John G. Roberts, Jr.: We'll hear argument next in Case 15-866, Star Athletica v. Varsity Brands. Mr. Bursch.
John J. Bursch: Thank you, Mr. Chief Justice, and may it please the Court: Congress did not intend to grant a century-long copyright monopoly in cheerleader uniform design. And there are three points that support that conclusion. First, by subjecting two-dimensional pictures and graphics as well as sculptures to Section 101 separability test, Congress made clear that two-dimensional and three-dimensional designs must be analyzed for separability. Second, under Section 101's text, the dispositive questions are twofold: Whether the deign features can be identified separately from the useful article's utilitarian aspects; and second, whether they can exist independently, that is, the design features do not add to or change the useful article's utilitarian --
Ruth Bader Ginsburg: Why, in this case, would we even need to get to any question of separability? What was submitted was a two-dimensional artwork. It may not be like Mondrian, but it is chevrons and other things. They are not submitting the cheerleader's uniform itself. They are not saying anything about the shape of the uniform, the cut of the uniform. They are just saying these zigzag designs -- and you can choose from five different ones that are interchangeable, the design. So why isn't this a -- a case of not -- not part -- the pictorial graphic element is not part of the design of the cheerleader's uniform; it's superimposed on it. It's reproduced on it. It's applied to it.
John J. Bursch: There two reasons, Justice Ginsburg. First, consider the example where you have a designer who designs a military uniform. And on that military uniform, they design the best desert camouflage that's been ever designed in the history of the world. And they submit it to the copyright office, and they don't claim the design in the uniform, they only claim copyright in the design on the uniform. There is no question they would have the copyright in the design, but the courts would still look to see whether that adds to the utilitarian aspects of that uniform such that that design copyright holder could not prevent the military from producing a military uniform that uses that design. That's why it's so important to understand that in Section 101, not only two-dimensional -- or three-dimensional, but also two-dimensional designs are subject to separability. And there's a second reason, Justice Ginsburg. What you're referring to, generally, is kind of the area of fabric design. And a good example of fabric design is the -- the flowers on the fabric in the Folio Impressions case that we reprint on page 7 of our reply brief. And those flowers, you could expand the design, you could contract the design, you can make any article of clothing out of it whatsoever, you could rotate it 45 degrees, and it always works functionally the same. Here, when you're talking about these cheerleader uniform designs, the arrangement of the color blocks and the chevrons and the stripes, if you made it smaller and put it in the center of a uniform, it would no longer have the slimming effects. It wouldn't make the wearer look taller. I mean, if you put it on a hat or a lunch box, it wouldn't have those functions.
Sonia Sotomayor: But they have put it on those other items. That's their whole point, that they've taken the pictorial design and applied it not just to a -- by the way, this is not conceding, I think, by them. They'll talk on their own and tell me -- that this isn't obvious and -- and some of your amici brief seemed to take that position, that if all we're looking at is a picture of this color blocks and stripes, that it may be too obvious to qualify for copyright protection, or not original enough, whatever. But my point is that they already have done that. They've taken the designs and not put it on a cheerleading uniform. They've put it on sweats. They've put it on both tops and bottoms. So what does that do for you?
John J. Bursch: Let me respond to both of those points, that the obvious in the second; first, the other garments. To the extent they're putting it on other garments, if you look closely at those pictures, the design changes. It's not the same design anymore. And to the extent that it remains similar, it's because, for example, the warmup jackets are putting those lines in the same place. So the great example of this is on page 21 of the Fromer and Buccafusco brief, where it is the Stella McCartney dresses on Kate Winslet. And she's got those slimming, dark lines along the sides that change how she is perceived. It makes her shape look different to someone who is looking at her, and the lines on these uniforms do the exact same thing. Similarly, you've got in -- in these uniforms you've got the waist-narrowing Vs on the sides. It creates the optical illusion that the wearer is thinner than they actually are, slimmer. You've got the Müller-Lyer lines --
Sonia Sotomayor: How could you copyright anything under your use of "utility," under your definition of "utility"?
John J. Bursch: Because my definition --
Sonia Sotomayor: Every form -- I suspect in most cases, every form gives something else, an attractiveness, to the purchaser. That's why you have designs of anything, even pictorial designs.
John J. Bursch: We completely agree. And that's why it's so important that you focus on the statutory text, because under the exists-independently requirement that we cite -- this is right from Section 101 -- the feature cannot add to or change the "utilitarian aspects" of the "useful article." So let's say that I've got a T-shirt with a happy face on it, and maybe that makes me look better because I appear happier. Well, that design has the same effect whether I'm wearing it on my shirt, my pants, my hat, or carrying it on my notebook. But here, these designs only work when they're on the article for which they are designed in the exact place where they were designed.
Anthony M. Kennedy: Suppose you have a Picasso painting or Mondrian or Klee, and suppose they're alive and they licensed the use of their picture on a garment and it does just what you say: This Picasso painting or Mondrian just completely captures the shape of the article you want. The fact that it completely captures it means that it can be copied?
John J. Bursch: No, it does not, because the Picasso --
Anthony M. Kennedy: What's the difference between Mondrian or Picasso and these -- and these lines?
John J. Bursch: Because I could take the Picasso and I could just have it in a frame on the chest, or I could expand it to the entire breadth of the uniform. With these designs, it has -- the side lines have to be right here. The Vs have to be right here. The Müller-Lyer line has to be right here. And if you would move it, say rotate that 45 degrees, you can do that with the Picasso and it would still look like a Picasso. If you turned one of these designs 45 degrees, it would no longer make the cheerleader look taller and thinner.
Elena Kagan: How is your argument different from this tuxedo shirt that the government talks about -- it's on page 10 of the government's brief --
John J. Bursch: Yes.
Elena Kagan: -- where the lines really do have to be just in a particular place on the piece of apparel in order for it to make any sense at all and, in there, that was found to be copyrightable? Is that -- is there -- there any difference between the tuxedo shirt and this?
John J. Bursch: Well, there are differences, and I think even the government would tell you, if you asked them that question, that that design wouldn't prevent you from making the tuxedo. And what we're talking about here is making the cheerleader uniform, the actual three-dimensional cheerleader uniform that you wear, and that's the lesson of one Section -- or Section 113.
Elena Kagan: No. But it prevents you -- it prevents you from making this T-shirt with these lines on it in the same way that you're saying nobody should be able to make a short dress --
John J. Bursch: Right. And the point --
Elena Kagan: -- with those particular lines in that particular place.
John J. Bursch: The point is you can have a copyright in that design. We don't contest that Varsity has a copyright in the design. We wouldn't contest in the hypothetical I used with Justice Ginsburg you could have a copyright in the camouflage design. But that copyright doesn't extend to prevent you from making the useful article depicted. That's where the line stops.
John G. Roberts, Jr.: So I guess I'm not sure about your -- does that mean if you can have a copyright in the tuxedo shirt design that somebody couldn't draw a tuxedo shirt because that's copyrighted two-dimensional?
John J. Bursch: Correct, right. You could not replicate the design, but you could make the tuxedo. That's the lesson of Jack Adelman in Section 1.
Elena Kagan: But you're saying you couldn't make the tuxedo shirt -- is that correct? -- or you could?
John J. Bursch: You could not. Let's take it back to the cheerleader uniform, and then bring it back to the text of the statute. We don't contest that Varsity could take these designs and put it on a notebook, put it on a lunchbox, put it on a hat, and no one could copy that. That's clearly within the subject matter of their copyright. What they can't do is prevent someone from making the entire uniform. And the reason the statute requires that is because you have this identified-separately requirement.
Sonia Sotomayor: So are you suing them just for the pictures that are in their catalogue? Is that what you're suing them for?
John J. Bursch: We're not suing them; they're suing us.
Sonia Sotomayor: I'm sorry. You're right. I apologize. So can you get -- you could stop them from using their pictures of their uniforms in their catalogue --
John J. Bursch: No.
Sonia Sotomayor: -- but you can't stop them from selling their --
John J. Bursch: We can't stop them from using their copyright to do anything on a printed page, or even to take these designs and, like I said, put it on a lunchbox or a notebook. But their copyright does not --
Sonia Sotomayor: I transposed the two of you. I apologize.
