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

3n The

Supreme Court of the Gnited States

.

STAR ATHLETICA, L.L.C.,

Petitioner,

V.

VARSITY BRANDS, INC., et al.,

Respondents.

- >

On Writ Of Certiorari To The

United States Court Of Appeals

For The Sixth Circuit

-*>- —

BRIEF AMICUS CURIAE ON BEHALF OF

INTELLECTUAL PROPERTY PROFESSORS

IN SUPPORT OF PETITIONER

+- ——

MARK P. MCKENNA MARK LEMLEY

NOTRE DAME LAW SCHOOL Counsel of Record

3120 Eck Hall of Law STANFORD LAW SCHOOL

Notre Dame, IN 46556 Room N215, Neukom Building

(574) 631-9258 Crown Quadrangle

559 Nathan Abbott Way

Stanford, CA 94305-8610

(650) 723-4605

miemley@law.stanford.edu

[Additional Counsel] Listed On Inside Cover!

—_— —— ————e

COOCKLE LeGOAL BRLEPS 1609) 226-0084

WWW COCKLELECALRRIFFS COM

CHRISTOPHER JON SPRIGMAN

NEW YORK UNIVERSITY SCHOOL OF LAW

40 Washington Square South

New York, NY 10012

(212) 992-8162

REBECCA TUSHNET

GEORGETOWN UNIVERSITY LAW CENTER

600 New Jersey Ave. NW

Washington, DC 20001

(703) 593-6759

i

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .........cccccecsessseveceseveseees ii

INTEREST OF AMICI CURIAE.........................4. 1

SUMMARY OF ARGUMENT. ,.............ccsceceeeereeeeeee 1

i idiktcncntinsictibtinddiatiiinnineitinnseeinniimeens 2

I. Industrial Design v. Applied Art................ 4

II. The Separability Test ...............00000000......... 6

Ill. Separability Offers a Clear Way to Under-

stand Most Useful Article Cases. ............... 11

IV. Separability Channels Industrial Design

i ciccctcsintonsinntnsnsinnsngsentcensegnes 15

V. Other Approaches to Separability and

_ TE SER Se a ae nen 21

CRP e ED ciccccscetcesciteseeseccsnent sinenesseimieabtéennens 26

APPENDIX

Agent: A Lint Of AgICl.........00.ccccccccecesssssscecsseoes App. 1

ss

TABLE OF AUTHORITIES

Page

CASES

Baker v. Selden, 101 U.S. 99 (1879)........2......ccccccccceees 19

Bonazoli v. R.S.V.P. Intern., Inc., 353 F. Supp. 2d

ET 12

Brandir Int'l, Inc. v. Cascade Pac. Lumber Co.,

834 F.2d 1142 (2d Cir. 1987) ..................... 3, 7, 20, 25

Burrow-Giles Lithographic Co. v. Sarony, 111

Ee 18

Carol Barnhart, Inc. v. Economy Cover Corp.,

Fe ete GER Ge Ge BID cccccccccccescccccccccccccccccccssces 24

Design Ideas, Ltd. v. Yankee Candle Co., Inc. , 889

F. Supp. 2d 1119 (C.D. Ill. 2012).........................0.-- 17

Duraco Products, Inc. v. Joy Plastic Enterprises,

Ltd., 40 F.3d 1431 (3d Cir. 1994)....0............eeececceeeees 6

Eliya, Inc. v. Kohl’s Dept. Stores, No. 06 Civ.

195(GEL), 2006 WL 2645196 (S.D.N_Y. 2006) ....14, 17

Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir.

IIT tdcldneeccernesienstaitgpinetintaaheigneaaaininaiaiatepimentmngutins 11,14

Forest River, Inc. v. Heartland Recreational Ve-

hicles, LLC, 753 F. Supp. 2d 753 (N.D. Ind.

ETE te ae a EE ee ee SOO 18

Galiano v. Harrah’s Operating Co., 416 F.3d 411

TT Ae 25

Home Legend, LLC v. Mannington Mills, Inc.,

784 F.3d 1404 (11th Cir. 2015)..................02......00000. 12

In re Nalbandian, 661 F.2d 1214 (C.C.PA.

TABLE OF AUTHORITIES — Continued

Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d

EEE eee 13

Jovani Fashion, Ltd. v. Cinderella Divine, Inc.,

808 F. Supp. 2d 542 (S.D.N.Y. 2011), affd sub

nom. Jovani Fashion, Ltd. v. Fiesta Fashions,

500 Fed. App’x 42 (2d Cir. 2012) ..0.............--cceeeeeeeee 13

Kieselstein-Cord v. Accessories by Pearl, Inc., 632

ID Sic icecccnsseccccccnssscnesnsinnsssescesceed 23

L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d

Ser icletucnrretiecinsccnenendiniaaiieiaialidddiecideeienatanesensedie 11

Magnussen Furniture, Inc. v. Collezione Europa

USA, Inc., 116 F.3d 472 (4th Cir. 1997).................. 13

Mazer v. Stein, 347 U.S. 201 (1954)................ 3, 5, 6, 10

Norris Industries, Inc. v. International Tel. & Tel.

