The five designs that you see above have unleashed a storm of controversy over whether the Sixth Circuit has upended decades of copyright case law refusing to grant protection to useful articles. Patent law reigns supreme in the area of industrial design, granting limited monopolies for short periods to ornaments on useful articles.
Here's what Wikipedia says about design patents:
In the United States, a design patent is a form of legal protection granted to the ornamental design of a functional item. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers (Fig. 1) and computer icons are examples of objects that are covered by design patents.
A similar concept, a registered design can be obtained in other countries. In Kenya, Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In the countries of the European Community, one needs to only pay an official fee and meet other formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain).
For the member states of WIPO, cover is afforded by registration at WIPO and examination by the designated member states in accordance with the Geneva Act of the Hague Agreement.
The lead U.S. Supreme Court case interpreting the intersection between useful articles and the Copyright Act is the 1954 Mazer v. Stein, 347 U.S. 201 (1954). Wikipedia has a stub on this important case, with the last suggested reading on it published in 1971.
Mazer is known for the following proposition: "Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself." 347 U.S. at 217 (citing F. W. Woolworth Co. v. Contemporary Arts, 193 F.2d 162; Ansehl v. Puritan Pharmaceutical Co., 61 F.2d 131; Fulmer v. United States, 122 Ct. Cl. 195, 103 F.Supp. 1021; Muller v. Triborough Bridge Authority, 43 F.Supp. 298.)
In Mazer, the U.S. Supreme Court extended copyright protection to the copyrightable features of the lamp base featured above. The object is useful because it is designed to hold up a lamp, but the Supreme Court determined that is non-functional sculptural attributes were copyrightable. From 1954 until the present, Mazer's "separability" test: that is, could the copyrightable aspects be conceptually separated from the useful aspects of the object, has ruled. The problem is that this test is hard to apply and the various circuits have taken different approaches in different circumstances.
The U.S. Supreme Court will decide on April 15, 2016 whether to grant certiorari in Star Athletica, LLC v. Varsity Brands, Inc. a petition from a decision of the Sixth Circuit Court of Appeals captioned Varsity Brands, Inc. v. Star Athletica, LLC, decision here. You can find the petition for certiorari filed with the U.S. Supreme Court, as well as amicus briefs and reply brief on the SCOTUS blog here.
The U.S. Supreme Court gets to pick its cases. It only picks a small number every year from the many cases that practitioners bring to its attention, most of whom seek to undo a decision damaging to their clients' interests. The Supreme Court clerks reviewing cert petitions are generally looking for cases that provide a vehicle to permit the Supreme Court to review an issue that has caused disagreement among the various circuit courts of appeal. So if you want your case to be considered by the U.S. Supreme Court, you need to explain why the issue is much larger than the question of whether or not a circuit court of appeals got the answer right or wrong.
To decide which cases to pick, the Justices have a conference. On April 22, 2016 the Star Athletica case will be scheduled for conference. There are a few things that could happen. Most times, cert is denied. Sometimes, the Supreme Court seeks more information from the parties or someone else. For example the Court could request the views of the Solicitor General, the head of the U.S.P.T.O. or the Register of Copyrights. Or the Supreme Court could grant cert., which means that they will hear the case.
The U.S. Supreme Court is statistically more likely to accept cases where briefs of amici curiae have been filed. These "friend of the court" briefs are subject to fairly strict procedural rules. They must be filed very quickly. They must be filed by persons who are independent of the litigants. And they must explain why the issue(s) raised in the cert petition affect the interests of the amici and why the Supreme Court addressing the issue is important to the amici.
Two amicus briefs were filed. The first was filed by Public Knowledge representing craft costumers and craft sewers. The second was filed by representatives of the 3D printing industry. Each brief urged review and articulated a parade of horribles that would occur in America to have its law of industrial design and free competition in the creation of useful articles to be thrown into disarray.
The cert petition seems to be pretty persuasive and both amicus briefs make compelling arguments related to the future of American industrial design being at stake. A repeated theme is that for decades the fashion industry has tried to get Congress to protect fashion designs, and that the Sixth Circuit has granted the fashion industry what Congress steadfastly refused to give.
The questions presented by the petition are as follows:
1. Under the Copyright Act, a “useful article” such as a chair, a dress, or a uniform cannot be
copyrighted. 17 U.S.C. § 101. The article’s component features or elements cannot be copyrighted either, unless capable of being “identified separately from, and . . . existing independently of, the utilitarian aspects of the article.” Id. Circuit courts, the Copyright Office, and academics have proposed at least nine different tests to analyze this separability. The Sixth Circuit rejected them all and created a tenth. The first question is: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?
2. The Copyright Act specifies that in any judicial proceeding, the certificate of a registration made before or within five years after first publication is prima facie evidence of the copyright’s validity. 17 U.S.C. § 410(c). The effect is to re-order the burden of proof to require the infringement action defendant to prove the copyright is invalid.
Until now, no circuit has given additional judicial deference to a registration. But the Sixth Circuit determined that a copyright registration is entitled to Skidmore deference. See Skidmore v. Swift & Co.,323 U.S. 134 (1944). The second question is Whether, in determining a copyright registration’s validity, a court should give any judicial deference in addition to the statutory deference articulated in 17 U.S.C.§ 410(c).
This case, left unreviewed, may unsettle further an area of copyright law that has bumped up uneasily against patent law. As Judge McKeague stated in his dissent:
"It is apparent that either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design. The law in this area is a mess - and it has been for a long time."
My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) covers issues relating to registering, correcting and supplementing copyright claims before commencing a litigation and covers how the Federal Rules of Civil Procedure and Federal Rules of Evidence interact with the Copyright Act, 17 U.S.C. 101 et seq. As I explain, the practices of the Copyright Office are very different from the practices seen in granting trademarks or patents. Indeed, the Copyright Office will register competing claims to the same material. It would likely be helpful to the Supreme Court to consider the views of the Register of Copyrights before deciding to grant cert in this case.
www.dunnington.com
Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
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