioner and Petitioner's amici

advance, the statuette’s creative and expressive

elements could also be construed as utilitarian. For

example, because the statuette was of a Balinese

dancing figure, the lamp could be portrayed as “useful”

for conveying to others the owner’s appreciation for

Balinese culture or for improving the appearance of the

room. In holding that the statuette was copyrightable,

the Court rejected any such sweeping meaning of

“utilitarian.”

Rugs and wallpaper are examples of two-

dimensional useful articles that have uncontroversially

copyrightable elements. A rug has the intrinsic

utilitarian function of covering a floor and providing

something soft for people to walk on. Wallpaper has

the intrinsic utilitarian function of covering up walls.

Nevertheless, rug and wallpaper designs are

copyrightable in that they are decorative, and their

pictorial and graphic features are understood to be

separable from their utilitarian aspects. See Tufenkian

Import/Export Ventures, Inc. v. Einstein Moomjy.

Inc., 338 F.3d 127, 137 (2d Cir. 2003); Peel & Co., Inc. v.

The Rug Market, 238 F.3d 391, 399 (5th Cir. 2001);

House Report, at 55 (“A two-dimensional painting,

drawing, or graphic work is still capable of being

identified as such when it is printed on or applied to

utilitarian articles such as textile fabrics, wallpaper,

containers, and the like.”). Conversely, what is not

protectable is the utilitarian function of covering a floor

or a wall. If a rug had a heating function or were soft or

absorbent, or a wallpaper had a sound-absorbing

function or were crayon-proof, those utilitarian

functions would not be copyrightable, but they would

not exclude from protectability the picture or graphic

design embossed on that rug or wallpaper.

Rugs and wallpaper are examples of two-

dimensional works, but the analysis is no different for

three-dimensional works. The fact that a work is three-

dimensional does not put the work in some different

exceptional category from copyrightable works or from

two-dimensional useful articles, and require a different

kind of analysis. The same basic question that applies

to two-dimensional useful articles like rugs and

wallpaper applies as well to three-dimensional useful

articles like clothing, cars, and furniture. That basic

question, mandated by the statute, is the extent to

which the useful article’s pictorial, graphic, or

sculptural features are separable from its utilitarian

aspects.

A piece of clothing, a three-dimensional useful

article, has the utilitarian function of physically

covering the body, keeping someone warm or cool,

enhancing physical comfort, or moving with the body

during physical activity. Those aspects of a piece of

clothing “have their final end in application and use.”

Baker, 101 U.S. at 104. A piece of clothing also has

aesthetic, decorative, or cultural functions, such as

making the wearer look attractive, flattering the body,

or signaling that one is stylish, wealthy, or fits in.

These are not utilitarian functions of clothing, and

neither is clothing’s ability to convey one’s identity as a

trend-setter, a fashionista, or a cheerleader. Just as

one may buy and display a particular painting to convey

one’s identity as a minimalist, one may buy a particular

dress to convey that same identity. That the painting

and the dress serve that cultural function does not

make that function—or the painting or dress—

utilitarian.

III. Expressive Features Are Conceptually

Separable Where They Are Not Dictated By

Utilitarian Function.

The dispositive question in this case is whether—

just as with the design of a rug or wallpaper—the

pictorial, graphic, or sculptural features of a particular

piece of clothing are separable from its utilitarian

aspects. For the vast majority of clothing, such

features are not separable because, in general, most

clothing designs are _ dictated by utilitarian

considerations. However, to the extent that the design

may have pictorial, graphic, or sculptural features that

are separable from utilitarian aspects, then those

features are protectable, as long as they satisfy

This Court in Kirtsaeng v. John Wiley & Sons, Inc.,

133 S. Ct. 1351 (2013) took as a given the existence of

design copyright in apparel. In the course of explaining

the consequences of denying first sale status to copies

made abroad and imported into the United States, the

Court enumerated three examples of imported goods

protected by copyright: “a video game made in Japan, a

film made in Germany, or a dress (with a design

possible way of reading this sentence is as recognition

that some dresses, which clearly are useful articles,

have copyrightable designs or design features. That

conclusion, moreover, is fully consistent with the

designs of useful articles are protectable: when their

pictorial, graphic, or sculptural features—in other

words, the decorative or artistic aspects of their

designs—are separable from their utilitarian aspects.

