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This article is written by Gaurav Kumar, from Surendranath law College (University of Calcutta). In this article, the author depicts the doctrine of conceptual separability as given by the Supreme Court of the United States in the Star Athletica case. 

Introduction

The Intellectual property law deals with the protection of rights of the proprietary through copyright, trademark, patent. geographical indication. The artistic, literary, choreographic work of an individual is protected through the copyright under the copyrights act 1957, whereas the new designs, new-scientific tangible inventions are protected through the patent regulated under the patent act 1970. There is a clear distinctive line between the copyright regime and the trademark regime. The requisites of distinction between the copyright and the patent when embedded in an article were given by the apex court of the United States of America in the case of Star Athletica L.L.C v. Varsity Brand Inc. 

The pictorial, graphical work on articles like clothes jewellery is not protected under the copyright act in the United States. But, in some cases, there are artistic works that are unable to be separated from the articles despite being of utilitarian nature. The U.S apex court to decide whether if the aforementioned issue arises in any case where any artisan work embedded in an article needs to be copyrighted, determined a doctrine came to be known as “Doctrine of conceptual separability”. We will briefly discuss the said doctrine in this article. 

Copyright, Patent and useful articles in between

The term copyright means the right of the author. A definition according to the World Intellectual Property Organisation term refers to the exclusive rights of the creator over their literary and artistic works. The wide range of work includes books, music, films, painting computer databases, advertisement, and maps. In India, these works of the author/creator can be copyrighted under the Copyright Act 1957.

The term patent refers to the exclusive rights to the inventor for its innovative invention, provided that such invention shall provide a solution to any problem. Designs, manufactured articles are subject to be patented for the protection of rights under the Patent Act 1970 in India. 

The term useful article finds no definition under the Indian Intellectual property laws. However, the term finds its place under Section 101 in the copyrights law of the United States of America as under:

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. An article that is normally a part of a useful article is considered a “useful article”.

According to the definition, the term useful article refers to the article which makes the article functional increasing its scalability. The term broadly takes into consideration the work in which the creativity lies in the shape, design, or visual of the work. Things like clothes having special designs, jewellery are said to be “ useful articles”. The useful articles are copyrightable only if they pass the separability test as dictated by the US courts. The useful articles having special designs that incorporate pictorial, graphic, or sculptural representation, can be identified separately and are capable of existing independently out of the utilitarian aspects of the article are kept under the pictorial, graphical, and sculpture work. Such articles are subjected to special scrutiny.

Conceptual separability: The old tests

The doctrine of conceptual separability states that the artistic feature of the useful object is copyrightable if they can be conceptually separated from the utilitarian aspects of the article and are capable of being identified separately. The concept of the separability test prior to Star Athletica judgment was first dealt with in the case of Mazer v. Stein, the major issue that evolved was the copyrightability of the statutes in form of a Balinese dancing figure used as the base for table lamps. The courts in the case affirmed that the incorporation of design in a useful article does not affect the copyrightability of the object. 

This case left a question whether the work including the art of the artist is subject to copyright that can be reproduced for lamp base? The court did not separately consider the utility of the lamp base without the dancing figure. The reflections of the judgement were taken into consideration and the US Congress amended the copyright legislation in the year 1976 to broaden the scope of the copyright for the commercial goods excluding the realm of the general design. The majority panel of the sixth circuit court in Varsity vs Star Athletica counted ten different approaches to determine the concept of separability. These ten-step tests include:

The Copyright office approach 

The condition of pictorial, graphical, and sculpture features must be satisfied. It means that the artistic work and the useful article can be perceived side by side as separate.

The Primary-Subsidiary approach 

The pictorial, graphical, and sculpture feature can be separated from the useful article if the artistic work is primary and the article is secondary.

The objectively necessary approach 

If the artistic features of the design are not necessary to the article’s utilitarian function the pictorial, graphical, and sculpture function can be conceptually separable.

The Ordinary-observer approach 

If the artistic design creates two different concepts in the mind of the observer in ways that are inevitably entertained, the pictorial, graphical, and sculpture feature can be conceptually separable.

