All for COPYRIGHT Stand Up and Holler! Three Cheers for Star Athletica and the U.S. Supreme Court’s Perceived and Imagined Separately Test

In March 2017 the United States Supreme Court held in Star Athletica L.L.C. v. Varsity Brands Inc. that an artistic feature incorporated into the design of a useful article could be protected by copyright when that feature could be perceived as a two- or three-dimensional work of art separate from the useful article, and imagined separately as a protectable pictorial, graphic, or sculptural work. This two-part test replaces a variety of tests which courts and commentators proposed and applied during the last 40 years. The Star Athletica decision is predicted to be a boon to the fashion and apparel industry, furniture designers, and manufacturers of other useful consumer products. Depending on how leniently the new test is applied, it could result in an increase in the number of useful articles with artistic features which can be conceptually separated from the article’s utilitarian features and protected by copyright. This article discusses the potential impact of Star Athletica and the Court’s new two-part test for separability. The first section summarizes how product shape and design are protected under our intellectual property laws, explains the preference for copyright, and sets forth federal policy allowing the public to copy products that our patent and copyright laws leave in the public domain. It next provides an overview of how copyright protection for artistic features incorporated in useful articles evolved between the Supreme Court’s 1954 decision in Mazer v. Stein and Star Athletica in 2017. After summarizing the majority, concurring, and dissenting opinions in Star Athletica, the article applies the new test in several difficult pre-Star Athletica cases in order assess the decision’s practical impact on a variety of useful articles. This survey of the new test’s application to pre-Star Athletica cases leads to the following conclusions and contentions. Although the Supreme Court’s new test brings uniformity and should be relatively easy to apply in connection with pictorial and graphic works applied on useful articles, the application of the new test to sculptural features incorporated into useful articles will remain challenging for counsel and courts. Infringement claims over useful articles that are similar to those at issue in the tough cases from the pre-Star Athletica era remain difficult. Even though the overall shape of a useful article like a chair, toaster, food processor, car or bike rack can be expressed by an industrial designer in different ways, there should be no copyright protection for any of these articles unless they have a separable feature. The nation’s legislative policy against protection for industrial design should bar copyright when an article’s aesthetic elements are inextricably interwoven with its utilitarian aspects. The risk of applying the Supreme Court’s new test too leniently is the grant of copyright protection to an article’s overall shape, and this extends the copyright monopoly to a useful article’s functional or utilitarian features. Extending copyright protection in this way could result in outcomes which would be contrary to Congress’s steadfast refusal since 1914 to enact a general industrial design protection statute as well the Supreme Court’s statements about importance of the competitive mandate and the public’s right to copy that which our copyright and patent laws leave in the public domain.