Section 101’s legislative history confirms that

“separable” means physically or conceptually

separable. House Report, at 55 (“Unless the shape of

an automobile, airplane, ladies’ dress, food processor,

television set, or any other industrial product contains

some element that, physically or conceptually, can be

identified as separable from the utilitarian aspects of

that article, the design would not be copyrighted under

the bill.”) (emphasis added). Numerous courts of

appeals, including the Sixth Circuit in the case at bar,

have confirmed that both physical and conceptual

separability can be relevant considerations when

determining whether a design’s “pictorial, graphic, or

sculptural features . can be identified separately

from, and are capable of existing independently of, the

utilitarian aspects of the article.” 17 U.S.C. § 101; e. g.

Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d

468, 483 (6th Cir. 2015); Pivot Point Int'l, Inc. v.

Charlene Prods., Inc., 372 F.3d 913, 917 (7th Cir. 2004);

Universal Furniture Int'l, Inc. v. Collezione Europa

USA, Inc., 618 F.3d 417, 433-34 (4th Cir. 2010) (per

curiam); Baby Buddies, Inc. v. Toys “R” Us, Inc., 611

F.3d 1308, 1315-16 (11th Cir. 2010); Chosun Int'l, Inc. v.

Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir.

2005).

Physical separability means, for example, that an

appliqué sewn onto a sweater can be removed from

(e. g., snipped off of) the sweater and hence is

protectable. See Pivot Point, 372 F.3d at 917. By

contrast, conceptual separability means, for example,

that the decorative features of a costume may be

protectable if they are conceptually distinct from the

costume’s function as clothing even though they cannot

be removed from the clothing. See Chosun Int'l, 413

F. 3d at 329.

The instant amici propose the following test for

separability: The design of a useful article is

protectable if it is not dictated by, or necessary to,

utilitarian or functional considerations. However, a

design may be protectable even if it is influenced by

functional considerations. See 2 Patry § 3:146, p. 3-475

(“If the pictorial, graphic, or sculptural features [of a

useful article] are not dictated by the form or function

of the utilitarian aspects of the useful article, they can

be said to be capable of existing independently of those

aspects and hence are protectable.”) (emphasis in

original).

The Second Circuit employed this analytical

approach in Kieselstein-Cord v. Accessories by Pearl,

Inc., 632 F.2d 989 (2d Cir. 1980) and Carol Barnhart

Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.

1985). In Kieselstein-Cord, the court considered the

protectability of a series of decorative, ornamental belt

buckles. 632 F.2d at 990-91. The court concluded that

the belt buckles contained “conceptually separable

sculptural elements,” and thus were protectable,

because the buckles’ ornamented surfaces were distinct

from the buckles’ utilitarian function of supporting

pants. /d. at 993. Put differently, “the ornamented

surfaces of the buckles” were protectable because they

“were not in any respect required by their utilitarian

functions.” Carol Barnhart, 773 F.2d at 419 (emphasis

added). Even if the belt buckles in Kieselstein-Cord

did not have decorative elements on their surface, they

still would have served their utilitarian function. Jd. In

Carol Barnhart, the court applied this same test and

reached the opposite conclusion in a case involving

mannequin-like forms designed to display clothing. /d.

at 412-13. The forms at issue in Carol Barnhart,

according to the Second Circuit, were unprotectable

because their aesthetic components (life-like depictions

of the human body) were necessary to the performance

of the forms’ utilitarian function—the display of

clothing on a human torso. /d. at 419.

The test that amici advocate and that the Second

Circuit has applied is the only test consistent with

influences do not disqualify a work from copyright

protection. See Part I supra. That articles containing

utilitarian influences can be copyrighted was the very

point of Mazer v. Stein and Baker v. Selden. Indeed, as

noted above, Mazer v. Stein “reaffirm[ed] the gist of

the holding in Baker and . . . the idea first articulated

in Baker—that useful works do not ipso facto become

ineligible for copyright protection.” 1 Nimmer

§ 2A.05[B}[1], p. 2A-26; see also 2 Patry § 3:146, p. 3-475

(noting that the same type of test that amici propose is

based on “a plain reading of the statute and one that

takes full account of the statutory language. It is also

quite easy to apply, a distinct virtue.) Moreover, the

test keeps courts out of the business of making

judgments about aesthetic value, a role for which

courts are ill-suited. See Bleistein v. Donaldson

Lithographing Co., 188 U.S. 239, 251 (1903) (urging

courts to avoid the “dangerous undertaking” of making

judgments about aesthetic worth, “outside of the

narrowest and most obvious limits.”).