Corp., 696 F.2d 918 (11th Cir. 19838)....................... 14

Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 372

F.3d 913 (7th Cir, B006).......ccccccoccccccesccccscccees 3, 22, 25

Royalty Designs v. Thrifticheck Service Corp.,

204 F. Supp. 702 (S.D.N.Y. 1962) ..............ccccccceeeeees 11

Ted Arnold Lid. v. Silvercraft Co., 259 F. Supp.

, _ SE ce cee 11

Universal Furniture Intern., Inc. v. Collezione

Europa USA, Inc., 618 F.3d 417 (4th Cir.

TTI iciapiictneninneneansencntenniiniunannipemainiieiiiniipbemmeneases 12

Varsity Brands, Inc. v. Star Athletica, L.L.C.,799

| AE aes 3

iv

TABLE OF AUTHORITIES — Continued

Page

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529

i eeubetieinneeiia 11, 21

STATUTES

TL a Ee ene 4,6,8

LE TS EET 4

aoa TERETE 18, 19

RETEST A 16

Patent Law Treaties Implementation Act, Pub.

L. No. 112-211, 126 Stat. 1527 (2012) .................... 16

RULES

I La TTT 5

OTHER AUTHORITIES

Real .223 Bullet Necklace with

24 Inch Chain, Etsy (July 2, 2016)........................ 19

Brett S. Sylvester, The Future of Design Protec-

tion in the United States, 20 J. MARSHALL L.

ETS ee 22

COMPENDIUM OF U.S. CoPpyRIGHT OFFICE PRAC-

IE csccccsccscscssscccscnesesescescocoseses 8

Frank Lloyd Wright, The Future of Architecture

EE a aa aT 22

H.R. Rep. No. 94-147€ (1976), reprinted in 1976

EN Grctandsrescocccesssoncapsntanvecewentovesi passim

Vv

TABLE OF AUTHORITIES — Continued

Page

J.H. Reichman, Design Protection in Domestic

and Foreign Copyright Law: From the Berne

Revision of 1948 to the Copyright Act of 1976,

1983 DUKE L.J. 1143 (1983) ................cccceeeeeeeee 20, 22

Mark P. McKenna & Katherine J. Strandburg,

Progress & Competition in Design, 17 STAN.

RR Sas RB i ecterctervenecenasnnennsnscssevnencseneesceons 15

Pamela Samuelson, CONTU Revisited: The Case

Against Copyright Protection for Computer

Programs in Machine-Readable Form, 1984

Be SE EID cneccccecsscincsssccsceuscacsssnenvosecceescesses 6

Robert Denicola, Applied Art and Industrial De-

sign: A Suggested Approach to Copyright in

Useful Articles, 67 MINN. L. REv. 707 (1983).......... 25

Viva R. Moffat, The Copyright/Patent Boundary,

48 U. RICH. L. REV. 611 (2014)..................cccscccrsseees 22

WILLIAM F. Patry, PATRY ON COPYRIGHT § 11:13

SSR RET RE ERE ION en Oe Moe SAE ee Re 18, 19

1

Amici Curiae Intellectual Property Law Profes-

sors (“Amici”) respectfully submit this brief in support

of the Petitioner.’

Sd

INTEREST OF AMICI CURIAE

Amici, listed in Appendix A, are professors of law

who research, write, and teach in the area of intellec-

tual property. Amici’s institutional affiliations are pro-

vided for identification purposes only, and imply no

institutional endorsement of the views expressed

herein. Amici have no personal stake in the outcome of

this case. Counsel for all parties have consented to the

filing of this brief.

*

SUMMARY OF ARGUMENT

In its 1976 revision of the Copyright Act, Congress

decided to separate applied art from industrial design,

admitting the former to copyright and excluding the

latter. It drew this distinction precisely because it in-

tended to differentiate copyright from design and util-

ity patent. Congress recognized as applied art only

those aesthetic features of a useful article that could

' Pursuant to Rule 37.6, Amici Curiae affirm that no counsel

for any party authored this brief in whole or in part, and no coun-

sel or party made a monetary contribution intended to fund the

preparation or submission of this brief. No person other than

Amici or their counsel made a monetary contribution to its prep-

aration or submission. Counsel for both parties have consented to

2

be “separated” from that useful article rather than be-

ing integrated into the article.

The correct test of separability therefore consid-

ers conceptual separability to be nothing more than a

coda to physical separability, and asks only whether

the claimed design could be removed from the article

and exist on its own as a pictorial, graphic or sculp-

tural work that is not a useful article. This test mini-

mizes the need for courts to make judgments about the

aesthetic value of claimed features and the risk of an-

ticompetitive strike suits. And it preserves the distinc-

tion Congress meant to draw between applied art and

industrial design.

+

ARGUMENT

Congress made clear in the Copyright Act’s legis-

lative history its intent to distinguish applied art from

industrial design, admitting the former to copyright

protection, and excluding the latter. Focusing on Con-

gress’s distinction between applied art and industrial

design is key to understanding how copyright’s useful

articles doctrine works, and, in particular, how a court

may properly determine whether some aesthetic fea-

ture of a useful article is “separable” from the article’s

functional content and therefore protectable.

