COPYRIGHT MO2T05 - Useful Articles in Copyright Law

Useful Articles Doctrine

• The useful article doctrine determines if an item is excluded from copyright protection, focusing on its utilitarian aspects.

• If an article qualifies as "useful" due to its intrinsic function, it typically cannot be protected by copyright law. This is because copyright law primarily protects artistic expression rather than functional elements.

• However, even if an item is considered a useful article, trademark or patent law may still offer protection for its design or branding elements. Copyright protects creative expression, while patents protect inventions and discoveries, and trademarks protect brand names and logos.

Supreme Court and Star Athletica

• The Supreme Court's decision in Star Athletica has provided a simplified test for determining what constitutes a useful article, clarifying the separability and independent existence requirements.

• Examples of items that have historically challenged courts regarding copyright protection due to their blend of aesthetic and functional features include items such as bear claw slippers, dress designs, masks, and belt buckles.

• A belt buckle, for example, is functional in that it holds up clothing. However, it may also have aesthetic or ornamental elements that could potentially be copyrightable if they can be separated from the buckle's utilitarian function.

Definition of a Useful Article (Section 101)

• According to Section 101, a useful article must possess an intrinsic utilitarian function, meaning it serves a practical purpose.

• If the intrinsic functionality of the article cannot be adequately or easily described, it may not be considered a useful article under the law, and therefore may be eligible for copyright protection.

• Originality is not a factor in the determination of whether an item is a useful article. Originality is considered later in the analysis to determine copyright eligibility if the article is first determined not to be a useful article.

• If an article is definitively determined to be a useful article, it is excluded from copyright protection. This determination does not preclude seeking protection under other intellectual property laws, such as patent or trademark law.

Belt Buckle Example

• A belt buckle has an intrinsic utilitarian function, which is to hold up clothing, making it a useful article.

• It may not inherently portray the appearance of another article or directly convey information, further solidifying its status as a functional item.

• However, the PGS (pictorial, graphic, sculptural) exception must be considered if the belt buckle features artistic designs or patterns.

• If the belt buckle design qualifies as a pictorial, graphic, or sculptural work separate from its function, it is not a useful article; further originality analysis is then needed to determine if the design is copyrightable.

Textbook Example

• A textbook has an intrinsic utilitarian function: helping you learn, and is also communicative in that it conveys information.

• Because it conveys information and serves a clear educational purpose, it is considered a textbook and is not a useful article.

• Further analysis is required to determine its copyright eligibility, including assessing whether it contains original expression and material, as defined under Section 102 of copyright law.

PGS Exception (Pictorial, Graphic, Sculptural)

• If the design of the belt buckle or another item qualifies as a pictorial, graphic, or sculptural work, the item may not be considered a useful article.

• An originality analysis is then essential to determine whether the artistic aspects of the design are independently copyrightable.

Overlap with Patent and Trademark Law

• The useful article doctrine often intersects with patent and trademark law, leading to potential areas of confusion when determining the appropriate type of intellectual property protection.

• Copyright, patents, and trademarks are distinct forms of intellectual property protection, each safeguarding different types of creations. They protect different scopes and items and grant different types of protections.

Mazer v. Stein

• Mazer v. Stein was a landmark copyright case involving Balinese dancer statue lamps.

• The statue could be considered a sculpture eligible for copyright, a design eligible for design patent protection, and potentially a trade dress eligible for trademark protection.

• The court determined that protection under one form of intellectual property law does not exclude the possibility of protection under other forms.

• The key question is whether there is something beyond its utility as a lamp that can be protected under copyright law, such as the artistic expression embodied in the statue itself.

Baker v. Selden

• Baker v. Selden involved a potentially copyrightable form for a new accounting system and a potentially patentable method for the accounting system itself.

• If Selden had sued under the 1976 Copyright Act, the accounting form might have qualified as a useful article because its primary function was to record and organize financial data.

• Its intrinsic utility is to keep financial ledgers using an unpatented system.

• If the case were litigated today, the court would not need to consider Baker's originality if it is determined a useful article.

Convergence of Copyright, Patent, and Trademark Law

• The belt buckle may be eligible for patent protection because it is functional. Its innovative design or mechanism could be patented.