John J. Bursch: No problem, Justice Sotomayor.
Sonia Sotomayor: Can -- are they stopping you from -- you think you can sell your uniforms anywhere.
John J. Bursch: Correct.
Sonia Sotomayor: So what can't you do? If we don't agree with you, if we agree with them that this is a -- eligible for copyright absent some other disqualification, like obviousness or lack of creativity or whatever else, okay, assume we agree with them; what can they stop you from doing?
John J. Bursch: Well, actually, if you agree with them that they have a copyright, then you're agreeing with us, too, because we all agree they have a copyright in the sketch.
Sonia Sotomayor: Okay.
John J. Bursch: They have a copyright in the image. Our position is that they cannot then take that image and prohibit us from making the actual three-dimensional uniform. And the reason for that under Section 101 is because the design neither can be identified separately, nor can exist independently, which are the statutory requirements of the "utilitarian aspects" of the cheerleader uniform.
Elena Kagan: So but if I could just go back and make sure I understand my question about the tuxedo shirt.
John J. Bursch: Yes.
Elena Kagan: If I have a copyright in the design of the tuxedo shirt, not in a tuxedo --
John J. Bursch: Correct.
Elena Kagan: -- I have a copyright in the design of a tuxedo shirt, can I prevent other people from manufacturing tuxedo shirts?
John J. Bursch: Yes.
Elena Kagan: So why isn't that exactly the same?
John J. Bursch: Because --
Elena Kagan: Because here, I have a design in a copyright dress, and now I'm trying to prevent other people from manufacturing that cheerleader dress with that design.
John J. Bursch: Because then that's like manufacturing the tuxedo. And what Section 113(b) says is that all of the copyright law with respect to this kind of issue, that was --
Elena Kagan: I don't understand why it's like manufacturing a tuxedo. It seems as though it's like manufacturing the thing that I have the design in. I have design in the -- I have a design of a tuxedo shirt, so you can't make a tuxedo shirt. I have a design in a cheerleader dress, so you can't make the cheerleader dress.
John J. Bursch: It has to do with the very careful statutory requirement that they exist independently. What that means is the feature can't add to or change the "utilitarian aspects" of the article. When you're talking about the tuxedo design, it's not adding anything functional to the T-shirt. It's simply putting a design on it. When you're talking about these designs on a cheerleader uniform, it advances a number of utilitarian designs, and let me just tick those off quickly. First, it changes how the wearer is perceived through optical illusion. And that's some of the things that I've been referring to: the slimming lines on the side, the waist-narrowing Vs, the Müller-Lyer lines --
Ruth Bader Ginsburg: Is that the same for all five of the --
John J. Bursch: All five. And I'll tick through this list, and then let's look at the uniforms and I can show you how they do that. The second, like all uniforms, Justice Kagan, it actually identifies the cheerleader as a cheerleader, which was Judge McKeague's point, Judge Cleland's point below. Because if these cheerleaders were wearing wrestling singlets, no one would identify them as cheerleaders. And uniforms have a special identification function. You think about military people who are in a scene mixed up with civilians, and it's the military uniforms that identify them as members of the military that tells you whether the rules of war apply to them or not.
Ruth Bader Ginsburg: I thought conveying information doesn't make an article useful.
John J. Bursch: I don't think that optical illusions are conveying information. I don't think that identification is conveying optical illusion.
Ruth Bader Ginsburg: Well, you said -- you said a function of the cheerleader -- cheerleader's dress is to identify the person as a cheerleader.
John J. Bursch: Yes. That's a second function. So let me first make clear, the optical illusions isn't conveying information; it's actually causing you to see the person differently than they actually are. So at a minimum, that doesn't fall within this. I think with the identification, that allows you to sort people. That's different than conveying information like facts and figures. In addition, Your Honor, the conveyance of information is actually something that has to be considered as part of the exists-independently prong. And you can see this on page 2 of the blue brief where we have Section 101, both the "pictorial graphic" and "sculptural works" definition and the "useful article" definition. And if you start with the "useful article" definition, to determine whether something is a useful article in the first instance, you ask whether it has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. So portraying the appearance and conveying information are utilitarian functions, but if that's the only thing that they do, then it's not a useful article. But once you've decided that a garment like a cheerleader uniform is a useful article, now you turn to the separability test. So now we look at the PGS definition right above the "useful article" definition, and there you are measuring the features against the utilitarian aspects of the article. It doesn't say only the intrinsic utilitarian functions; it's any "utilitarian aspect." So having made the first decision, yes, this garment is a useful article, the statute requires us to consider all the "utilitarian aspects" of the article. And -- and that has to be the case or otherwise, again, military uniforms, their identifying functions, you could have lay people making military uniform designs and barring the government from ever being able to manufacture those uniforms themselves, even if everyone agrees that that is a useful thing. Two other quick things on functionality. These designs also define the uniform's style line and their actual three-dimensional shape. So, Justice Kagan, the -- the zigzag that they have on the bottom of 299A and 299B on page 4 of our -- our blue brief, it's actually defining the shape, and everyone agrees that the shape of a uniform can never be copyrighted. There is no dispute about that. The last thing --
Ruth Bader Ginsburg: I thought that the -- the shape was the same on all of these. We have different designs, five different designs, same shape.
John J. Bursch: No. The -- maybe this would be a good time to turn to the pictures on pages 4 to 5 of the blue brief, because these are the actual copyright deposits involved. And what you can see -- I'll give you a moment to pull up pages 4 and 5 of the blue brief. On page 4, you have two of the deposits. This is 299A on the bottom, 299B on the top, and that zigzag actually defines the shape. And it also has the functional utility of covering up the seams and making that waistband stronger, not allowing it to stretch when the cheerleader puts it on and off. The stripes at the top that define the shape of the collar, again, that's not copyrightable, also cover up seams. That stripe that goes across diagonally right there that separates the white color block from the red color block, those two color blocks have to be stitched together, and what they do is they put those stitches on the outside so that it'll be smooth on the inside where the cheerleader is, and they have to cover up those sales with a stripe. So all these things are -- are functional. So now let's look --
John G. Roberts, Jr.: So do you get a different -- a different result if, instead of stitched, the design is applied?
John J. Bursch: If it's -- it's subliminated, which is something that they -- they've talked about. It's no different with respect to the optical illusion or the identifying function, because if you print the same design in a cheerleader uniform, you'd have to print it exactly the same way they stitch it. Let's focus now on page 5. The bottom drawing there is number 815. This is the red one with the blue stripes that go down the side. It's those blue stripes on the side, just like the Stella McCartney dress, that cause the cheerleader to be perceived as slimmer and more curvy than they actually are.
Sonia Sotomayor: Mr. Bursch, I go back to this point, because I'm a little confused. You started by saying to me you don't want to be stopped from manufacturing this particular uniform.
John J. Bursch: Correct.
Sonia Sotomayor: What do they -- what do you think they have a copyright in?
John J. Bursch: They have a copyright --
Sonia Sotomayor: Or the -- what do you think is eligible for copyright in this picture?
John J. Bursch: I think the copyright eligibility in this picture is the design, so long as it's not being used to prevent the manufacturer of the useful article that it was intended to be -- to appear on. Like I said, they --
Sonia Sotomayor: Isn't that the government's position too?
John J. Bursch: Well, I -- I think they agree with us on that point. If you look at --
Sonia Sotomayor: On that point.
John J. Bursch: Yeah. If you look at page 22 and 23 of their brief, they have our little black dress, and then they have this very design here, number 815, and they explain that if we are right that this design has functionality --
Sonia Sotomayor: So what can't you do, assuming that you accept what they have a copyright in, sort of the -- this thing, but not in stopping the manufacture of the uniform --
John J. Bursch: Yes.
Sonia Sotomayor: -- what do you think their copyright stops you from doing?
John J. Bursch: Everything else. We could not print this on a notebook cover. We couldn't put it on a lunch pail. We couldn't put it on a hat. The -- the only thing it allows us to do is to actually produce the useful article itself. And I -- I'm -- I'm talking so much about cheerleader uniforms. I want to focus back on the text just for a moment because the purpose of having a separability test under Section 101 is to make sure that anything that enhances in any way the functionality of a useful article is not within the subject matter of copyright.