Courts should understand separability in terms of

whether the claimed feature of a useful article (1) can

be extracted from the article, even if doing so would

destroy the article, and (2) once extracted, would stand

3

alone as an original pictorial, graphic, or sculptural

work (PGS work) that is not a useful article. Features

of useful articles that meet this test are properly clas-

sified as “applied art” — i.e., artistic content that has

been “applied” to a useful article, a category of subject

matter which, as this Court has previously held and

Congress affirmed, does not lose its copyrightability by

virtue of its application to a useful article. See Mazer v.

Stein, 347 U.S. 201 (1954).

Courts in recent years have abstracted away

from the distinction Congress intended and often have

attempted to determine separability by inquiring

whether the designer of a useful article was making

aesthetic choices relatively unconstrained by function.

See Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 372

F.3d 913, 931 (7th Cir. 2004) (“Conceptual separability

exists ... when the artistic aspects of an article can

be conceptualized as existing independently of their

utilitarian function. This independence is necessarily

informed by whether the design elements can be iden-

tified as reflecting the designer’s artistic judgment

exercised independently of functional influences.”)

(internal citations and quotation marks omitted);

Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d

1142, 1145 (2d Cir. 1987). But that test has proven so

difficult to apply that even when courts agree on the

test, judges often disagree on the outcome of that test

applied to particular cases. Indeed, that happened in

this very case. See Varsity Brands, Inc. v. Star Athletica,

L.L.C., 799 F.3d 468 (6th Cir. 2015).

4

The disagreement is not surprising; judges are

not experts in design, and courts are neither well-

positioned to understand the fine points of the design

process for useful articles, nor to make judgments

about the degree to which aesthetic choices are con-

strained by an article’s function. Congress wisely did

not invite such an inquiry.

I. Industrial Design v. Applied Art

In 1976, Congress replaced “works of art” as a cat-

egory of copyrightable subject matter with “pictorial,

graphic, and sculptural works.” 17 U.S.C. § 102(5). The

scope of this new category of copyrightable subject

matter was then qualified with respect to the use of

PGS works in “useful articles”:

[PGS 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 de-

fined in this section, shall be considered a pic-

torial, graphic, or sculptural work only if, and

only to the extent that, such design incorpo-

rates pictorial, graphic, or sculptural features

that can be identified separately from, and are

capable of existing independerxtly of, the utili-

tarian aspects of the article. 17 U.S.C. § 101.

According to the Copyright Act’s legislative his-

tory, the statutory language dealing with useful arti-

cles was “drawn from Copyright Office Regulations

promulgated in the 1940’s,” as well as language added

to those regulations in the 1950’s to implement this

5

Court's decision in Mazer, 347 U.S. 201. H.R. Rep. No.

94-1476, at 54 (1976), reprinted in 1976 U.S.C.C.A.N.

5659. According to those implementing regulations:

If the sole intrinsic function of an article is its

utility, the fact that it is unique and attrac-

tively shaped will not qualify it as a [copy-

rightable] work of art. However, if the shape

of a utilitarian article incorporates features,

such as artistic sculpture, carving, or pictorial

representation, which can be identified sepa-

rately and are capable of existing inde-

pendently as a work of art, such features will

be eligible for [copyright].

37 C.F-R. § 202.10(c) (1959). The new statutory lan-

guage of the 1976 Act was intended “to draw as clear a

line as possible between copyrightable works of ap-

plied art and uncopyrightable works of industrial de-

sign.” H.R. Rep. No. 94-1476, at 55. As the House

Repor explained:

The Committee has added language to the

definition of ‘pictorial, graphic, and sculptural

works’ in an effort to make clearer the distinc-

tion between works of applied art protectable

under the bill and industrial designs not sub-

ject to copyright protection. ...

Id. at 62-63. Thus, it is beyond peradventure Congress

did not want to transform copyright law into a general

industrial design protection system.’

* Indeed, while separate protection for industrial design has

been repeatedly proposed, Congress always declined to add it to

6

The statute draws the line between applied art

and industriai design first by requiring a determina-

tion of whether the object at issue is a “useful article.”

The statutory definition of “useful articles” is broad,

encompassing all articles “having an intrinsic utilitar-

ian function that is not merely to portray the appear-

ance of the article or to convey information.” 17 U.S.C.

§ 101 (emphasis added).’ For articles with any such in-

trinsic utilitarian function, the statute requires a sec-

ond inquiry into the separability of any aesthetic

features of the article.

Il. The Separability Test

Elaborating on its understanding of separability,

the House Report said that “[a] two-dimensional paint-

ing, 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. The same is true when a

statue or carving is used to embellish an industrial

product or, as in the Mazer case, is incorporated into a

the Copyright Act. See Duraco Products, Inc. v. Joy Plastic Enter-

prises, Lid., 40 F.3d 1431, 1446-47 (3d Cir. 1994) (recounting the

history of congressional rejection); In re Nalbandian, 661 F.2d

1214, 1219 (C.C.P.A. 1981) (Rich, J., concurring) (explaining that

design protection was initially included in the 1976 Act, but “was

jettisoned to facilitate passage of the main bill”).

* Congress expanded the definition of “useful article” with

this language, broadening the former language, “sole utilitarian

function.” See Pamela Samuelson, CONTU Revisited: The Case

Against Copyright Protection for Computer Programs in Machine-

Readable Form, 1984 Duke L.J. 663, 730-32 (1984).

7

product without losing its ability to exist independ-

ently as a work of art.” H.R. Rep. No. 94-1476, at 55.