• The Selden accounting system may also qualify for patent protection, although it would be a stretch unless the system involved some novel method or apparatus.

Design Patent Protection

• Design patents are particularly useful for protecting the aesthetic design of functional articles.

• Utility is a plus factor and it must be ornamental so the design must be primarily ornamental, not purely functional.

• Securing a design patent requires a level of novelty and non-obviousness that is not required under copyright law.

• The question of what qualifies as a non-obvious design is a subject of ongoing debate and consideration in design patent law.

Trademark Protection

• Utility does not necessarily disqualify a device or design from being protected as a trademark.

• The design itself has to be inherently distinctive or have acquired distinctiveness and serve as a source designator, identifying the product's origin.

• A single buckle on a belt may not immediately reach the status of a source designator under trademark law unless consumers recognize it as a symbol of a particular brand.

Complementary Roles

• Copyright, patent, design, and trademark laws can play complementary roles in protecting different aspects of a product or design.

• The Coca-Cola bottle has been protected as both a design patent and a trademark, illustrating how different forms of IP protection can be layered to protect a product's overall appearance and branding.

• All four forms of IP have very different requirements and provide very different scopes of protection so you can't assume similar eligibility or the same duration of protection.

• Terms of duration differ: copyright lasts for life of the author plus 70 years, patents last for 20 years from the filing date, design patents last for 15 years from the date of grant, and trademark rights can last indefinitely as long as the mark continues to be used and retains its distinctiveness.

Doctrine of Selection

• Some scholars advocate for the doctrine of selection, suggesting that a creator should only be allowed to select one form of intellectual property protection for a particular work, object, or invention.

• However, the U.S. has not adopted that approach, allowing for the possibility of overlapping IP protections.

Confusing Issue of Useful Articles

• A perplexing question: Does an apple qualify as a useful article? Yes, but it is not a work of authorship under copyright law, which requires human creativity (Section 102).

• A work of authorship requires human authorship, making naturally occurring items like apples ineligible for copyright.

• What about swimsuits? Are they a useful article? Potentially yes, as they serve the utilitarian function of covering the body.

• However, if a copyright eligible work of art is placed on a useful article, that work of art does not automatically transform the entire article into a useful article.

Analyzing Useful Article Cases Post Star Athletica

• When assessing cheerleader uniforms, consider: Do they have an intrinsic utilitarian function? Yes, they are worn as clothing.

• Do they convey information? Not directly through their function, although they may represent team identity.

• Section 101's definition of pictorial, graphic, and sculptural works includes works of applied art and emphasizes that works of craftsmanship can be protected, but only concerning their form, not their mechanical or utilitarian aspects.

• The design in the case of cheerleader uniform designs can only be copyright eligible if the designs can be identified separately from and are capable of existing independently of the utilitarian aspects of the uniform.

Mazer versus Stein

• Mazer v. Stein highlights the challenges in determining whether a work with clear aesthetic features retains its aesthetic value and copyright protection when used for a utilitarian purpose.

• The court in Mazur held that it does, so long as the dancer statute was copyrightable as a work of art.

• Its use as a lamp, regardless of when it was determined to be used in that way, did not adversely affect its protection under copyright.

Brandeer bicycle rack case

• In the Brandeer bicycle rack case, the Second Circuit considered the changes that Brandeer made to the initial sculpture to create the bicycle rack design and found that the changes made to the rack were solely for the purpose of making it function as a bicycle rack and were intended to enhance its utility.

Star Athletica Test

• The Supreme Court provided a concise test in Star Athletica for meeting the dual requirements under section 101 of separate identification and independent existence.

• They split them apart to clarify each requirement.

• However, the court warns that the independent existence prong is more difficult to satisfy than the separability requirement.

• The test requires one to remove the surface decorations imaginatively from the uniform and place them in another medium. If the resultant work does not replicate the uniform, then the design does not qualify as a useful article.

Practical Application of the Test

• Applying the test to the cheerleader uniforms, consider whether the designs could be imagined in a frame as a painting or part of a dress sculpture.

• If so, that's enough to overcome both the separability and independent existence challenges.

• Consider also the question of the copyrightable nature of a banana costume.

Banana Costume

• In a case applying the Star Athletica test, the court imagined a banana sculpture that helped the costume pass the useful article test,