Elena Kagan: Well, I guess that's the question, is it really in any way, because the opposite way of reading this statute is that the "utilitarian aspects" of the article that you're talking about in terms of the separability test?
John J. Bursch: Yes.
Elena Kagan: That -- that those "utilitarian aspects" should be understood to encompass only the utilitarian functions that make something a useful article in the first place, which means that they should be held to exclude things that relate to the -- portraying the appearance of the article or things that relates to conveying information, and that seems to me a pretty good -- I mean, it's a confusing statute, but it seems to me a pretty good holistic understanding of this statute. But that is what this statute is trying to do, is to say there are certain kinds of things that might in a broad sense be considered utilitarian, which has to do with portraying appearance or conveying information, that, for this inquiry, we want you to exclude, that the separability test does not relate to those kinds of things.
John J. Bursch: And, Justice Kagan, that would be a possible policy that Congress could have adopted, but that's not what the statute says. When you're applying the separability test, you're comparing the features to the "utilitarian aspects" of the article, not the intrinsic utilitarian function. Not the ones that made it a useful article, but all "utilitarian aspects" of the article. And -- and if you excluded things like uniform's identifying functions, then someone would be able to prevent the military from producing camouflage uniforms if they got to that design first, and that's exactly the opposite of what Congress intended. You know, in fact, there has been a hundred years of proposed legislation where people have tried --
Elena Kagan: But the reason why camouflage is such a good example for your side is that camouflage actually -- we can understand it as having a utilitarian function that is different from simply conveying information and it is different from simply making something appear a certain way.
John J. Bursch: Yeah.
Elena Kagan: In other words, the utilitarian function that camouflage has is to hide you in the woods.
John J. Bursch: Yes.
Elena Kagan: And so -- so that function would not be excluded by these things.
John J. Bursch: Right, but the utilitarian function of the fabric only works -- of the design only works in conjunction with the useful article, and the same is true here. When you talk about camouflage, it's creating an optical illusion, right? We've got that picture on page 1 of our reply brief, and when you first look at that, you don't immediately see that there is a person standing in that tree because they are camouflaged. Well, in the same way with these cheerleader-uniform designs, it creates the optical illusion that they are taller, that they're slimmer, that they're -- they're curvier. You know, all these functions work exactly the same way as camouflage.
Stephen G. Breyer: Forget the special things. I have a picture of a dress now. The dress is in my mind. I have abstracted it. When I look at those forms in space, it looks like a dress.
John J. Bursch: Yes.
Stephen G. Breyer: All right. Now, you'd say, I take it, that when I've tried to identify the design separately, I've ended up with something that is not capable of existing independently of the -- of the "utilitarian aspects" of the dress, because it looks like a dress. So when Marcel Duchamp has a shovel on the wall and says it's a work of art, he can have a copyright as long as he doesn't try to sue people who make shovels.
John J. Bursch: Exactly.
Stephen G. Breyer: That's it.
John J. Bursch: That is the "identified separately" portion of our argument.
Stephen G. Breyer: That's your point. That's your point.
John J. Bursch: That's one of two points.
Stephen G. Breyer: And then if you fail on that, you have all the specialized arguments about special purposes of cheerleader costumes.
John J. Bursch: Right. Now, part --
Stephen G. Breyer: But the basic argument is what I said; is that right?
John J. Bursch: Well, the part of your --
Stephen G. Breyer: Is that right?
John J. Bursch: Yes, but the -- the part of your description that makes me nervous is when you talk about, I'm just imagining something, because that's the "side-by-side" test that Varsity advances. That you have to just imagine and visualize whether two things can be conceived of --
Stephen G. Breyer: Well, why not? It says, separable from, so we look to see if it's separable from.
John J. Bursch: Right, but what they ignore --
Stephen G. Breyer: What else do we have --
John J. Bursch: But what they ignore --
Stephen G. Breyer: -- but our imagination?
John J. Bursch: But what they ignore is that it has to be independent. That means completely separate on both sides --
Stephen G. Breyer: All right. And this --
John J. Bursch: -- of the "utilitarian aspects." And so -- so then you lose the utility. You know, they would say under their test that -- that here, because I can conceptualize this uniform separate from the fabric, that that's enough. But -- but it's not, because if that design is doing work on the fabric in the place where it was designed to be, then utilitarian function is lost when you remove it. And that's exactly what Section 101 requires, right?
Stephen G. Breyer: True, true.
John J. Bursch: So you have to look not only at the design; you have to look at the article as well. And if the article does less work when that thing is gone, it's not separable. It's protectable. If there are no further questions, I'll reserve the balance of my time.
John G. Roberts, Jr.: Thank you, counsel. Mr. Jay.
William M. Jay: Mr. Chief Justice, and may it please the Court: Congress directed the copyright office and the courts to protect applied art as well as fine art. Applied art is art applied to a useful article. And where that directive comes into the statute is in Section 101 and in the -- in its definition of pictorial graphic and sculptural works, and in the substantive provisions that implement that. Now, there are two key directives there, which the Copyright Office has faithfully implemented over many years in thousands upon thousands of registration decisions for applied art, and two key principles which the Petitioner rejects. Number one is that this is a hypothetical inquiry capable of existing independently of, can be identified. And the second is that courts and the Copyright Office are not required to get into the question of how effective the visual or artistic expression of the copyrighted work is.
John G. Roberts, Jr.: What do you do about the camouflage case?
William M. Jay: We think that camouflage -- the idea of camouflage certainly can't be copyrighted under --
John G. Roberts, Jr.: No, no, no. This is a special design that things are curved one way or another that nobody else had thought of.
William M. Jay: If it's a brand-new, original camouflage pattern --
John G. Roberts, Jr.: Right.
William M. Jay: -- we think -- although, I don't think you need to agree with me about this in order to agree with Varsity in this case. I do think that an original camouflage pattern could be copyrighted and then reproduced on backpacks, iPhone covers, you know, other --
John G. Roberts, Jr.: Well, can it be -- can it be reproduced on a military uniform?
William M. Jay: -- or -- a hunter's garment. I think -- I think it could -- that copyright could extend to that. If -- if that case -- if the camouflage is not copyrightable in that extent, that that's for reasons that, I think exactly as Justice Kagan said to my friend, for reasons having to do with the utility of the camouflage design itself. None of the useful article on which it appears. And in this case, our position is that the graphic designs, the striped chevrons and color blocks, they are separable from the useful article on which they appear because they have --
John G. Roberts, Jr.: Well, if you take them off the useful article, you have whatever color the fabric is, a white dress. If you look at somebody in the white dress, you don't say, oh, that's a cheerleader.
William M. Jay: Well, respectfully, Mr. Chief Justice, you can -- you can have a white cheerleading uniform worn by a cheerleader with the team name and team logo on it. And -- and I think that we've given examples of why that is, in fact --
John G. Roberts, Jr.: From the 1950s.
William M. Jay: Well, you could -- you could have -- you could have -- if you look at page 34 of the Joint Appendix, you'll see in Star's own catalogue examples of uniforms that have neither stripes nor chevrons nor color blocks. Those simply aren't essential to identifying a cheerleader as a cheerleader, even if identifying were a function that's cognizable under the statute, which it is not; ultimately, the design can be taken and put on other articles. It could be, you know, as I said before, an iPhone cover or on the warm-up jackets, warm-ups and jackets that are in -- reproduced in a joint --
John G. Roberts, Jr.: Your friend on the other side concedes that those could be copyrighted. If you take the design of a particular cheerleading uniform and put it on the lunchbox or the computer cover, yes, those can be copyrighted. But because it is the design that makes the dress a cheerleading uniform, you can't separate -- you can't copyright the design applied to that functional article.
William M. Jay: Well, let me resist the premise, of course, then, that this -- this particular design or these five particular designs and striped chevrons and color blocks are what make a cheerleading uniform a cheerleading uniform. But even -- even setting that aside, if you look at Section 113A, which sets out what rights the owner of a copyright in a pictorial or graphic sculptural work has, those rights include the right to make copies of it to embody the design in or on any kind of article, including a useful article. And you know, now, it would be convenient for Star to have a right that just doesn't extend to the product that they want to make. That is not the statute that Congress enacted. You have the owner of a copyright in a visual work, pictorial graphic or sculptural work, has the right to embody it on use --
John G. Roberts, Jr.: I think you're avoiding the question. Yes, you can have a copyright in the pattern; and, yes, you can attach it to a useful article like a lunchbox that's going to have a design. But the question is when the design is what makes that useful article what it is -- the design on a lunchbox doesn't make the lunchbox a lunchbox. It's still a lunchbox. But the design on a cheerleading uniform is what makes it a cheerleading uniform, as opposed to a plain dress.