By contrast, “although the shape of an industrial

product may be aesthetically satisfying and valuable,

the Committee’s intention [was] not to offer it copy-

right protection under the bill.” Jd. Thus, “[u}nless the

shape of an automobile, airplane, ladies’ dress, food

processor, television set, or any other industrial prod-

uct contains some element that, physically or con-

ceptually, can be identified as separable from the

utilitarian aspects of that article, the design would not

be copyrighted. . . .” Jd.

As the House Report makes clear, aesthetic fea-

tures are separable under this approach if they can

have a separate existence as a copyrightable work

apart from the useful article to which they have been

applied. The “over-all configuration,” id., of a useful ar-

ticle is simply not protectable under any circum-

stances; Congress protected sculptural works applied

to lamps, not ‘amps. It is irrelevant to Congress’s

distinction whether the features could have been de-

signed differently or whether they were designed “in-

dependently” of functional considerations. Cf Brandir,

834 F.2d at 1145. “[I]Jndependence from ‘the utilitarian

aspects of the article’ does not depend upon the nature

of the design — that is, even if the appearance of an ar-

ticle is determined by esthetic (as opposed to func-

tional) considerations, only elements, if any, which can

be identified separately from the useful article as such

are copyrightable.” H.R. Rep. No. 94-1476, at 55 (em-

phasis added).

8

The examples of features Congress considered

separable under this standard — “a carving on the back

of a chair” and “a floral relief design on silver flatware”

~ all follow a common theme. Jd. Congress clearly

meant to protect features of useful articles that could

exist as a separate copyrightable work in some other

medium. The further examples included by the Copy-

right Office in its Compendium of U.S. Copyright Prac-

tices — “[aJn engraving on a vase,” “[alrtwork printed

on a t-shirt,” “[a] colorful pattern decorating the sur-

face of a shopping bag,” “[a] drawing on the surface of

wallpaper,” and “[a] floral relief decorating the handle

of a spoon” — follow this theme as well. COMPENDIUM OF

U.S. Copyricut OrFice Practices III § 924.2(B) (2014).

Conversely, Congress meant to exclude from copyright

protection features that are integrated into a work of

industrial design and make sense only as part of that

useful article.

This understanding allows courts to apprehend

and follow the statutory command that copyrightable

features of useful articles are limited to “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 (emphasis added). Aesthetic

features of a useful article are “capable” of existing sep-

arately if they can be removed or extracted from the

useful article and the removed design would constitute

a PGS work, but not the design of a useful article. This

understanding also makes clear that courts have sub-

stantially overcomplicated so-called “conceptual” sepa-

rability. Conceptual separability is not terra incognita

9

or some invitation for courts to develop their own the-

ory of what is art versus function. It is, rather, a modest

extension of the concept of physical separability, the

other category that Congress specified in the Copy-

right Act’s legislative history.

Physical separability is found, for example, in an

epaulet that is sewn onto the shoulder of a jacket and

that may be readily removed without destroying the

jacket. “Conceptual” separability is closely related: it is

no more than separability that could not, in actual fact,

be carried out physically without destroying the under-

lying useful article - an example would be a graphic

design on an epaulet printed onto the shoulder of the

same jacket. Conceptual separability is a kind of coda

to physical separability.

Stated another way: if one could extract the

claimed features and use them on their own in another

context without replicating the useful article of which

they are part, and the result would be a copyrightable

PGS work standing alone, then there is separable mat-

ter. On the other hand, if extracting the claimed fea-

tures would necessarily bring along the underlying

useful article, the design is inseparable from the useful

article. For example, an artistic design printed onto a

poster, and then veneered onto the back of a chair,

might be separable in the ordinary physical sense. The

same artistic design carved into the back of the chair

might not actually be removable without destroying

the chair. That design is nonetheless separable “con-

ceptually,” for the same reason the design printed on

the poster is: the work would be the same work as a

10

design on paper — a copyrightable graphic work. It

therefore is capable of an independent existence apart

from the underlying useful article. Likewise, the plas-

ter-of-Paris sculpture encasing the electrical cords and

wiring in the lamp in Mazer v. Stein could not be phys-

ically separated from the cords and wiring without de-

stroying the lamp (because of the materials from which

it was made), but the sculpture standing on its own

was not a lamp: it was a conceptually separable sculp-

tural work. See Mazer, 347 U.S. 201.4

The test we propose faithfully implements Con-

gress’s intent. The House Report states that “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 fab-

rics, wallpaper, containers, and the like,” and that

“[tJhe same is true when a statue or carving is used to

embellish an industrial product or, as in the Mazer

case, is incorporated into a product without losing its

ability to exist independently as a work of art.” H.R.

Rep. No. 94-1476, at 62-63. This statement is con-

sistent in its entirety with the test Amici propose.

for “separability” to exist.

11

Ill. Separability Offers a Clear Way to Under-

stand Most Useful Article Cases

Many older cases express a clear understanding of

the close connection between physical and conceptual

separability. Compare Esquire, Inc. v. Ringer, 591 F.2d

796 (D.C. Cir. 1978) (denying copyright protection

to design of street lights), with Royalty Designs v.

Thrifticheck Service Corp., 204 F. Supp. 702 (S.D.NLY.

