When is a useful item copyrightable?

Warner Cross asks U.S. Supreme Court to decide IP question

The most vexing, unresolved question in copyright law today is how to determine whether features of a useful article—such as the curves of a bike rack, the shapes of a car, or the buttons on a casino uniform—are conceptually separable from the article itself and thus protectable under the Copyright Act. The Appellate & Supreme Court Practice at Warner Norcross & Judd LLP has asked the U.S. Supreme Court to answer that question in a case involving a copyright dispute over the stripes, chevrons, and color blocks incorporated into cheerleader uniforms.

John J. Bursch and Matthew T. Nelson, partners with Warner Norcross, filed a petition for certiorari today in Star Athletica v. Varsity Brands. In August, three judges of the 6th Circuit overturned a district court ruling that said identifying features of a uniform can never be copyrighted and thus removed from the public domain. The decision was split 2-1, with Judge McKeague in dissent. Judge McKeague noted that the “law in this area is a mess,” and he urged the Supreme Court to “clarify copyright law.”

Although the facts of the case involve cheerleader uniforms, the conflict among the federal courts is national, as are the practical implications, which are “immense,” said Bursch. “Under the law in most federal appeals courts,”explains Nelson, designers cannot claim copyright for pleats on tennis skirts, button patterns on golf shirts, or colored patches on rugby uniforms. Anyone and everyone is free to use these elements to make uniforms or garments. But now, designers can claim copyright protection for these design elements in the Sixth Circuit, creating a mountain of problems for the $330 billion U.S. apparel industry.”

The case has already achieved a high level of notoriety, with the Sixth Circuit decision being reported in the National Law Review, Law 360, IP Intelligence and Apparel, among many others. As the Fashion Law Blog put it, the 6th Circuit’s decision represents “an example of judicial activism in an area ripe, over ripe,” for clarification.

Key issues to be considered in the case include:

• The level of judicial deference owed due to a copyright registration accepted by the U.S. Copyright Office.

• The appropriate test for courts to determine when a non-copyrightable “useful” article has a feature that is itself protectable under section 101 of the Copyright Act of 1976.