Importantly, the test amici advocate is consistent

with the well-established rule that the designs of two-

dimensional useful articles, such as rugs, wallpaper, and

fabric, are copyrightable even though they are

influenced by functional considerations. See Tufenkian,

338 F.3d at 137; Peel & Co., 238 F.3d at 399; Tilley v.

TJX Cos., 345 F.3d 34, 36 (Ist Cir. 2003). That is

because a rug’s design is not dictated by utilitarian

considerations, such as the need for it to lay flat on the

floor and feel soft to one’s feet. The same well-

established rule applies to three-dimensional useful

articles such as apparel, and amici’s test applies to

three-dimensional useful articles just as it does to two-

dimensional ones. The pictorial, graphic, and sculptural

design features of three-dimensional useful articles are

protectable to the extent that they are not dictated by

or necessary to the article’s utilitarian function. In the

6 242 22

By contrast, the test that Petitioner’s amici intellectual property

professors suggest would deny protection whenever the claimed

set of features is itself a useful article. Brief Amicus Curiae on

Behalf of Intellectual Property Professors in Support of Petitioner

(hereinafter “Intellectual Prop. Profs. Amicus Br.“), at & 10.

Among other problems, their test would deny protection even to

the belt buckle designs in Kieselstein-Cord, id. at 23-24 (asserting

that Kiexelstein-Cord was wrongly decided), despite their being

merely ornamental and unnecessary to the function of the buckles.

case of clothing, this means that the pictorial, graphic,

and sculptural design features of a dress are

protectable as long as they are not dictated by the

utilitarian functions of physically covering the body,

keeping the body warm or cool, enhancing physical

comfort, or moving with the body during physical

activity.

In stark contrast to this straightforward analytical

approach, Petitioner's test for separability is

unworkable and would create a host of problems.

Petitioner proposes first that a court assessing

protectability must “identify all of [an] article’s

inherent, essential, or natural functions.” Pet. Br. at 38

(emphasis in original). “{I}f an article has a useful

function that is inherent, essential, or natural to what

the article is, then it is a useful article.” /d. at 29-30; see

also id, at 38. This approach makes the scope of “useful

articles” under section 101 incredibly broad, and would

sweep in many objects that plainly are not “useful

articles” within the plain meaning of the statute, such

as paintings that stimulate deep emotions in the viewer

or that create a certain ambiance or mood in the room

where they are displayed.

If an object is a useful article under Petitioner's

test—as most objects would be—that is essentially

outcome dete. -ninative as to whether the object or any

of its features is copyrightable. It would be virtually

impossible for the features of any useful article to pass

Petitioner’s test for copyright protection, first because

Petitioner applies a “presumption” against copyright

protection to all useful articles—a presumption

Petitioner creates from whole cloth - and second

because Petitioner applies a highly regimented

separability analysis that is skewed in every respect

against copyright protection. Pet. Br. at 27-36, 38-39.

For example, Petitioner requires the feature at issue to

be “purely artistic” without any “utilitarian aspects.”

Id. at 38. “If the feature is even slightly utilitarian, it

cannot be copyrighted.” /d. at 39 (emphasis added).

Petitioner’s amici’s approach to separability is also

unworkable. As discussed in Part II supra, their

definition of “utilitarian” is incredibly broad, such that

any feature of a useful article would count as utilitarian,

no matter how artistic or decorative. Under this

approach, virtually all design features that are

expressive are simultaneously utilitarian, and are

therefore unprotectable: Where, however, the

components of a design that are claimed as the

expressive pictorial, graphic, or sculptural features

also, simultaneously, function as utilitarian aspects of

the article they could never maintain separable

identification and existence.” Profs. Buccafusco &

Fromer Amicus Br. at 30.