1962) (finding copyrightable a coin bank shaped like a

dog, where shape was original), and Ted Arnold Lid. v.

Silvercraft Co., 259 F. Supp. 733 (S.D.N.Y. 1966) (find-

ing copyrightable the design of a pencil sharpener in

the shape of an old-fashioned telephone that was not a

copy of any real telephone).° As the courts have made

separability more complicated and contestable, plain-

tiffs have brought more extreme cases, reflecting the

litigation-generating effect of standards that are both

broad and unpredictable. Cf Wal-Mart Stores, Inc. v.

Samara Bros., Inc., 529 U.S. 205, 213-14 (2000) (noting

that anticompetitive suits are facilitated by unclear

tests and that “(c]lompetition is deterred . . . not merely

by successful suit but by the plausible threat of suc-

cessful suit,” justifying rules that are as bright-line as

possible).

° As noted below, copyrightable elements are limited to the

creativity added by the creator, and also subject to the originality

and merger doctrines. See L. Batlin & Son, Inc. v. Snyder, 536 F.2d

486, 489 (2d Cir. 1976) (holding that a copy of a public domain

bank was not independently copyrightable because changes were

made for functional, not creative, reasons).

12

By focusing on separability, Amici’s proposed test

offers a simpler path to correct results. In Universal

Furniture Intern., Inc. v. Collezione Europa USA, Inc.,

618 F.3d 417 (4th Cir. 2010), the court correctly found

that the designs engraved into plaintiff’s furniture

were separable, although its reasoning conflated the

question of aesthetics with that of protectability. See

id. at 423 (finding separability because the purpose

of carving the designs “was entirely aesthetic,” even

though the artist was also “influenced by function” in

designing the elements; nonetheless, the court thought

it faced a “metaphysical quandary” because “[t]he ele-

ments serve no purpose divorced from the furniture —

they become designs in space”). Under our proposed

analysis, the separability of engraved ornamental de-

signs is clear.

The result in Home Legend, LLC v. Mannington

Mills, Inc., 784 F.3d 1404 (11th Cir. 2015) (finding

designs on laminated floor tiles physically and concep-

tually separable), is also consistent with our test, al-

though the Eleventh Circuit made the case more

difficult by asking whether the design was separately

marketable in order to determine whether it was sep-

arable. There is probably no real market for pictures of

wood grain. But just as aesthetic merit is not an appro-

priate inquiry for courts, neither is whether a creative

work has a market waiting for it. The appropriate

question is whether the design could stand alone as a

work, not whether the work would have a market.

Similarly, Bonazoli v. R.S.V.P. Intern., Inc., 353

F. Supp. 2d 218 (D.R.L. 2005), the court correctly found

13

that the design features of measuring spoons shaped

like heart-tipped arrows were not separable, because

replicating the design would necessarily produce

measuring spoons, which are useful articles.

See also Jovani Fashion, Lid. v. Cinderella Divine,

Inc., 808 F. Supp. 2d 542 (S.D.N.Y. 2011) (prom dress

design lacked separability), aff’d sub nom. Jovani

Fashion, Ltd. v. Fiesta Fashions, 500 Fed. App’x 42 (2d

Cir. 2012); Magnussen Furniture, Inc. v. Collezione

Europa USA, Inc., 116 F.3d 472 (4th Cir. 1997) (table

design features were not separable).

In Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d

1038 (9th Cir. 2014), the Ninth Circuit properly held

that the overall shape of a useful article is not copy-

rightable no matter how aesthetically pleasing that

shape may be. See id. at 1042 (holding that although

14

Inhale’s water container, like a piece of modern sculp

ture, has a distinctive shape, “[t]he shape of the alleged

‘artistic features’ and of the useful article are one and

the same.”). See also Esquire, 591 F.2d at 804 (noting

that the legislative history indicates “unequivocally

that the overall design or configuration of a utilitarian

object, even if it is determined by aesthetic as well as

functional considerations, is not eligible for copy-

right”). Our proposed test implements this result. Any

replica of the overall shape would replicate the useful

article (even if it would not function because, for ex-

ample, it was made out of different material). See also

Norris Industries, Inc. v. International Tel. & Tel. Corp.,

696 F.2d 918 (11th Cir. 1983) (no protection for wire-

spoked wheel cover).

Nor can inseparability be avoided by defining the

claimed design to be only a portion of a useful article.

For example, in Eliya, Inc. v. Kohl’s Dept. Stores, No. 06

Civ. 195(GEL), 2006 WL 2645196 (S.D.N.Y. 2006), the

plaintiff claimed protection for the stitching and sole

15

patterns on a shoe; the court properly found lack of

separability. Even in the abstract and without other

material present, the configuration of the stitching and

patterns on the sole still defined a shoe. If abstracted

away from the shape of a shoe, moreover, the only thing

remaining would be unoriginal circles and stitches. By

attending to the fact that three-dimensional designs

regularly depend on three-dimensional relationships

between elements, copyright’s originality requirement

can thus police against attempts to game the separa-

bility standard by claiming only portions of an article.

IV. Separability Channels Industrial Design

to Design Patent

Excluding inseparable features does not leave de-

sign without protection. Instead, the union of form and

function can readily be protected through the law of

design patent, as Congress intended. See Mark P.