William M. Jay: Well, I guess I just have to resist the premise that these particular designs are what make a cheerleading uniform a cheerleading uniform.
John G. Roberts, Jr.: But if you -- I understand you are resisting the premise as applied to your case. But is that right as a general test, that if it is the design that makes the article what it is in its utilitarian aspect, that that cannot be copyrighted?
William M. Jay: I think that's exactly the kind of utility that Congress did not write into the statute. That -- that is not the kind of utilitarian function that Congress contemplated. And I think that the best evidence of that is both in the legislative history, meaning the House report, and also in the register's testimony about what the Copyright Office had been doing for decades explaining to Congress in the course of adopting doing the '76 Act, both the register and the House reports say that virtually all two-dimensional designs applied to useful articles are going to remain copyrightable.
John G. Roberts, Jr.: Well, the House report is not the law, right?
William M. Jay: To be sure -- we are not -- we are not saying that it is, but we are saying that if you look, it's perfectly consistent with our view of what a utilitarian aspect of a useful article is. And we also think that, you know, again you -- even if the House report had not said we are intending to codify this Court's decision in Mazer and the Copyright Office practice, this Court, I think, would have presumed that Congress was doing so. Here, I think that presumption is amply justified.
John G. Roberts, Jr.: So you're saying that the cheerleading uniforms do not serve a utilitarian purpose?
William M. Jay: We are saying that they don't serve the utilitarian purpose -- that the purposes my friends attributes to them are not utilitarian aspects of the article under the statute. They are certainly utilitarian. They cover the body. They have a -- provide mobility.
Sonia Sotomayor: Does the university that contracts with you know that they have to buy their uniform for you -- from you for 99 years plus whatever? Every university that you sell these cheerleading uniforms to, do they know that under your copyright, they are stuck with you forever?
William M. Jay: No Justice Sotomayor, that's -- that's not the case.
Sonia Sotomayor: Why not? If you have a copyright on this design, and they have adopted their school colors, orange and black, and I presume some of these are cheerleading uniforms belonging to certain teams, they buy them and they put their names on them, correct?
William M. Jay: Sure. Schools certainly put their names on cheerleading uniforms.
Sonia Sotomayor: So why aren't they stuck with you being their only supplier of their school colors for the rest of their existence?
William M. Jay: There are many, many, many variants available, both copyrighted and uncopyrighted, you know, variants, of cheerleading uniforms, that, you know, Varsity and its competitors can sell. Again, there are examples in the Joint Appendix, you know, of the pages I referred to.
Sonia Sotomayor: So I'm right, once a school -- you design a uniform for a school, that's it, forever?
William M. Jay: Well, respectfully, Justice Sotomayor -- Justice Sotomayor, if we -- if we design this particular combination of elements and we do own the -- we do own a copyright in that combination, but we don't own the idea of an orange and black cheerleader uniform or a black and yellow cheerleader uniform.
Stephen G. Breyer: But the point, the question is, I think, if I -- because I have exactly the same question. And it starts with the premise that everything has a design. Some -- really, a lot of that set can be copyrighted. All women's clothes have design. All men's clothes have design. For a hundred and more-than-that years, the fashion industry has not enjoyed copyright protection. It is an industry on the women's side, I believe, that 225 billion dollars, at least, worth of clothes are sold every year. If suddenly in this case we say that dresses are copyrightable, and they are because every one of them has some design, perhaps we'll double the price of women's clothes. Now if that's -- that's, I think, the thrust of the question, and that is a practical question. I also have a conceptual question which I'd like to ask, but why don't you disabuse me of my notion that we are into monopoly big-time?
William M. Jay: Absolutely, Justice Breyer, because, you know, Justice Sotomayor's question was about the particular patterns.
Stephen G. Breyer: And mine is about all dresses, all clothes, that's all suits.
Sonia Sotomayor: You're killing -- you're killing knock-offs with -- with copyright. You haven't been able to do it with trademark law. You haven't been able to do it with patent designs. We are now going to use copyright law to kill the -- the knockoff industry. I don't know that that's bad. I'm just saying.
William M. Jay: So let me clarify at the -- at the outset, we are not claiming the shape, the cut, or anything like that about -- about these garments. Look at page 60 of our brief, and you will see catalogued all the places where we set out what our registration is in. It's in the two-dimensional art work that appears on the surface.
Stephen G. Breyer: Well, I see it here, and as I look at it and cut away the wings, I have left -- this is page 22 of the ASG's brief -- what I have left is, I have left the design you're after. It is a two-dimensional design that looks to me very much like a dress. It looks very much like a two-dimensional picture of a dress that covers a woman's body. Now, did you -- that's what you want to copyright, that thing --
William M. Jay: Absolutely not, Justice Breyer.
Stephen G. Breyer: It's not. So you have a different design. So we are not talking about -- about figure eight. We are not talking about figure eight.
William M. Jay: Our design in figure eight, if you look at the registration that corresponds to that figure, which you will find in the Joint Appendix at G 46, you will see that the registration is for two-dimensional art work.
Stephen G. Breyer: Of course. It's a two- -- look, I can do a two-dimensional art work that looks like a Rubik's cube. I mean, a two-dimensional can look like a three-dimensional thing.
William M. Jay: No, but it's the two-dimensional artwork that appears on this surface. It's not -- it's not that we did a two-dimensional picture of a dress and said now we own the dress.
Stephen G. Breyer: You didn't say you own the dress.
William M. Jay: Correct.
Stephen G. Breyer: What you said is you own the design of the dress.
William M. Jay: No.
Stephen G. Breyer: I -- now isn't -- you don't?
William M. Jay: No. We say -- we say that we own the design that -- that appears on -- in that case on the dress, but that can -- that can also appear on the warmups. It can also appear on the jacket.
Elena Kagan: Mr. Jay, see --
Stephen G. Breyer: Now, wait. I have a conceptual question. I'm not yet satisfied with your answer to the practical question because I fear that any good designer or lawyer could go and take any dress or suit, just about, and produce a picture that looks very much like that and then sue the companies that use the same dress or style. That's my practical, but this is the conceptual. Since we can take -- since we can take anything -- anything -- to a two-dimensional picture and put it on the wall like Marcel Duchamp, if I decide in your favor, am I not allowing copyright for virtually, assuming other things satisfied, every design of a useful article, the very thing that Congress said they did not want?
William M. Jay: No, absolutely not, because the ability to take the shovel and hang it on the wall does not make the shovel a sculpture because the things that make the "utilitarian aspect" --
Stephen G. Breyer: I'm not talking about the shovel at the moment. I am talking about an artist's ability to take a piece of clothing, which is a utilitarian object, and do a two-dimensional picture of the piece of clothing, which it has some things on it, some chevrons, or nothing. It just looks like a dress. Now on your theory, does that not become copyrightable?
William M. Jay: Only in the surface design, not the folds, not the pleats, not the shape, not the cut. And my friend agreed with me --
Elena Kagan: Mr. Jay, can I --
Samuel A. Alito, Jr.: As to the -- as to the surface design, I have a similar question. But suppose I go to a Museum of Modern Art and I look at a great many famous abstract paintings. I assume that you would say that all of those could be copyrighted, could they not?
William M. Jay: You know, if they are original and meet the other requisites, one assumes so, yes.
Samuel A. Alito, Jr.: And so the design on any fabric, potentially, could be copyrighted, could it not?
William M. Jay: The surface --
Samuel A. Alito, Jr.: If it began as a painting?
William M. Jay: The owner of the copyright in that painting has the right to reproduce it on fabric, on other textiles, you know, or you know, on a -- on a tapestry, on a rug or on wallpaper. Absolutely.
Elena Kagan: And isn't it -- just starting from the premise that Justice Alito suggested, the -- fabric designs are copyrightable; is that correct?
