Supreme Court Distinguishes Design Features from Useful Articles

Every year the Supreme Court continues to distill and define the rules of intellectual property law, and this year is no different. There are several cases before the high court in this term that involve intellectual property rights, including one about whether a copyrightable or patentable design feature can be distinguished and protected from a useful 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. For example, clothing, furniture, dinnerware, and lighting fixtures are useful articles. Section 101 of the Copyright Act of 1976 is the avenue companies and individuals use to protect useful articles. That section allows the protection of useful articles when they incorporate pictorial, graphic, or sculptural features that can be separated from the utilitarian aspects of the article.

Like other aspects of copyright and patent law, this section has led to confusion and split court decisions over the years, and finally landed on the high court’s calendar for a defining decision. The one that finally made it to the Supreme Court came out of the Sixth Circuit Court of Appeals, Star Athletica v. Varsity Brands.

Star Athletica Controversy

The case in the lower court centered around the sale and use of certain cheerleading uniforms produced by Varsity Brands, Inc. Another company, Start Athletica, imitated aspects of the uniforms, and the original designers sued to protect what they felt were intellectual property rights. The district court dismissed the case because the judge ruled the design aspects of the uniforms could not be distinguished from the utilitarian aspects, but then the appeals court reversed the district court.

The appeals court focused on the fact that the design features were separate and distinct from the useful aspects of the uniform. They reasoned that to hold otherwise would limit the ability to take advantage of the protections offered by section 101 of the Copyright Act. That did not end the case, however, as it went on to be heard by the Supreme Court.

The Supreme Court upheld the appellate court decision, and in doing so they established important rules for industries to follow going forward. The two main rules taken from the case are that a design feature of a useful article can be protected when the feature:

(1) Can be distinguished as a separate and distinct work of art separate from the useful article; and

(2) Could be protected on its own or if attached in another way, if imagined as a separate piece of work.

Essentially, this is the same language used by the text of the statute, but it clarifies the protectability issues for companies going forward.

Protecting Intellectual Property

The laws, regulations, and rulings which make up intellectual property law continue to evolve. Determining the value placed on images, processes, and other aspects of intellectual property law is an ongoing process. It is important for creators, individuals, and businesses to understand how that property can be protected.

If you have an intellectual property question, contact us. At The Royse Law Firm we are dedicated to serving California businesses and individuals by helping them understand and protect their intellectual property rights. We look forward to hearing from you.

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