McKenna & Katherine J. Strandburg, Progress & Com-

petition in Design, 17 STAN. TECH. L. REv. 1, 48-51

(2013) (focusing on the integration of form and func-

tion to define design patent subject matter).

This distinction between the protection offered by

design patent and the protection offered by copyright

corresponds to the simple conceptual separability test

outlined above. Moreover, it allows the Court to more

easily distinguish between works of applied art and

works of industrial design without resorting, as the

lower courts have, to some detailed theory of how

to separate art from function. If the claimed subject

matter is integrated into the design of the useful

16

article or the part of the useful article which the sub-

ject matter comprises, then the claimed subject matter

is a work of industrial design, and protectable, if at all,

by design patent. This is true even though industrial

designs, like copyrightable works, have aesthetic qual-

ities and might be perceived as “art” by patrons

thereof.* The idea of separability, in other words, is the

removal of something from the useful article — which

necessarily implies that the separable features must

be less than the whole. The mere fact that the useful

article can be appreciated aesthetically says nothing

about whether the design is separable.

Neither are features separable simply because

they are aesthetic; if that were the test, then the only

useful articles that would be unprotected by copyright

would be those without any attractive features. But

(nearly) all industrial design is a mix of aesthetic

and functional. The Copyright Act reaches industrial

design only insofar as the pictorial, graphic or sculp-

tural content of a particular useful article may exist

without the underlying article. To the extent this test

is met, then that PGS feature is copyrightable as a

work of applied art.

* The United States recently joined the Hague Agreement.

See Patent Law Treaties Implementation Act, Pub. L. No. 112-211,

126 Stat. 1527 (2012). In implementing it, the U.S. decided to

channel foreign industrial design applications to the design pat-

ent system. See 35 ULS.C. § 385 (“An international design applica-

tion designating the United States shall have the effect, for all

purposes, from its filing date determined in accordance with sec-

tion 384, of an application for patent filed in the Patent and Trade-

mark Office pursuant to chapter 16.”). This decision bolsters the

argument that copyright is the wrong home for industrial design.

17

The application of this analysis to the design of

cheerleader uniforms or other clothing designs is sim-

ple and clear: the aesthetic elements of a cheerleader

uniform exist only as part of a cheerleader uniform.

There is nothing to extract; the claimant claims the de-

sign of a useful article. By contrast, a fabric print

would be the same artwork if it were on a notebook

cover, wallpaper, or other surface.

The claimant here could, using an analogy to fab-

ric prints, claim only the chevrons and not the coordi-

nation and arrangement thereof, which constitute the

cut of the garment. But that is not what the claimant as-

serts, likely because the chevrons themselves are stan-

dard uniform elements that lack the minimal spark nec-

essary for copyrightability. Cf Design Ideas, Ltd. v. Yan-

kee Candle Ca., Inc., 889 F. Supp. 2d 1119 (C.D. Ill. 2012)

(finding that candle holders in the generalized shape of

sailboats were probably not separable, but definitely not

creative enough for copyright protection).

See also Eliya, 2006 WL 2645196 (similar result for de-

sign on outside of shoe).

18

This analysis highlights an important point: sepa-

rability is part of a larger scheme, in which multiple

doctrines have roles to play. The originality, idea/

expression, and merger doctrines limit the copyright-

ability of all creative works. Section 113(b) of the Copy-

right Act is of particular import here. Section 113(b)

provides that a copyright in a work depicting a useful

article does not extend to the manufacture, distribu-

tion, or display of that useful article. 17 U.S.C. § 113(b);

see, e.g., Forest River, Inc. v. Heartland Recreational Ve-

hicles, LLC, 753 F. Supp. 2d 753, 759-60 (N.D. Ind.

2010) (applying § 113(b)); William F. Patry, Patry on

Copyright § 11:13 (2016) (“[CJopyright in a drawing of

a boiler, cabinet, or automobile would not prohibit un-

authorized manufacture from drawings of those ob-

jects.”) (footnote omitted).

Thus, drawings or photographs of the uniform de-

signs at issue, like drawings or photographs of any

other real-world objects, are copyrightable to the ex-

tent that they evince creativity, but they could not be

asserted against the making of the underlying useful

articles. See Burrow-Giles Lithographic Co. v. Sarony,

111 U.S. 53 (1884); see also H.R. Rep. No. 94-1476,

at 105 (explaining that the purpose of § 113(b) was to

preserve the principle that “copyright in a pictorial,

graphic, or sculptural work, portraying a useful article

as such, does not extend to the manufacture of the use-

ful article itself”).

Section 113(b) and separability are two sides of

the same coin, working together to solve the problems

caused by excluding industrial design from copyright.

ratry. SUpPTa > | i LZ OLN section | L3tpD) ana the sep

irability test for protection are designed to address

this conundrum [when the plaintiff’s work depicts a

iseful article]}.”). With the combination of separability

and § 113(b), one cannot claim copyright in a useful ar

ticle by putting it on a necklace and wearing it as jew

elry, no matter how aesthetic the effect:

Armageddon rt, Real .223 Bullet Necklace with 24

Inch Chain, Etsy, (ast modified July 2, 2016).