William M. Jay: That's what -- that's what I was trying to say to Justice Breyer --
Elena Kagan: Everybody agrees with that.
William M. Jay: My friend agreed that the fabric design is copyrightable.
Elena Kagan: So it seems to me that the question, right, in this case, is are you going to treat this kind of design just as you would a fabric design?
William M. Jay: That's right.
Elena Kagan: And as I understand Mr. Bursch's point, what Mr. Bursch is saying is, no, you shouldn't, because this kind of design has -- it -- it follows the figure of a human body, essentially. And that's the difference between just a design of like stripes and zigzags and chevrons sort of abstractly, and then one that's put on something that looks like a particular piece of apparel that's meant to fit onto a human body in a particular way. And that seems to me to be the -- the distinction he's making, and I want you to tell me why that distinction, in your view, doesn't make a difference.
William M. Jay: It doesn't make a difference because what he -- he has identified a number of different supposed "utilitarian aspects," and some of which, I think, actually go to the fabric of the dress and were not -- or the uniform. We're not laying claim to that. What he's talking about are the -- are the visual ones, the ones that make the cheerleader look a particular way. And he's saying that you can't copyright those as it applies to a cheerleader uniform because they're especially useful there. Like, you know, that's where they are most effective in conveying this image. We -- that is not what the definition of utilitarian -- the meaning of "utilitarian aspects" encompasses because any work of visual art conveys a -- you know, a visual message or an aesthetic impact. And to have the ones that are most effective be least copyrightable we think doesn't work. And I think that --
Samuel A. Alito, Jr.: What is the difference between that utilitarian argument and the utilitarian argument as applied to camouflage?
William M. Jay: The utilitarian argument as applied to camouflage is that it's -- I mean, as I said to the Chief Justice, we do think that if you see camouflage as portraying the appearance of a -- you know, of a particular thing, you know, or -- or sending a message that you belong in -- in a particular group, that would not be copyright-eligible -- sorry -- that -- that would not be a "utilitarian aspect." If camouflage is not copyright-eligible, it's because it performs something that's different from making you look good in a -- in an anesthetic way. It's because it conceals. You know, ultimately, we think the best answer is that --
Anthony M. Kennedy: But why -- why should that make a difference?
William M. Jay: I mean, the word "utilitarian" is the key word in the definition. And I -- I think maybe using one of the fine arts examples, you know, might help to illustrate this point. If you look in the amicus brief of Professors Buccafusco and Fromer, they have in their illustration number one is the fresco painted on the dome of a church. And they say that's not copyright-eligible because it uses techniques to make the dome look bigger. And now you certainly can't get a copyright in the idea of Trompe-l'oeil art, but you certainly get a copyright in a work of fine art that decorates a room or a rug or a useful -- you know, a useful article, and that makes the room look better or makes the person who wears it look better. And the fact that it's effective, that it makes -- you know, it serves to make that particular church look bigger, that is not a reason to withhold a copyright protection.
John G. Roberts, Jr.: Your -- the argument is not that it makes the room or whatever look better. The argument here is the design makes this look like a cheerleader uniform, which is different and distinctive function in -- than a normal dress.
William M. Jay: Well --
John G. Roberts, Jr.: It's not simply to cover the body. It's to convey a particular message. It shows that you're a member of the cheerleading squad and --
William M. Jay: Well -- well, if that were true, Mr. Chief Justice, they'd have a decent argument under the merger doctrine if there were -- if there were only a few ways of expressing that you are a cheerleader and that you are wearing a cheerleader uniform. You can't get a copyright in an idea. That's 102(b). The merger doctrine, not this utilitarian separability analysis that we've been talking about, the merger doctrine is the primary way in which courts and the Copyright Office can, you know, prevent the owner of a copyright from locking up the ways of expressing a particular idea. So that if, on the facts, there were only a couple ways of looking like a cheerleader, that would be the way to -- to get at that.
Anthony M. Kennedy: Under your -- under your argument, and as you best understand your colleagues' argument, to what extent are there findings of fact involved here? I mean, are we the ones that decide this? You wanted to introduce expert testimony. What was the expert testimony you wanted to introduce?
William M. Jay: The other side wanted to introduce expert testimony, Your Honor. Petitioner told this Court under page 40 of the petition for cert that this is a pure legal question. We agree that, under the correct analysis, it is a pure legal question. We think that's a real vice of the other side's view, that they are asserting, you know, essentially, as a matter of law that certain things are necessary to be a cheerleader; that certain things are -- influenced by function or form.
John G. Roberts, Jr.: Well, you just said that. You said there are a lot of other ways to show that somebody's a cheerleader. And, you know, maybe I started to try to think of them. And, you know, it's not just that they all look alike, it's -- so maybe that's one area which you have testimony, that 95 percent of the cheerleading squads look like this. So maybe there aren't other ways.
William M. Jay: Well, ultimately, the question is -- the question is the hypothetical question whether this design can -- can be identified separately from the articles on which it appears and whether it has -- it has an existence separate from those articles. And I think --
Elena Kagan: And when you say "this design" -- I'm sorry, Mr. Jay.
William M. Jay: No, Your Honor --
Elena Kagan: When you say "this design," just to make sure I understand what you're claiming copyright in, so if I'm looking at page 4 and there's this design with a blue stripe and a white stripe and a red stripe and a white stripe and a blue stripe, could somebody else come along and just add another red stripe to that? And would that -- would you then say you violated our copyright?
William M. Jay: Our copyright is in the arrangement of the design elements.
Elena Kagan: The particular arrangement. So if somebody just added a different, another stripe.
William M. Jay: Well, adding another stripe is -- I -- I hesitate to agree with because usually reproducing a copyrighted work and then adding some other stuff around it is not enough to avoid infringement. But if they changed the colors and -- and reordered the elements, I think they'd have a good argument that it's not infringing.
John G. Roberts, Jr.: Thank you, counsel.
William M. Jay: Thank you, Mr. Chief Justice.
John G. Roberts, Jr.: Mr. Feigin.
Eric J. Feigin: Thank you, Mr. Chief Justice, and may it please the Court: This case is about the reproduction of two-dimensional artwork on a useful article. The question here is fundamentally indistinguishable from the tuxedo shirt that my friend conceded would retain copyright protection, or putting a sports team logo on a T-Shirt that identifies somebody as a team member or a fan.
John G. Roberts, Jr.: Or putting camouflage on a military uniform?
Eric J. Feigin: So, Your Honor, camouflage has been protected by copyright for decades. The Copyright Office's practices on that reflect the view that camouflage is generally eligible, at least for a very thin copyright, in the creative elements of a particular camouflage pattern that aren't dictated by the underlying ideas and scientific principles that make it work.
John G. Roberts, Jr.: As applied to a military uniform.
Eric J. Feigin: So as applied to a military uniform, if someone were asserting a copyright in camouflage in such a manner as to prevent the manufacturer of a uniform from actually manufacturing a uniform that would perform a concealment function, and if concealment were, as Justice Kagan was positing, considered to be separate from the sorts of expressive functions that are traditionally protective by copyright --
John G. Roberts, Jr.: All of which --
Eric J. Feigin: -- then there might infringement --
John G. Roberts, Jr.: -- suggest the answer was yes; right?
Eric J. Feigin: Then there might be some infringement defenses that would apply in that context. But what I think the dispute in this case is really boiling down to is a question of what the utilitarian aspects of the "useful article" are. And I think there are two the Petitioner's identifying: One is conveying the information that someone is a cheerleader, identifying someone as a cheerleader; and the other is affecting the viewer's perception of the wearer's appearance. And I'd like to just explain overall --
Stephen G. Breyer: What about the woman or the man who wishes -- and, indeed, this is a normal reason for wearing clothes -- they are making a statement about themselves? They're saying who they are? The clothes on the hanger do nothing; the clothes on the woman do everything. And that is, I think, what fashion is about.
Elena Kagan: That's so romantic.
Stephen G. Breyer: It always has been in history. Now, isn't that a -- what?
Eric J. Feigin: Well, Your Honor, it is --
Stephen G. Breyer: Why do we wear robes?