The Design-process approach 

The pictorial, graphical and sculpture feature is conceptually separable if the design elements can be identified as reflecting the designer’s artistic judgement which is independent of the article.

The Stand-Alone approach 

The pictorial, graphical, and the sculpture feature can exist separable if the article’s functionality remains unimpaired after the copyrightable thing is separated from the object.

The Likelihood-of-Marketability approach  

The pictorial, graphical and sculpture feature is separable if it is believed that if the article loses its utilitarianism feature it can still be marketable due to its aesthetic features.

In addition to the above judicial tests, the Court of Sixth Circuit also identified two tests that had not been adopted by any federal court. However, the majority panel of the Sixth Circuit rejected all the above nine approaches and adopted its own test comprising five questions to decide whether a particular design embedded in the object is subject to copyright or not. These questions were as follows:

  • Is the work pictorial, graphical, or sculpture?
  • Is it the design of a particular article?
  • What are the utilitarian aspects of the object?
  • Can the viewer of the design identify the pictorial, graphical, and sculpture feature separately from the utilitarian aspect of the object?
  • Does the design feature exist independently of the utilitarian aspect of the useful article?

The judges of the apex court formulated a “hybrid” approach known as the two-prong test which comprised all the above five questions to determine conceptual separability.

Application of the test

The Supreme Court of the United States drew a new two-step test in the case where the evolving issue was whether the two-dimensional designs printed on the cheerleading clothes are subject to copyright or not. The case related to the evolving issue was that the two parties Star Athletica and Varsity were indulged in making cheerleading uniforms. The Varsity brand filed the suit in the District Court alleging that Star Athletica had copied 5 of its two-dimensional uniform designs. The district court delivered the judgment in the favour of Star Athletica. On an appeal favoured by Varsity Brands the Sixth Circuit by applying its five-question test found that the dress designs were fabric one, hence copyrightable. 

Varsity moved a writ of certiorari to resolve the issue of copyrightability of the design as Sixth Circuit court had applied along ten-step for deciding the issue. The Court had concluded that the designs that can be identified separately and exist independently, such as the designs that can be transferred into the apparels are copyrightable ones. 

The Court sought into a principle of separability where the Varsity’s copyright could be accessed. Two essential requisites were given to validate a useful article to be protected under the copyright:- first, if the design feature can be perceived as two-dimensional or three-dimensional work distinct from the useful article, and second the design would qualify as a pictorial, graphical, or sculpture work either being independent or fixed in a tangible medium and if it is imagined as a separate one from the useful article in which it is incorporated. 

The court’s interpretation of the first characteristics is paraphrased in the statutory text and another two characteristics find their place in the definition of Section 101. Justice Thomas in his judgement pointed that the utility of the useful article need not remain intact after the separation of the copyrightable pictorial, graphical, or sculpture work. The statutory provision of Section 101 states that the article’s standard could be met if it is physically and conceptually separable.

Essentiality and functionality

The Court in the case marked that designs seeking protection under the copyright must satisfy the usual requirement of originality, fixation, and fixability. The Court in the Star Athletica case didn’t hold that the varsity designs were protected under the copyright merely they were separable and distinct and eligible for the protection under the Copyright. Similarly, the coloured stripe, shape, and patterns of the uniform can be reproduced so it can be protected under copyright. The surface decorations are also subject to be protected under copyright. However, the cut and style of the uniforms are not protected under copyright.

Star Athletica remarks

The interpretation of the two-step separability test made by the court in the Star Athletica case is as:

Separate Identification

The first essential element of the Supreme Court’s new test for the copyright of design was that design could be perceived as two-dimensional or three-dimensional artwork being separate from the useful article. Justice Thomas stated it as a special criterion of identification. The decision-maker needs to identify two things, one the useful article having utilitarian quality, and the second spot the design having 2-D and 3-D elements which reflects some pictorial graphical or sculpture qualities. 