Likewise, an artist cannot draw a design or carvé

sculpture for a new bullet, no matter how beautiful

and get a claim over the resulting useful article. C/

Baker v. Selden, 101 U.S. 99, 103 (1879) (“The copyright

M4s440)G/ ’

20

of a book on perspective, no matter how many draw-

ings and illustrations it may contain, gives no exclu-

sive right to the modes of drawing described, though

they may never have been known or used before.”); J.H.

Reichman, Design Protection in Domestic and Foreign

Copyright Law: From the Berne Revision of 1948 to the

Copyright Act of 1976, 1983 DuKE L.J. 1143, 1207-08

(1983) (explaining the derivation of § 113(b) from

Baker). The artist’s copyright is limited to the original

elements of the PGS work depicting the useful article,

preserving her copyright interest in the art market

without interfering with the market for useful articles.

Cf Brandir, 834 F.2d at 1147 (finding design of a bike

rack inseparable from its status as a bike rack, while

sculpture that looked like a bike rack, or a bike, could

be copyrightable if original).

For this reason, hypotheticals involving useful ar-

ticles rendered in different sizes or materials — such as

a toy-sized uniform or a chair made out of tissue paper

— are inappropriate for determining whether the aes-

thetic features of the design that the claimant actually

made are separable.® If we allow imaginary manipula-

tions of the physicality of the article, no useful article

would ever be excluded from copyright, because at

some scale or in some material the utility of any arti-

cle, or of any feature of an article, can be removed. The

fact that sculptures could be, and in fact have been,

® The question of whether toys are themselves useful articles

is a difficult one, but one this Court need not decide, since no toys

are involved here.

21

designed to look like sailboats does not mean that sail-

boats are not useful articles.

In sum, Amici’s proposed test offers a relatively

simple way to distinguish applied art from industrial

design, and thereby to distinguish separable from in-

separable PGS features of useful articles. That said, no

test will apply with perfect clarity to all cases. Because

of the inevitable fuzziness in practice, the related risk

of oppressive and anticompetitive threats of suit, and

the availability of design patent protection for useful

articles, Amici suggest that the Court apply its well-

grounded reasoning in Wal-Mart, 529 U.S. at 215: in

cases of doubt, a court should find that the claimed

matter is industrial design and therefore not separa-

ble.

V. Other Approaches to Separability and Their

Problems

The chaos in the courts of appeals and the exten-

sive body of commentary on separability indicate that

current approaches have largely failed to produce rules

that courts can apply consistently; only our approach

offers a simple way out, grounded in the statute. In

contrast to this straightforward account of conceptual

separability — one that is consistent with the text of the

Copyright Act and Congress’s intent as expressed in

the Act’s legislative history — the various incompatible

tests currently employed by courts try to do something

that is conceptually intractable, which is to separate

protectable art from unprotectable functionality. Thus,

22

many courts have articulated tests of conceptual sepa-

rability that focus on whether particular features were

determined by aesthetic rather than functional consid-

erations. See Pivot Point, 372 F.3d at 931 (collecting

cases).

That approach faces two insurmountable prob-

lems. First, it puts the law at odds with the subject

matter the law is regulating. Indeed, it is often ob-

served that modern designers think of what they do in

terms of the integration of form and function — that is,

as the opposite of separability. Frank Lloyd Wright,

The Future of Architecture 296 (1953) (“Form and func-

tion are one.”); see also Viva R. Moffat, The Copy-

right/Patent Boundary, 48 U. Ricu. L. Rev. 611, 660

(2014) (“The very best industrial design will seam-

lessly integrate form and function.”); Brett S. Sylvester,

The Future of Design Protection in the United States,

20 J. MARSHALL L. Rev. 261, 271 (1986) (“[T]he majority

of modern industrial designs are heavily influenced by

the Bauhaus approach to design which stresses the

unification of form and function.”).

Second, it runs squarely against Congress’s intent

by putting courts in the role of art theorists separating

the aesthetic from the functional. The relatively sim-

pler separability analysis outlined above allows courts

to distinguish separable (and therefore copyrightable)

applied art from inseparable elements of industria! de-

sign, however aesthetically pleasing. Reichman, 1983

DuKE L.J. at 1261-62 (explaining that the definition

of PGS works was intended to channel cases away

from copyright and into separate industrial design

23

legislation, which was then removed from the final

bill). Congress defined PGS works as it did because it

wanted to differentiate the domain of copyright from

that of design patent, the legal regime that protects the

ornamental, aesthetic features of industrial design.

See H.R. Rep. No. 94-1476, at 54.

Courts’ attempts to differentiate aesthetics and

function has led them astray in a number of cases. The

features of the belt buckle in Kieselstein-Cord could not

be replicated without replicating a belt buckle. The

court was therefore wrong to find conceptual separa-

bility just because the belt buckle could be used (as a

whole) as jewelry. Kieselstein-Cord v. Accessories by

Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980) (“We see in

appellant’s belt buckles conceptually separable sculp-

tural elements, as apparently have the buckles’ wear-

ers who have used them as ornamentation for parts of

the body other than the waist.”).

