New Possibilities for Copyrighting Consumer Products

28 February 2018 IP Litigation Current Blog
Authors: Jean-Paul Ciardullo

Traditional wisdom has been that aesthetic designs for three-dimensional consumer products, while protectable by design patents and as trade dress, are not protectable under copyright law which is typically associated with purely artistic works.  However, the Supreme Court’s March 2017 decision in Star Athletica, L.L.C. v. Varsity Brands, Inc. refined the test for copyrightability of so-called “useful articles,” opening the door to copyright protection for a broader array of consumer product shapes and patterns. Now, several recent cases interpreting Star Athletica confirm that the right kind of industrial designs can indeed be copyrighted. Given that copyright registrations cost so little to acquire, last for decades, and carry the potential for high damages against infringers, companies should consider whether certain of their consumer product designs may now be eligible for copyright protection.

The Supreme Court Explains That “Design Patent And Copyright Are Not Mutually Exclusive”

The Copyright Statute at 17 U.S.C. § 101 provides that a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article” is eligible for copyright protection if it (1) “can be identified separately from,” and (2) is “capable of existing independently of, the utilitarian aspects of the article.”  The Star Athletica case dealt with the question of whether aesthetic patterns on cheerleading uniforms were eligible for copyright protection.  Opponents of copyrightability argued that the designs were inextricably intertwined with the uniforms because the uniforms were not useful as cheerleading attire without the designs, and because the patterns were in the shape of the uniforms. A majority of the Supreme Court disagreed, finding that the uniform patterns were no different than “a design etched or painted on the surface of a guitar” (which would be copyrightable). The Court went on to explain that it was unnecessary to prove that the product in question would remain useful without the aesthetic design, but rather only necessary to show that “the separated [aesthetic] feature qualify as a nonuseful pictorial, graphic, or sculptural work on its own.” The Court rejected the idea that Congress had intended to preclude copyright protection for industrial designs, and explained that “we have long held that design patent and copyright are not mutually exclusive.” In summation, the Supreme Court held that “an artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article.”

The Expansion Of Copyright Protection To A Wider Range Of Consumer Products

Even before Star Athletica, some courts had already affirmed copyright protection for aesthetic aspects of utilitarian consumer products. For example, in Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc. (4th Cir. 2010), the Fourth Circuit found that decorative carvings in wood furniture were copyrightable, explaining that the carvings “are not like a bare human torso mannequin for which adornment is the very utilitarian purpose of the object. Like statuettes on a lamp base, the [furniture] design compilations are superfluous nonfunctional adornments for which the shape of the furniture (which is not copyrightable) serves as the vehicle.”

In the wake of Star Athletica, several courts have confirmed copyright coverage for other kinds of industrial designs. In Jetmax Ltd. v. Big Lots, Inc. (S.D.N.Y. 2017), the court concluded that ornamental tear-drop shaped lanterns were copyrightable, explaining that “[t]he decorative covers are sculptural works that are capable of existing apart from the utilitarian aspect of the light set, i.e. the light bulbs and other components that cause the Tear Drop Light Set to light a room. The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.” Likewise, in Design Ideas, Ltd. v. 

Meijer, Inc. (C.D. Ill. 2017), the court found that clothes pins with bird-shaped upper portions were copyrightable because, even though the bird portion of the pins served the function of allowing the pins to be hung from a hook or line, the bird shape would have been separately eligible for copyright protection even if not attached to the pin.

By contrast, in Inhale, Inc. v. Starbuzz Tobacco, Inc. (C.D. Cal. 2017), the court declined to extend copyright protection to a hookah container, finding that the container at issue consisted of nothing more than a combination of simple geometric shapes. The court allowed, however, that “[t]his is not to say that there are not some, if not many, useful articles composed of unique geometric shapes variations or unique combinations of geometric shapes that might pass muster under the Star Athletica test.” To give a concrete example of such a copyrightable design, the court cited the Noguchi Table (pictured above), which was designed by Isamo Noguchi for the president of the Museum of Modern Art in 1939.

Conclusion

As of the time of this writing, the impact of Star Athletica has yet to fully play out. However, it is reasonable to expect some expansion of the scope of copyright protection for industrial designs. While courts may be hesitant to enforce copyrights in designs that are seen as either too simplistic or too necessary to the utilitarian function of the product, designs that are arbitrary or aesthetically complex may be entitled to protection if they pass muster under the Star Athletica test. Indeed, a theme of the recent case law is to give due credit to industrial designers for their skill and ingenuity in developing unique new designs. Given the great value of copyright protection – and its low cost to obtain – consumer products companies should consider whether, in addition to being eligible for design patents or trade dress, any of their product designs may be registered as copyrights.

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