The Unimagined Consequences of Star Athletica’s ‘Imaginative Separability’ Test

Like other opinions in the IP arena, the Supreme Court’s decision in Star Athletica v. Varsity Brands has created a new legal rule with limited practical guidance that will inevitably lead to less predictability in an already-murky area of copyright law.   Its new imaginative separability test for copyright eligibility for useful articles, such as footwear, clothing, and furniture, may be so easy that few designs will fail to qualify.  Yet, ultimately, Star Athletica may have the unimagined consequence of making copyright protection less desirable for qualifying designs. For those who seek the benefits of the Court’s undeniable expansion of potential copyright protection for useful designs, a bit of caution may be the appropriate response.

In Star Athletica, the Court did not choose its copyright eligibility test from among the pre-existing patchwork of conflicting tests created by the Circuits and the Copyright Office.  Instead, it created a new test, expanding eligibility to any useful design feature that  “appears to have pictorial, graphic, or sculptural (PGS) qualities…able to exist as its own PGS … once it is imagined apart from the useful article.” (Emphasis added).  This test, with its new elements of apparent PGS features and imagined separability, has been proffered without detailed guidance regarding its practical application. The result has been an unimagined bonanza for copyright litigators.

One week after Star Athletica, Puma sued Forever 21, alleging copyright infringement of the designs of Puma’s “Creeper” sneaker and  “Bow Slide” sandal.  Among the claimed copyrightable elements of these footwear designs were “a ridged vertical tooling and grainy texture encompassing the thick rubber outer sole” (for the sneaker) and  “a casually knotted fabric bow with pointed endings atop a lined side strap that extends to the base” (for the sandal.)  Post-Star Athletica, copyright owners have also sought protection for the design of a Banana Costume and the color and shape of “the silver spherically-shaped top cover” of an oil vaporizer, along with the “color, material, shape and inclination of [its] outwardly inclined four white translucent walls.” These cases presage what could rapidly become a new growth industry in industrial design litigation under copyright law. Even without the initiation of formal complaints, there are reports of increasing demands for protection of useful articles that would have been highly problematic, at best, under earlier tests.   This increased activity appears a direct result of the apparently easier eligibility standard established in Star Athletica.

Despite a facial similarity to earlier “conceptual similarity” standards, the Court expressly “abandon[ed] the distinction between ‘physical’ and ‘conceptual’ separability.”  This abandonment plainly signals that its “imagination” test is intended as a meaningful alteration of earlier standards. The scope of that alteration, however, has been to create an eligibility standard that few designs are likely to fail.  So long as a PGS feature qualifies as a “PGS work either on its own or when fixed in some other tangible medium … for example, on a painter’s canvas,” it is protectable. (Emphasis added).  Even if the imagined feature replicates the shape of the useful article, it still qualifies for protection as a “two-dimensional work of art that corresponds to the shape of the useful article to which it was applied.”

Despite the use of the term “work,” the Court imposes no obligation of originality to meet its imagined separability test.  To the contrary, the majority expressly declined to consider the role of originality in finding that the collection of chevrons, lines and colorful shapes of the cheerleader uniform design at issue in Star Athletica qualified as eligible subject matter. Even the design features of the sole of an athletic shoe, composed of a combination of ridges and swirls, could readily be duplicated on a canvas, arguably establishing the required “imagined” separability.

The apparent PGS quality test established by the Court would conceivably provide few barriers to such expansive design protection. Although the Court claims that “a shovel as a shovel” could not be protected, it provides no practical guidance for determining which functional features make “a shovel,” or even how to define such functionality.

These gaps raise the strong potential that prior design tests rejected by the Court could be resurrected as evidentiary proof in opposition to claimed functionality.  For example, although the old marketability tests of Kieselstein-Cord and its progeny were rejected for determining separability, such evidence might still be used to challenge claimed functionality of a feature.  While the Court warned that “[n]othing in the statute suggests that copyrightability depends on market surveys,” it did not prohibit the use of such separate evidence in support of apparent PGS status. (Emphasis added).

In light of the Court’s low barrier to eligibility, subsequent disputes will inevitably focus on the originality of a contested design.  Yet even these challenges may be hampered.  The portion of Feist cited by the majority in Footnote One includes the critical recognition that “the originality requirement is not particularly stringent.” Such low originality standards are supported in existing design cases.  In a pre-Star Athletica case, Mannington Woods, the court found that the created pattern of a simulated wood floor design qualified as original. The court specifically relied on evidence regarding the creative process to support its finding of sufficient original selection in creating the design.

The ultimate unimagined consequence of Star Athletica, however, may be the adverse impact that an anticipated increased emphasis on the doctrine of selection (in disguised form) has on the use of copyright to protect designs.  The Court plainly rejected any per se application of the doctrine, warning “approaching the statute with presumptive hostility toward protection for industrial design would undermine Congress’ choice …[in providing] limited copyright protection for certain features of industrial design.”  Yet the Court also recognized the continued vitality of the Baker v. Selden “practicing the art” strictures on any attempts to expand copyright protection in this area.  Thus, its rejection of doctrine of selection issues was not an absolute bar, but instead was merely a demand for a more nuanced approach to those issues.

The Baker strictures combined with the Durham Industries v. Tomy “prevention of unwarranted monopolies” strictures remain potentially powerful limitations on the facially broad protections of Star Athletica. They could be raised either in a searching analysis of the functional nature of a PGS feature or of a design’s originality.

Perhaps even more critically, given the present uncertain status of the application of the Court’s new eligibility standard under Star Athletica, there is a strong possibility that those designs that can meet the decidedly different obligations for design patent protection under 35 USC § 171 may increasingly opt to do so to reduce litigation risks.  It would be a truly unimagined consequence if the lower barrier to eligibility in Star Athletica resulted in a race to the Patent Office to assure continued protection for designers’ creations.


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  • [Avatar for Lost In Norway]
    Lost In Norway
    December 13, 2017 02:39 am

    Thank you for the well written article. I have to admit to a certain perverse pleasure in seeing that the Supreme Court can come up with strange rulings that ignore years of precedent, that open up people to huge amounts of litigation, and force people to imagine what kind of test or definition that is actually needed to go with this ruling. It’s not just patents that the SCOTUS is clueless about.