Independent Existence 

The second part of the test by the court requires a separately identified two-dimensional or three-dimensional design that would qualify a protectable pictorial, or graphical work either of its own or fixed in a tangible object of expression as in the way it would imagine to have separate from the useful article into which it is incorporated. Justice Thomas notes that a useful article means an article that is a part of a useful article. This application is confirmed by the courts in a test of design in the cheerleading uniform. Justice Thomas identified the two-dimensional designs in the uniform as being qualified to pass the separate identification test as recognised in the Star Athletica case.

Three-Dimensional design feature 

The first element of “separate identification” is no more problematic for three-dimensional designs. The person has to spot the three-dimensional feature having pictorial, graphical, or sculpture qualities. The three-dimensional designs certainly possess sculpture qualities. Secondly, the element of independent existence deems troublesome for the three- dimensional design than the two-dimensional design embedded in the useful object. It is perceived that those three- dimensional objects are more a part of  “useful objects” and they very less satisfy the pictorial, graphical, or sculpture qualities. Henceforth, these designs are supposed to be replicated in whole or as a major part of the object in which it is embedded. 

However, that doesn’t make the design ineligible for qualifying the separability test. The Court in the case of Mazer vs Stein judgment held that the dancing lamp has emphasized over the “separate identical feature” rather than the generic identity of the useful object. The lamp base is a part of the “useful object”, and the dancing figure is not, hence it is eligible to be copyrighted despite its use as a lamp base (an example is taken from the mazer case). 

However, the cut, shape, or dimension of the cheerleading uniforms are not subject to copyright. Despite satisfying the three-dimensional sculpture quality and posing the utilitarian function the above-mentioned designs can’t be copyrighted. It is so because, despite the utilitarian function,  the object needs to be “intrinsic”. The sculpture of the dancing image can be used as door handles, paperweight, and lamp base. These functions are not intrinsic to the object and so the sculpture once identified and imagined as separately is protected under the sculpture quality as described by the court in Star Athletica Case.

The Problem of Overall Shape

The question on the issue of whether the overall shape design can be protected under the copyright has been described under the case of Esquire Inc. vs Ringer where the mandamus was issued compelling the copyright board to register the overall shape of outdoor lighting fixtures. The copyright board denied registering the overall shape as the regulation of separability. 

Similarly, the Ninth Circuit in the case of Inhale, Inc. vs. Starbuzz Tobacco. Inc., holding the shape of Hookah water container not eligible to be protected as copyright under the Copyright Act, 1976. The position of the board was upheld in the Star Athletica case. The board cited the reason that the copyright for the overall object could extend to the shape mandated by the function of the article thus providing monopoly to the copyright owner in case of commercial goods. 

However, the shape of a circle, triangle, rectangle are kept outside the ambit of copyright. But certain things have an overall shape and are protected under copyright as they satisfy the requisites of copyright despite being their utilitarian status. The coin, polythene bags, pencil sharpeners are the things that are overall shaped and protected under copyright.

The legal position in India vis-a-vis separability

In India, the doctrine of conceptual separability finds no direct place in the legislation. However, it finds a place under the “exception to copyright infringement” under Section 52(1)(w) of the Copyright Act 1957. It was added after the 2012 amendment in the act. The clause states that the three-dimensional object is based on the two-dimensional artistic work like technical drawing is purely functional and deemed as a device. Such work is protected under copyright. 

The two-dimensional object whenever eligible as a useful object will not be protected under the copyright if it is used in a patent application for the demonstration of a three-dimension object. The Hon’ble High Court of Gujarat in the case of Ipeg vs. Kay-Bee Engineers, explaining the applicability of the case said that any design or part of the technical drawing that is found to be functional shall be covered within the term “Design” and these designs are protected under the Design Act, 2000. 

Such functional technical drawings don’t come with the definition of “artistic work” as provided in Section 2{c} of the Copyright Act, 1957 henceforth making itself ineligible to be protected under copyright. The Court putting reliance over the case Symphony Limited v.s Wim Plast said that in any case where the dilemma arises that whether the certain technical drawing cover under the ambit of “artistic work” or “design” the court shall apply the “functional test” to reach over the conclusion that whether the articles are subject to be protected under the copyright or not. 