The approach proposed by Petitioner and

Petitioner’s amici is not what Congress could have

intended in requiring courts to inquire into the

separability of a work’s pictorial, graphic, or sculptural

features from its utilitarian aspects. Under Petitioner’s

‘ Congress's intent in setting forth the separability test in section

101 was to codify this Court’s holding in Mazer, which made no

reference to any presumption against copyright protection for

useful articles. See Part I supra; Mazer, 347 U.S. at 210-17.

and Petitioner’s amici’s approach, the decorative

character of a useful article would be considered a

useful function, which would render the two

dimensional designs of rugs, wallpaper, and fabric no

longer protectable. Once decoration is defined as

utilitarian, the rug’s decorative features cannot be

separated from its utilitarian aspects. Given that this

result contradicts longstanding precedent and the

legislative history cited above, Petitioner’s and

Petitioner’s amici’s approach cannot be correct.

Fundamentally, nothing in the statute’s text

suggests that separability should apply to the designs

of three-dimensional useful articles differently than it

applies to the designs of two-dimensional articles.

Indeed, the statute specifically suggests the opposite:

that three-dimensional and two-dimensional useful

articles are protectable under the same conditions. See

17 U.S.C. § 101. Thus, the pictorial, graphic, or

sculptural features of clothing design are to be treated

just like the pictorial, graphic, or sculptural features of

fabric design: if they are dictated by utilitarian

function, they are not copyrightable, but if they are not

dictated by utilitarian function, then they are

copyrightable.

Applying this test to the cheerleading uniforms at

issue here, the question is whether the particular

selection and arrangement of chevrons and stripes on

the uniforms is dictated by or necessary to the

utilitarian function of a cheerleading uniform.” The

" Petitioner errs in suggesting that the issue before the Court is

whether a stripe or a chevron printed onto clothing is

copyrightable. See Pet. Br. at 44-45. To the contrary, the issue

before the Court is whether the particular arrangement of

utilitarian function is to clothe the wearer, move with

the body for purposes of athletic activity, keep the body

comfortable and cool, wick away moisture, and the like.

Insofar as the uniform serves to identify the wearer as

a cheerleader, or serves to make the wearer look

attractive, that is not a utilitarian function; it is an

aesthetic or cultural function. See Part II supra. The

design of chevrons and stripes on the uniform is not

dictated by or necessary to the uniform’s utilitarian

function. For example, if the chevrons or stripes were

absent, were arranged differently, or were replaced by

a polka dot design, the uniform would still serve its

utilitarian function.”

Although Petitioner suggests that Respondents’

designs are not very creative, Pet. Br. at 48-49, that

criticism is not relevant to whether the designs have

pictorial, graphic, or sculptural elements that are

separable from their utilitarian aspects. On remand,

chevrons and stripes that appear on the cheerleading uniforms is

copyrightable. Brief for the Respondents in Opposition to

Certiorari at 1-3. Respondents have not argued that the genera!

concept of a chevron or a stripe is copyrightable.

8 Notably, Petitioners amici intellectual property professors

advocate a separability test that favors Respondents when applied

to the cheerleading uniforms at issue in this case. Petitioner's

amici claim that under their test, the “aesthetic elements” of a

cheerleading uniform are unprotectable because they “exist only

as part of a cheerleader uniform. There is nothing to extract; the

claimant claims the design of a useful article.” Intellectual Prop.

Profs. Amicus Br. at 17. That, however, is plainly wrong. If

designs on the surface of wallpaper can be “extracted” under

Petitioner’s amici x separability test—as Petitioner's amici claim,

id. at 8, 17—then so can designs on the surface of clothing,

including cheerleading uniforms.

the court can decide whether Respondents’ designs are

not sufficiently original and not copyrightable for that

reason. See 17 U.S.C. § 102(a); Feist Publ ns, Inc. v.

Rural Tel. Serv. Co., 449 U.S. 340, 345 (1991).

Petitioners are also incorrect in their assessment of

the policy implications of their preferred rule. Pet. Br.

at 57. Far from suppressing innovation, copyright

protection for separable expressive features

encourages innovation. As the instant amici have

explained in their academic work:

Mass copyists undermine the market for

the copied good. Copies reduce the

profitability of originals, thus reducing

the prospective incentive to develop

new designs in the first place. The

predicted result, a reduced amount of

innovation, is familiar from copying in

other creative industries, such as file

sharing of copyrighted music and films.