Eric J. Feigin: Your Honor, it is clear and it is common ground among the parties and with the Copyright Office that the actual cut and shape of a garment isn't copyrightable.
Stephen G. Breyer: What about Lemley's --
Eric J. Feigin: What we're here about --
Stephen G. Breyer: What about Lemley's test on page 17 of his brief? As I -- as I read it, as I read it and I thought -- and I'm sure you've read it -- and it seemed to me that it does say that a two-dimensional picture of a three-dimensional piece of clothing is not entitled to copyright because it is not a design of anything but a utilitarian object, the clothes, whether they are beautiful clothes, ugly clothes, cheerleader, or anything else.
Eric J. Feigin: Well, Your Honor, I think I -- we disagree that you can't take the aesthetic aspects of the cheerleading uniform and put them in a different medium.
Stephen G. Breyer: But do you agree with Lemley's statement, which, I mean, it's such an -- all the professors are there --
Eric J. Feigin: No. Your Honor --
Stephen G. Breyer: -- and that's why I thought probably you've read it. And it's from all over the country, and I wanted to get your opinion of it.
Eric J. Feigin: Your Honor, as you've characterized the statement, we don't agree with it. We do think that the two-dimensional artwork here is separable from the garment, the cut and shape of which is not copyrightable. Let me just make a couple of points. One is about the act and what it's doing overall. The act overall is drawing a distinction between the kinds of aesthetic communicative expressive functions that are traditionally protected by copyright and the kinds of mechanical, pragmatic, utilitarian functions that are exclusively the domain of a "useful article." And the kinds of functions that Mr. Bursch is talking about here are fundamentally expressive functions. First of all, conveying the information that someone is a cheerleader. When someone is wearing a particular piece of clothing intended to convey that they're a member of a particular group or that they hold a particular belief, that is the kind of expressive function that copyright traditionally protects. And, indeed, there is an express exception in the definition of a "useful article" for conveying information. And I think this is indistinguishable from putting a sports team logo on a T-shirt to identify someone as a Washington Capitals fan, for instance.
Elena Kagan: Well, what do you do in Mr. Bursch's examples of military uniforms or police officer uniforms, something like that?
Eric J. Feigin: So, Your Honor, those also are conveying information. Now, if someone were trying to assert a copyright in the design of a policeman uniform in such a way that it turned out there were, say, only a limited number of ways to identify someone as a policeman and a copyright were being asserted to prevent identification of someone as a policeman, then the defenses that we discuss at pages 39 to 40 of our brief, the "merger" doctrine, the "scènes à faire" doctrine, would apply to prevent what would effectively be monopolization of that idea. So if that were really happening in this case -- and there are some reasons to think that's not actually happening in the cheerleading realm, and we discuss those in our brief -- if that were happening, those defenses would apply.
Ruth Bader Ginsburg: What about the Galiano case? That was the casino uniform. Why is that different from the cheerleader uniform?
Eric J. Feigin: Well, Your Honor, we -- we don't agree with the result in the Galiano case. To the extent there was some sort of unique, two-dimensional elements that some casino wanted to put on its uniforms to identify its employees, that artwork would be copyrightable and -- just like the cheerleading uniforms in this case. I also want to address the argument --
Stephen G. Breyer: Well, before you get away from that, one thing very quick, because maybe I really agree with you.
Eric J. Feigin: I hope so.
Stephen G. Breyer: I had looked at page 22 of your brief at figure 8. And what I had seen there when I took the arms away was a picture of a thing that was a picture of the cut and style and not just a picture of chevrons. And so -- but if that's what it is, then you would agree and I would agree that it's not -- everybody would agree, I guess, it's not copyrightable.
Eric J. Feigin: The point of figure 7 and 8 in our brief, Your Honor, is that everything you see in figure 7 that's also in figure 8 is not copyrightable. That's the cut and shape of the dress. It's the stripes and the coloration, the lines and the design in this particular arrangement.
Stephen G. Breyer: So what happens if when you look at the picture that they submit to the Copyright Office and try to figure out if it's separable what you see is a picture of a dress that goes around a woman which does look like, you know, shape and cut and so forth?
Eric J. Feigin: So they have generally checked a box, as they did here, that says two-dimensional artwork, and the Copyright Office understands all they're trying to protect is the surface imagery of the garment, and that, they'll register. I do want to address this idea that making the viewer look different is somehow the kind of non-expressive function that is associated with the "useful article" -- with a "useful article." And I think that approach would be contrary to congressional intent and completely inadministrable. If you look at page 55 of the House report, you'll see that Congress believed that two-dimensional designs on fabric or on wallpaper would be separable and thus copyrightable. But that wouldn't be true under the approach petitioner is urging. Under that approach, you'd have to look at a particular two-dimensional design on wallpaper and try to assess whether and to what degree it might make the room look bigger or brighter or smaller or darker. I'm not aware of any scientific reliable or consistent way --
Elena Kagan: Well, that seems a problem. But on the other hand, it seems a little bit strange that, you know, take a garment designer who wants to do a design that is slimming. And if -- there are all kinds of structural things you can do that are slimming, and those would not be copyrightable.
Eric J. Feigin: Correct.
Elena Kagan: Then you're saying that the -- that the placement of stripes or color, that is copyrightable, even though the garment designer is really trying to do the same thing through color and through graphic design as he was doing through the shape of the article.
Eric J. Feigin: So, Your Honor, I definitely think there is a spectrum here, but let me try to explain why I think this is on the expressive side of the line, not the non-expressive side of the line. If I were to wear a shirt that said "Please focus on my very nicely toned arms. I've worked very hard on them," I think we'd all understand the message conveyed by that shirt to be expressive and separable from the non-expressive functions that the shirt performs covering my body. Now, what -- the kinds of things that we're talking about here are essentially sending that same message, albeit in a nonverbal, more subconscious way, but they're still fundamentally expressive because they're about how the wearer is trying to portray themselves and their appearance to the world, and that's all that's being copyrighted. That's traditionally within the domain of copyright. It is not copyrighting a particular functionality.
Anthony M. Kennedy: Is the domain of copyright to copyright the way people present themselves to the world?
Eric J. Feigin: The way that someone expresses -- the way that someone expresses an idea to the world -- in this case, the idea would be how they look -- is something that is very akin to traditional expression that's protected by copyright. Again, here we're just talking about two-dimensional artwork. If we were -- if we adopted petitioner's view, the Copyright Office, when it looks at a particular two-dimensional design, would have to figure out what effect it would have in all sorts of contexts on various "useful articles," which would really --
John G. Roberts, Jr.: The whole point of the case is we're not just talking about two-dimensional artwork. We're talking about two-dimensional artwork applied to a -- the fabric in a way that conveys a utilitarian function. It's not just -- your friend concedes that if you want to put a picture of this on a lunchbox or whatever that you have a copyright in that. It's only when you apply it to a garment -- because it is what makes that garment a cheerleading outfit as opposed to somebody else; it serves that utilitarian function -- that you don't have a copyright.
Eric J. Feigin: Your Honor, I think our fundamental disagreement is whether this is actually performing utilitarian functions. If I could just --
John G. Roberts, Jr.: Sure.
Eric J. Feigin: -- finish my response. And I think one -- I think one problem with the approach you've just articulated is it really divorces Section 101 and 113(a) because you could get a copyright in the illustration, and then he would say it's not copyrightable in certain applications, and that doesn't make much sense. Thank you.
John G. Roberts, Jr.: Thank you, counsel. Mr. Bursch, six minutes.
John J. Bursch: Thank you, Mr. Chief Justice. I want to start with that final point that the government makes, that if you had a statement that says look at my arms on your shirt that somehow that would be conveying the same message. That -- that's not what this is doing. No one is saying, look at my arms. Like with camouflage, you're not saying, look, you can't see me. The camouflage is actually doing work when it's put in connection with the garment that it was designed for. That's the point. And on that point, Justice Kagan, I just want to make clear about the functionality that we are claiming here with respect to these designs. It's not just that the lines follow the figure of the human body. It's that they actually make the human body appear to look different than it would if they were not wearing those designs. It's just like camouflage.
Sonia Sotomayor: But the colors do. I mean, the colors are just colors. You can -- what he is saying is you can achieve the same thing with probably most colors and stripes and whatever else is in these designs.