The Indian Jurisprudence has not broadly analysed the concept of functionality facet of the copyright act. The U.S Jurisprudence has comprehensively analysed the issue through the doctrine of “separability”. The European Union case of “Brompton Bicycle” finds the relevance of Section 52(1)(w) of the Indian Copyright Act. 

The Court in the above case held that the copyright protection applies to the work whose shape is at least in part, necessary to obtain a technical result where the product is an original work resulting from intellectual creation in a way that the author can express its creativity by free choice so that it reflects its personality. 

The absence of judicial precedents in India regarding the “functionality test” of distinguishing the copyrightable works from non-copyrightable is a matter of grave concern. However, with time as the courts face the issue, they will interpret it comprehensively.

Landmark cases

Several landmark cases have been cited by the U.S Courts before visiting the judgement of the Star Athletica case.

Mazer vs. Stein

It is one of the most important precedents which the United States Courts cited before drawing a line between the designs that are protectable under copyright and the rest that are left for the patents. The case included the statutes of Balinese dancer that was used as the base for the table lamps. The statutes were registered as a “work of art” or “reproduction of work art” with the Copyright Office under the Copyright Act 1908. The defendant copied the designs citing the patent law which extends protection to the new ornamental design for an article of manufacture. 

The copiers challenged the validity of copyrightability of the statutes on the basis that the design patent, with their more exacting standards, could protect the designs of mass-produced industrial products. The court found no reverence in the argument that the intended use or industrial use of the object made it ineligible for being protected under copyright. The Court held the statute as “work of art” eligible for protection under copyright.

Kieselstein-Cord v. Accessories by Pearl, Inc.

The issue involved in this case is whether the buckles of the waist belt are copyrightable or not. The U.S district court held that the belt-buckles having interesting design are supposed to be useful articles and hence ineligible for copyright. The court’s finding was based on the surface profile of the buckles. However, the Second Circuit court rejected the opinion of the district court. It recognised the artificial and ornamental aspects of the buckles and decided that the separability was based on the aesthetic and functional aspects of the buckles. The buckles were also accepted to be kept in the Metropolitan Museum of Art for the purpose of the showcase, the buckles were also used by the user to be worn in other body parts rather than the waist. The court held that the separate features of the buckles have no intrinsic utilitarian function, hence they are not found to be useful articles making them eligible for protection under copyright.

Carol Barnhart Inc. v. Economy Cover Corp

In the above case, the plaintiff reached the court claiming the copyright on human torso forms that were used to display clothes. The polystyrene form of the torso having in male and female form had a hollow sphere inside to tie clothes to display clothes. The court rejected the claim stating that the forms didn’t deem fit on the contours of the separability test and hence ineligible to be protected under copyright because the design of the torso was “inextricably intertwined” with the utilitarian feature of the clothes.

Brandir Int’l, Inc. v. Cascade Pac. Lumber Co

In this case, the issue involved was whether the bike racks in the form of ribbon for examining the process of article creation were copyrightable or not? The Sixth Circuit Court applied the Denicola test and held that if the creative elements of the design were made not taking into consideration the functional aspects of the design then the creative designs were eligible for copyright. The contours of the test where the creation process would take into consideration the aesthetic aspect of the design.

Conclusion

Hence, a clear distinctive line between the articles that will be protected under the patents or design has been drawn by the United States Court in the Star Athletica case where the judges propounded a new test which came to be known as the “Doctrine of conceptual separability”. This case has brought an evolution in the realm of copyright jurisprudence. The courts outside the cross-boundary of the U.S shall adopt such precedent in resolving the disputes on similar issues. However, this decision is going to affect the fashion market on a large scale. In the fashion cycle, the designs with the passage of time become unpopular and the demand for new designs emerges in the market. The utensil industry, lighting features, machinery, and furniture industry shall also be affected by this decision. If the court would have been a little more clear about clarifying the objects in the test it would have a far better impact on the application of different kinds of articles in the coming future.

References


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