Recent cases present a possibility that copyright protection under the Copyright Act has expanded in certain circumstances involving useful articles. The Copyright Act provides protection for “pictorial, graphic, or sculptural features” of the “design of a useful article” only if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”1 However, in deciding cases involving artistic features within useful articles, courts have struggled to provide a consistent separability analysis.2 In an attempt to enable a more reliable approach, the Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc. provided a new test.3 However, this new test has presented an opportunity for interpretation and application that could expand copyright protection in cases where artistic features have some partial utility. As such, this new test necessitates interpretation by lower courts. Indeed, the Southern District of New York has already interpreted the Star Athletica test in deciding Jetmax Ltd. v. Big Lots, Inc., a case involving an artistic feature with a partial utility.4 In not rendering the feature uncopyrightable,5 the Southern District’s interpretation of Star Athletica furthers the possibility that copyright protection has expanded.
In Star Athletica, the Supreme Court held, “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”6 Additionally, the Court decided that various restrictions should not be placed on this test. For instance, once an identified artistic feature is removed, the test does not require that an equally useful, or even a fully functional, article remain.7 Further, an identified artistic feature does not need to be a “solely artistic” feature that has no effect on a useful article’s utilitarian function.8
Further, the Court expressly recognized that an artistic feature could include some utilitarian function.9 Thus, although a “feature itself” cannot be a useful article,10 an artistic feature can include some functionality provided it is not fully functioning on its own. As discussed below, this creates an opportunity for artistic features to be carefully defined in a manner that would expand the scope of copyrightable useful articles. However, this opportunity was not obvious in Star Athletica because the artistic features at issue were two-dimensional designs (e.g., lines, curves, and stipes) on cheerleading uniforms.11 By their nature, once these artistic features are separated from the uniforms, they clearly lack any partial utility.
Five months after Star Athletica, the Southern District of New York applied the Star Athletica test in Jetmax, a case involving a partially functional artistic feature.12 In Jetmax, the issue was whether a series of molded, decorative tear shaped covers in an ornamental light set, as illustrated below, were copyrightable.13
Applying the Star Athletica test, the Court evaluated whether the covers would qualify as a protectable pictorial, graphic, or sculptural work if they were imagined separately from the useful article into which they are incorporated.14 The Court held the covers are sculptural works that are indeed capable of existing apart from the utilitarian aspect of the light set.15 Importantly, the Court noted that even if the covers reduce glare and serve some utilitarian function, that does not render them unprotectable from a copyright perspective.16 Accordingly, Jetmax demonstrates the Star Athletic test can be interpreted to find a feature with partial utilitarian functionality copyrightable.
In view of Star Athletic and Jetmax, an opportunity was created for an artistic feature to be carefully defined in a manner that would expand the scope of copyright protection for useful articles. Specifically, an artistic feature could be defined as being a portion of the useful article that lacks some element required to be useful on its own. As such, the “feature itself” would not qualify as a useful article even if incorporates useful elements. For example, a light cover itself, on its own, does not have a useful function even though it may function to reduce glare when attached to a light fixture. In other useful articles that may have previously been considered uncopyrightable prior to Star Athletica, if artistic features within the articles are defined correctly, then an enlarged scope of useful articles may include copyrightable features.
For instance, bike racks made of bent tubing were previously found uncopyrightable.17 In Brandir Intern., Inc. v. Cascade P. Lumber Co. the Court found the racks were “influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements.”18 However, under Star Athletica, it appears an artistic feature could be defined within a bike rack that would pass the new test. To accomplish this, a portion of the rack could be strategically selected wherein the defined portion, on its own, would not hold up a bike. Even if the defined portion contributes to the functionality of the rack, and even if the rack would not be “fully functional” without the portion, the Star Athletica test could be satisfied.
As a further example, hookah water containers were previously found uncopyrightable.19 In Inhale, Inc. v. Starbuzz Tobacco, Inc. the court held that any part of a container that merely accomplishes the containing is not copyrightable.20 However, a portion of a hookah container could be defined as an artistic feature as long as a the defined feature does not itself hold water. For example, imagine in some cases the feature could be defined as a container with a hole in the bottom intended to feed water into the hookah device. This defined portion of the container would not function to contain the water itself since water would leak through it. As such, it would not itself qualify as a useful article. Accordingly, even if the remainder of the hookah was not “fully functional” without the defined portion of the container, the Star Athletica test could be satisfied provided that the “artistic feature” satisfies the other prerequisites of a valid copyright, such as sufficient originality.
It should be noted that in each example the defined feature of the bike rack and the hookah water container would additionally need to qualify as artistic.21 However, the holding in Star Athletica rejected an objective test for determining whether a feature is artistic. As such, nearly any feature could arguably be sufficiently artistic to satisfy the remaining subjective test. For instance, the question of how or why the feature at issue is designed does not require consideration.22 Instead, the focus is on how the feature is perceived.23 However, an objective test for how a feature is perceived is not required. For example, it is not required that an identified artistic feature would need to be marketable without the utilitarian function.24 Indeed, the Court stated, “asking whether some segment of the market would be interested in a given work threatens to prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”25 Thus, it appears nearly any defined portioned of a bike rack or hookah water container could arguably be perceived as artistic.
Accordingly, in view of Star Athletica, and its interpretation in Jetmax, copyright considerations for useful articles previously thought uncopyrightable should not be ignored. Rather, potential definitions of an artistic feature within a useful article should carefully and imaginatively be considered before concluding an article is uncopyrightable.
1 17 U.S.C. §§ 101, 102(a).
2 “Courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article's utilitarian function.” Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir. 1990).
3 137 S. Ct. 1002, 1007 (2017).
4 No. 15-CV-9597, 2017 WL 3726756, at *1 (S.D.N.Y. Aug. 28, 2017).
6 Star Athletica, 137 S. Ct. at 1007.
7 Id. at 1013-1014.
8 Id. at 1014.
9 Id. at 1013-1014.
10 Id. at 1010.
11 Id. at 1007.
12 Jetmax, 2017 WL 3726756, at *1.
14 Id. at *6.
16 Id. at *6 n.2.
17 Brandir Intern., Inc. v. Cascade P. Lumber Co., 834 F.2d 1142, 1143 (2d Cir. 1987).
18 Id. at 1147.
19 Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038, 1040 (9th Cir. 2014).
20 Id. at 1042.
21 17 U.S.C. §§ 101, 102(a).
22 Star Athletica, 137 S. Ct. at 1015.
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