John J. Bursch: Well, they are not claiming copyright in the colors. They -- they can't --
Sonia Sotomayor: No, they are not.
John J. Bursch: -- the arrangement. And I would say even as to color, this Court in the Qualitex case, that was a trademark case, you said that black, the color black has the ability to make a motor look smaller than it actually is. It has a function that makes it ineligible for trademark protection, and, really, that's the same thing that we are talking about here. That you can use graphic design like camouflage --
Sonia Sotomayor: Before we are going much further, you're now saying that any -- you're saying there is no copyright on those things.
John J. Bursch: Oh, no. We are saying --
Sonia Sotomayor: On those pictorial representations --
John J. Bursch: Yes.
Sonia Sotomayor: -- because they can always be applied in a way that has a function.
John J. Bursch: That -- that's not correct, because if you took the sports logo that the government mentioned, that's a perfect example of something that doesn't require the garment for its functionality, because, just like we were discussing earlier, you could take the logo, and you could put it on your hat or your socks or your lunch pail or on your -- your mitten that you hold up when the folks hit the home run, right, because it doesn't rely at all for the article on which it's appeared for its functionality. But here, these designs rely entirely --
Sonia Sotomayor: Certain kinds make you look fatter --
John J. Bursch: Right. Exactly.
Sonia Sotomayor: You believe that --
John J. Bursch: And if --
Sonia Sotomayor: So you're saying none -- even if you find a color rainbow of some weird ilk that could never be copyrighted, because --
John J. Bursch: They -- they could have the copyright in the two-dimensional design, but if there was an application where it would create functionality when paired with a garment, then, yes, their copyright would not extend to prevent --
Sonia Sotomayor: How about the gorilla, a gorilla's hand around your -- one of the pictures in --
John J. Bursch: Right. That -- that's a much closer case than this one. For starters, if we're walking through the analysis, first you look at the identified separately, and, here, when you look at the arrangements of the stripes and the color blocks and the chevrons, you -- you see the cheerleader uniforms. And this is Justice Breyer's point about page 17 of the Lemley brief, right, that the aesthetic elements exist only as part of a cheerleader uniform. There's nothing to extract. That's why this case is different than the gorilla case. So then what you have to ask is if the -- the -- the T-shirt in that case was less functional without the design, and I think that's a -- a close call. But -- but this case is like the camouflage because it's -- it's doing the work of changing the way the body is perceived just the way camouflage changes the way the body is perceived, and just like military uniforms, having an identifying function which is extremely important. So I -- I bring this all back to what the Chief Justice said, isn't it the test, if it's the design that makes the article what it is, then you can't copyright it. And I would say that that's almost exactly right. They can copyright the design and prevent reproduction of the two-dimensional design on the notebook or the lunchbox, but if it's the design that makes the article what it is, you can't manufacture --
Ruth Bader Ginsburg: How do we decide that it's -- how do we decide that it's the design that makes it what it is, as opposed to the cut of the garment, the shape, the pleats or whatever, the tightness of the top? What -- why should we say that -- that this two-dimensional design, which could be put on many things, is what makes this article utilitarian? But what do you do about the shape?
John J. Bursch: Well, here it's more than just the shape. If we go back and look at page --
Ruth Bader Ginsburg: But we -- everybody agrees that the shape, the cut of the dress, that the garment itself is not copyrightable, right?
John J. Bursch: Correct. Everyone agrees.
Ruth Bader Ginsburg: So we are talking about the -- the design.
John J. Bursch: Yes.
Ruth Bader Ginsburg: So why -- why is this close to a fabric design?
John J. Bursch: Because, again, the fabric designs work anywhere, anyplace, no matter how you move them. If we are looking at page 5 and you've got the waist narrowing Vs, which are not the shape of the dress but they -- they make the illusion that the shape of the dress is cutting in to make you slimmer, those only work in that particular place on this article. If you put those on the lunchbox, they don't make the person look narrower. They don't even make the lunchbox look narrower. The designs, the shape of the designs work just like the shape of the garment itself, and -- and that's why this is different than that flowered print that we were talking about in the -- the Folio case. You know, in -- in conclusion, I want to go back to what Justice Breyer and what Justice Sotomayor said: That if you recognize their -- their two-dimensional copyright extends to prohibit the manufacture of actual three-dimensional cheerleader uniforms, then -- then you're giving them 100-year of copyright monopoly, and that school can't go anywhere else. And that's really ironic because you have to keep in mind that --
Elena Kagan: Well, can't the school just go to somebody who puts the zigzag where the chevron was, or the chevron where the zigzag was, or makes it a couple of different colors or adds another stripe? I mean, there's this -- my clerk found -- I'm sorry. Just add that --
John G. Roberts, Jr.: No, you can --
Elena Kagan: I'm done with my question.
John J. Bursch: Yeah, as my -- as my friend on the other side said, it -- it would still be a copyright problem because they would claim that it was too close to the original. And you can see from the last two pictures that we have in our reply brief, that there are only certain places that these stripes and chevrons and color blocks can go, otherwise it doesn't look like a cheerleader uniform anymore. It doesn't identify the person. Certainly doesn't have the slimming effect, the making taller effect, and all the other things that camouflage do. So we respectfully request that you not grant a 100-year copyright monopoly in design.
John G. Roberts, Jr.: Thank you, counsel. The case is submitted.


Earl Warren: Number 6, Number 7, Number 11 and Number 12 on the docket. Secretary of Agriculture versus the United States of America, Interstate Commerce Commission, et al. Mr. Frankel.
Marvin E. Frankel: May it please the Court. These are direct appeals from a decision of a three-judge Court for the District of Utah, which by a divided vote sustained an order of the Interstate Commerce Commission approving certain tariff regulations to the nation's railroads. Under the Commission's order, which I shall describe more fully in a while, the railroads all over the country are free in all circumstances for specified percentages of damage in egg shipments delivered by them. A number of protestants appeared before the Interstate Commerce Commission and opposed these regulations. The protestants included egg shippers all over the country, the Secretary of Agriculture in his role as statutory representative of the agriculture community, the Department of the Army on behalf of the national military establishment, which buy the lot of eggs. The United States with the statutory defendant as it is in all such cases in the court below. However, it aligned itself with the Secretary of Agriculture in urging that the Commission's order and the regulations, the Commission approved were invalid and the United States is here again aligned with the secretary in urging reversal. Now, I'm here to argue on behalf of the secretary and the United States. We filed a joint brief. Three other appellants, egg shippers have filed a separate brief also urging reversal, are substantially, on the grounds we pressed with differences, of course, in the answers and detail. Now, these other appellants have relinquished their time for oral argument and I shall present as fully as I can, the grounds on which we commonly urge reversal. Now, the regulations have approved, issued with the Commission's approval by the railroad appear at --at pages 52 through 54 of Volume 1 of the record. And we are concerned here particularly with section 6 and 7 of these regulations, which are at pages 53 and 54 of the record. These regulations if you can see provide that, “On eggs placed in packages at rail point of origin of the shipment, the railroads are in no case to be liable for damage, where the damage does not exceed 3% of the contents of the packages containing damaged eggs.” Section 7 provides that where the eggs are placed in packages at points elsewhere than a the rail point of origin, the limitations, well, I shouldn't say limitation, that's our issue. The percentage for which the railroads are not to be liable is 5%. In both cases, the 3% and 5% regulations, if carrier liability is shown, that liability is not to be for anything except the excess over the 3% and 5%. So that in all cases, the railroads are not liable for either 3% or 5%. Now, both of these sections contained a -- an exception. And that exception provides that where the shipper has obtained a federal or a state grading certificate showing the amount of damage in the eggs at the rail point of origin the percentage for which the railroad is not to be liable is to be that amount plus 1%. Now, we argued below on a number of grounds that these regulations were unreasonable and unlawful under the Interstate Commerce Act. But our main argument was then and my main argument here will be that these are limitations of liability forbidden by Section 20 (11) of the Interstate Commerce Act, which is it is set out and printed in part at pages 20 and 21 of the Government's brief. In a word, our position has been that regulations, which declare as this do, that no claim shall be allowed for specified percentages of the damage, our position has been that this is clear and unmistakable limitation of liability forbidden, admittedly, limitations of liability are forbidden by Section 20 (11). We have a segment that the --
Harold Burton: Did you say that at least, absolutely forbidden as to half a percent or 1% or any other percent and it -- it doesn't turn on the 3 and the 5?
