From the idea of product design, who wouldn’t want to protect more of their products? A producer should be able to profit off the sweat of labor, and creativity that they have mustered to bring the product. Yet, if a design brings utility, then the individual that comes up with it may have a monopoly over the most effective design, which hampers competition. These are the issues that the United States Supreme Court recently considered in Star Athletica v. Varsity, as Justice Sotomayor phrased as “killing knockoffs” with copyright protection. The case involved two parties, Star Athletica and Varsity, both producers of cheerleading uniforms. Varsity sued Star Athletica for copyright infringement of protected designs over a dress. Still, there were various issues to be resolved. What is useful? What is protected by copyright laws? Would it matter if even after the creative elements were removed, there was nothing useful about the article at all?
In this case, the main issue was effectively based in the idea of useful articles. In copyright, there is a thinner protection for “useful” things, protecting only what is creative rather than the useful parts of it. In essence, it had to be “separable” either conceptually or physically. This generally meant to be “truly” separable, it would have to be both. Relating to the cheerleading uniforms, it presented a unique issue. The major question however, was if the designs on the dress (i.e., the chevrons, colors, general look) were protectable. Presumably, either the designs on the dress were protectable, as they could be reproduced and placed on some other object, like a lunchbox, or they were unprotectable, as they were intertwined with the functionality of a cheerleader’s uniform.
Under the assumption the designs were intertwined, Star Athletica argued that the designs were essential to what makes a cheerleader uniform (with Breyer remarking that “the clothes on the hanger do nothing. The clothes on the woman do everything”). However, the fact remained: the uniform is still utilitarian, even without the markings on it. Yet, this gave questions as to separability. It certainly wasn’t physically separable, but under the assumption that it was conceptually separable, wouldn’t something be lost by removing the design? Yet, ultimately, Thomas came up with a simpler, and more elegant solution, although, it is not without its own issues.
The “Thomas Two-Step” Test:
In response to the questions about separability, Justice Thomas, who was the author of the high court’s 6-2 opinion, simplified the problem. Instead of the older way, it relied on the plain meaning of the statute. First, it would be determined if decorations had graphic, pictorial, or sculptural qualities. Second, it would instruct the court to determine if those elements were eligible for copyright on their own or in some other medium. Here, the analogy would be if a painter were to reproduce the designs on a blank canvas, which is a two-dimensional piece of work. Since an artist could do so, and it is feasible that it could enjoy copyright protection in this form, it would be eligible.
The major benefit of this test is that it simply allows more works to be eligible for copyright (and a longer duration of protection) than other alternatives. Especially as it releases any preconception that the useful article must be equally useful even after the creative elements are removed, if it were to even be useful at all.
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