C. Seott Hemphill & Jeannie Suk, The Law, Culture,

and Economics of Fashion, 61 STAN. L. REV. 1147, 1174

(2009). In this respect too, useful articles’ separable

expressive features are like other creative works.

Denying protection here can be expected to reduce

innovation by making Respondents’ creative

contributions easy prey for pirates.

IV. The Copyrightability Of Overall Design Of

Clothing Is Not At Issue In This Case.

The instant case does not turn on whether the

overall design of a piece of clothing—the combined

selection and arrangement of shape, cut, fit, color,

drape, neckline, hemline, sleeve width and length, cuff,

ete.—is copyrightable. This case presents only the

question of the copyrightability of a design that

appears on Respondents’ cheerleading uniforms, rather

than the copyrightability of the uniforms’ overall

design. Seventy-five years ago, this Court treated

overall dress designs as unprotectable by copyright.

Fashion Originators’ Guild of Am., Inc. v. FTC, 312

U.S. 457 (1941); see C. Scott Hemphill & Jeannie Suk,

The Fashion Originators’ Guild of America: Self-Help

at the Edge of IP and Antitrust, in Intellectual

Property at the Edge: The Contested Contours of IF

159, 176 (Rochelle C. Dreyfus & Jane C. Ginsburg eds.,

2013).

This case does not require the Court to revisit the

question of whether the overall design of an item of

apparel is copyrightable. Respondents have not

asserted a copyright in overall design. If the Court

were to address this question, there are two possible

approaches. On the one hand, consistent with this

Court’s mention in Kirtsaeng of “a dress (with a design

and its separability requirement for useful articles does

not foreclose protection for overall dress design.

On the other hand, the Copyright Office has taken a

different view, interpreting the statute not to provide

protection for overall design. This is because the

beyond an examination of the claimed expressive

features, namely whether the useful article would

survive a hypothetical removal of the expressive

features. Compendium of U.S. Copyright Office

Practices § 924.2(B), at 900:40 (8d ed. 2014). The

elements must be “capable of being visualized . asa

work of authorship that is independent from the overall

shape of the useful article.” Id. If what would remain

after hypothetical removal of the work’s expressive

features is not itself a fully realized, separate work].

id., the Copyright Office would deny protection. Under

this test, copyright protection for any “integral part of

the overall shape”—such as a dress’s unique aesthetic

design—is impossible, “because removing it would

destroy the basic shape of the useful article.” Id. at

900:41.

The instant amici’s proposed test for separability

harmonizes with either understanding: the one that

focuses on the text of the Copyright Act, which is

consistent with protection of overall design, or the one

that follows the Copyright Office. But the Court need

not decide between them here, because the instant case

does not turn on whether overall design of items of

apparel would be protectable.

CONCLUSION

Whether the design features of a three-dimensional

useful article, such as a dress, are copyrightable, is

simply a manifestation of a question that runs

throughout copyright law: How does copyright protect

an object’s artistic aspects while denying protection to

its utilitarian functions? In Baker v. Selden and Mazer

„„ Stein, this Court made clear that an object's

utilitarian aspects do not foreclose copyright protection

for its artistic aspects. The question under the

dimensional useful articles is whether an article’s

artistic features can be separated from the article’s

utilitarian ones. Amici submit that the proper test for

separability—the only test that is consistent with the

statute and basic principles of copyright law—is clear

and straightforward: the graphic, pictorial, or

sculptural aspects of a useful article are copyriglhitable

if they are not dictated by the article’s utilitarian

function, with the term “utilitarian” properly

understood in its practical, mechanical sense.

Respectfully submitted,

JEANNIE SUK GERSEN Scott B. WILKENS

HARVARD LAW SCHOOL Counsel of Record

1563 Massachusetts Ave. MATTHEWS. HELLMAN

Cambridge, MA 02138 SAMUEL C. BIRNBAUM*

JENNER & BLOCK LLP

C. Scorr HEMPHILL 1099 New York Ave. NW

NEW YORK UNIVERSITY Suite 900

SCHOOL OF LAW Washington, DC 20001

40 Washington Sq. South (202) 639-6000

New York, NY 10012 swilkens@jenner.com

* Admitted only in New York.

Practicing under the auperrision of the

partnership of Jenner & Block .J.

Counsel for Amici Curiae

September 21, 2016

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