Marvin E. Frankel: It doesn't turn on the 3 or the 5, Your Honor. Now, I -- I should say we have a second point, less important, but also in itself an independent ground for reversal which is, that the findings of the Commission do not sustain its order approving these regulations in this case. But our main argument is that no such regulations could be valid under Section 20 (11) of the Interstate Commerce Act.
Felix Frankfurter: You mean a class regulation?
Marvin E. Frankel: A class regulation, which covers all shipments in advance without regard to these particular facts of any particular case and the evidence in any particular case. Now, I'm pleased to report that for both of these arguments, it's unnecessary for the Court to wade through the evidence in these too cumbersome volumes of the record. However, the Court will want to have as the concrete setting, which these issues arise had recognized that we are seeking to overturn an administrative determination. And before proceeding with my argument, I shall review in some detail the findings and the conclusions of the Interstate Commerce Commission.
Felix Frankfurter: I'm sorry I have to interrupt you.
Marvin E. Frankel: Yes, sir.
Felix Frankfurter: I Am to infer from that you have used the general question to all that is pending and (Inaudible)
Marvin E. Frankel: That's correct, Your Honor. We are not -- we do not raise the question of substantiality, the sufficiency of the evidence to support the findings. We do --
Felix Frankfurter: I don't need to hear that.
Marvin E. Frankel: We -- well, I -- I had hoped that the outset, then to report of the secretary. We do contend and this is another point, to which you need consider only the Commission's findings. We contend that there was a finding, contained inconsistencies and deficiencies, which makes them insufficient to support this order. But for that, you need only look at those findings in the Commission's report.
Felix Frankfurter: (Inaudible) the Government has made sure that do not alter findings without (Inaudible)
Marvin E. Frankel: That's right, Your Honor, that's right. And for that, I may slip occasionally and make reference to the evidence for illustrative -- illustrative purposes but I think I can barely say that as our positions presented in this Court, we have not raised those questions about the sufficiency of the evidence to support the Commission's findings.
Speaker: And if we don't agree with the Government that we will have read the evidence.
Marvin E. Frankel: Well, I can't visualize the possibility of the Court's not agreeing but I'm trying to imagine it, I would say that we have a serious problem getting you to read the evidence on the basis of the questions we presented to you.
Felix Frankfurter: Is that true at all with the issue (Inaudible)
Marvin E. Frankel: No, I should say that the -- the egg shippers have raised questions as to the sufficiency of the evidence. And I have heard and I appreciate the question because although I don't represent the egg shippers, I should do nothing to damage their case. They may have fairly presented the problems with the evidence and then I do regret my (Inaudible) I hope to make up with by demonstrating that you don't have to read the evidence, anyhow. Now, in the Commission's report, which appears beginning at page 12 of the record and it goes on at page 43, the Commission noted at the outset that beginning after 1941, the railroads had been paying large claims for damage to shell egg shipments. I emphasize that they've paying them, not merely receiving them. But the Commission pointed out in its findings that the problem had not been a serious one prior to World War II. In 1941, the total of damage payments for the entire country was $110,000 a modest figure. Thereafter however, the amount rose steadily and very sharply reaching a peak of some $2,300,000 in 1947. Now, the findings show that there were no changes in the chickens or the eggs or in the practices of the people packing them. The Commission did find that during the war and for sometime thereafter, poor railroad equipment and inexperienced railroad personnel had contributed to this damage. The Commission then noted that this situation, this deficiency in the railroad, had apparently improved at some point after the war. But the high post-war damage claims as contrasted with the modest pre-war claims continues. Now, there is no finding in the Commission's report to indicate why this should have been so, why there was difference between the low pre-war and the high post-war claims for damage to show it.
Felix Frankfurter: Would you at this point in view of another district (Inaudible)
Marvin E. Frankel: Yes, Your Honor. The Commission also found that this increase in the war years and the years after resulted almost entirely from a great increase in claims on the eastern seaboard on eggs coming to the eastern seaboard and particularly to New York. The Commission expressly found that generally there had been no increases in the South or the West and the Southwest. But that in New York, the increase was so dramatic as to account for substantially all of this nationwide increase in claims. Now on that, the shippers testified and this is reviewed in the Commission's findings that the high damage claims in New York could be accounted for by rough handling of cars, poor switching and its loading operations in New York area. The Commission stated that it was unable to determine from this record that this explanation accounted for the situation in New York. The carriers on the other hand suggested that consignees in New York are more fastidious and that this accounted for the high claims in New York. The Commission expressly rejected that attempted explanation as being unsupported by the record. The upshot on this striking difference between the eastern seaboard and the rest of the country is that there is no finding anywhere in the Commission's report as to why this difference exist. No finding despite the fact that they ultimately issued regulations of nationwide applicability over the protests of shippers across the nation. The Commission made another important finding. It found that on trucks, the damaged egg is negligible. For the railroads, the Commission later approved tolerance regulations based through substantial extent on the proposition that most of these tolerance percentages are taken up in damage in the egg when the shipper gives them to the carrier. Now, the Commission found that shipping practices are uniform throughout the country. There is no finding in the Commission's report to explain why then there is negligible damage on trucks with these uniform practice and the supposed handling by the shipper to the carrier of damaged egg. Why there is no damage on trucks was mentioned and this -- our damage on the railroad confined for these in figures. On this, the Commission merely found and it has figures to demonstrate this that in the late years of the last decade, there was a dramatic shift of the egg shipping business from the railroads to the trucks. Now, the findings show that thousands of cases of eggs are shipped to all parts of the country with no damage, arriving in good order. And this, of course, includes New York, people in New York who've eaten soft-boiled eggs know that some eggs get to New York without being broken. As a matter of fact, large amounts of them do. There all are extremely large and impressively large claims for damage in New York. If I mentioned here your point, it seems to us in court that in New York to some degree and in the rest of the country for a very marked degree, eggs are shipped and arrive without damage.
Felix Frankfurter: There are different from the (Inaudible)
Marvin E. Frankel: The records does not show that, Your Honor. The shippers who have switched from the railroads to the trucks are presumably making the same shipments. In fact, shippers from the Far West testified in the record that their shipments from there to New York arrive more quickly by truck than by train which in addition to the lower damage and better service that was one of their reasons for switching to the trucks. Now, the Commission did find, and we don't excuse this finding, that eggs are fragile, that a substantial amount of them are imperfect when they are given to the carrier. And that some are inevitably damaged in transit. At pages 31 and 32 of the record, the Commission reviewed certain studies on this problem. One study by the Department of Agriculture showed that in 115 cars of eggs, there has been 1.4% of stains and dirties, dirty to stained eggs or eggs stained from contact with broken eggs. Dirty eggs are eggs with adhering -- they're usually from the nest and not a kind of imperfection that would be likely to be a part of the damage, a carrier would have to pay for. In these 115 cars, there was found an average of 1.4% stains and dirties, 1.9% checked eggs. Checked eggs are eggs with some imperfection in the shell usually are not visible through the naked eye with the shell membrane intact so that the egg does not leak or in any way spewed its content. 1.4% stains and dirties, 1.9% checked eggs and 1/10th of 1% designated loss in this study by Department of Agriculture of eggs as they were about to be handed to the carrier for shipment. Now, other studies showed varying percentages.Other studies by the Department of Agriculture and the railroads themselves showed percentages of this kind of imperfection ranging from below 1% to upwards of 3% and in some individual cases, 7%. Now, concentrating on this 3.4% study, I should emphasize that over half of this month's total of 3.4% was the 1.9% checks which the Commission pointed out was a kind of imperfection which could not be detected by the kind of inspection performed by the company at destination. These checks were detected by candling and clicking, candling is process of holding an egg before a light to examine its interior quality and its exterior imperfections not visible to the naked eye. Clicking is a process I can't describe expertly that involved bumping eggs together to tell by the sound about imperfections that can't be seen. According to the record, to a trained ear a perfect shell gives a clear and bell-like tone when the eggs are -- come together and click.