Kieselstein-Cord got the distinction wrong because

the court asked whether the article could be used in

some other, nonutilitarian context rather than asking

whether any features of the article could have a sepa-

rate existence. Kieselstein-Cord, 632 F.2d at 993. In

other words, Kieselstein-Cord mistakenly conflated

separability with the question of whether the buckle

would be useful in any context in which it was put

(which, of course, no useful article is). Putting a urinal

in a museum was art, at least when Duchamp did it;

that does not mean the urinal was copyrightable. Like-

wise, exhibiting a buckle in an art museum, or wearing

it around one’s neck, does not make the design of the

24

buckle separable from the buckle itself.® There may be

thirteen (or more) ways of looking at a belt buckle, but

the buckle itself remains a buckle.

In Carol Barnhart, the court considered whether

the aesthetic and artistic features were separable from

the forms’ use as utilitarian articles (torsos for display-

ing clothing). Carol Barnhart, Inc. v. Economy Cover

Corp., 773 F.2d 411 (2d Cir. 1985). Judge Newman, in

dissent, would have asked whether the article “stimu-

late[s] in the mind” of the “ordinary, reasonable ob-

server” “a concept that is separate from the concept

evoked by its utilitarian function.” Carol Barnhart, 773

F.2d at 422 (Newman, J., dissenting). This is the over-

complicated conceptual fallacy discussed above: the

question is not whether one can look at a urinal, or a

Porsche, and see art. The legislative history of the 1976

Act explains that the definition of “‘pictorial, graphic,

and sculptural works’ carries with it no implied crite-

rion of artistic taste, aesthetic value, or intrinsic qual-

ity.” H.R. Rep. No. 94-1476, at 55. The question is

whether features of the Porsche could have a separate

existence as a work. And clearly they cannot. Neither

could the torso forms in Carol Barnhart.”

® Design patent, however, would remain available for any

® It is also important to remember that significant work

takes place at the stage of identifying what is a “useful article” as

well. Ordinarily, sculptures are not useful articles, though people

can hang clothes (or lampshades) on them. Again, the Court is not

asked here to articulate a test for determining in every case what

a “useful article” is. If the Court asks separability to do too much

of the definitional work for which originality, the scope of “useful

25

Another Second Circuit panel in Brandir as well

as a Seventh Circuit panel in Pivot Point focused on

the designer’s intention in creating the work, holding

that copyrightability “should depend on the extent to

which the work reflects artistic expression uninhibited

by functional considerations.” Brandir, 834 F.2d at

1145 (quoting Robert Denicola, Applied Art and Indus-

trial Design: A Suggested Approach to Copyright in

Useful Articles, 67 MINN. L. REv. 707, 741-45 (1983));

see also Pivot Point, 372 F.3d at 926-27 (adopting

Brandir/Denicola test). This approach is directly con-

trary to congressional guidance in the legislative his-

tory, which made clear that the fact that features

were developed for aesthetic reasons independent of

function did not make them separable. H.R. Rep. No.

94-1476, at 55 (emphasizing Congress’s intention to

exclude industrial design that was “aesthetically satis-

fying and valuable” from copyright).

Finally, the Fifth Circuit in Galiano asked whether

claimed copyrightable aspects of the work are them-

selves “marketable to some significant segment of the

community.” Galiano v. Harrah’s Operating Co., 416

F.3d 411, 419 (5th Cir. 2005). Again, the court’s test

wrongly collapses separability into artistic quality.

Highly marketable, beautiful designs are protectable

by design patent; artistic works for which there is no

market are protectable by copyright.

+

article,” and other doctrines are better suited, it risks continuing

the incoherence and struggle that produced the present mish-

mash of cases.

26

CONCLUSION

Congress decided to separate industrial design

from applied art, leaving industrial design protectable,

if at all, only through utility patent or design patent.

To protect this distinction and limit the coverage of

copyright to applied art, the Court should adopt the

simplest possible test for separability, one that mini-

mizes the need for courts to make aesthetic judgments

and the risk of anticompetitive strike suits. A test that

considers conceptual separability to be a coda to phys-

ical separability, and therefore asks only whether the

claimed design could be removed from the article and

have an existence as a PGS work, or whether instead

the claimed design is the article (or part thereof), is the

best approach.

Respectfully submitted,

MARK P. MCKENNA MARK LEMLEY

NoTRE DAME LAW SCHOOL Counsel of Record

3120 Eck Hall of Law STANFORD LAW SCHOOL

Notre Dame, IN 46556 Room N215, Neukom Building

(574) 631-9258 Crown Quadrangle

559 Nathan Abbott Way

Stanford, CA 94305-8610

(650) 723-4605

miemley@law.stanford.edu

CHRISTOPHER JON SPRIGMAN REBECCA TUSHNET

NEW YORK UNIVERSITY GEORGETOWN UNIVERSITY

SCHOOL OF LAW LAW CENTER

40 Washington Square South 600 New Jersey Ave. NW

New York, NY 10012 Washington, DC 20001

(212) 992-8162 (703) 593-6759

i a a ltl

App. 1

APPENDIX A

List of Amici

Mark A. Lemley, Stanford Law School

Mark P. McKenna, Notre Dame Law School

Tyler T. Ochoa, Santa Clara Law School

Betsy Rosenblatt, Whittier Law School

Pamela Samuelson, University of California Berkeley

School of Law

Christopher Jon Sprigman, New York University

School of Law

Katherine Jo Strandburg, New York University School

of Law

Rebecca Tushnet, Georgetown University Law Center