“Courts Have Twisted Themselves into Knots”: U.S. Copyright Protection for Applied Art

Ginsburg, Jane C.

In copyright law, the marriage of beauty and utility often proves fraught. Domestic and international lawmakers have struggled to determine whether, and to what extent, copyright should cover works that are both artistic and functional. The U.S. Copyright Act protects a work of applied art “only if, and only to the extent that, its design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” While the policy goal to separate the aesthetic from the functional is clear, courts’ application of the statutory “separability” standard has become so complex and incoherent that the U.S. Supreme Court has agreed to hear an appeal from a case in which the appellate court, echoing sister Circuits, expressed the lament quoted in the title of this Article. The Article will review the genesis and application of the statutory standard, with illustrations from several of the cases, and will offer two conclusions and a legislative proposal.

First, the controversy before the Court does not concern the “design of a useful article,” and therefore does not require the Court to resolve the meaning of “separability.” The Varsity Brands case nonetheless reveals the importance of ascertaining whether the contested design is in fact the design of a “useful article.” A pre-existing pictorial, graphic or sculptural work applied to a useful article is not itself a useful article, and courts need not “twist themselves into knots” endeavoring to parse the meaning of the statutory separability standard. Were the Supreme Court to decline to reach separability on the ground that resolution of the Varsity Brands dispute does not in fact require it, some might be disappointed that the Court would fail to tidy the disarray in the lower courts over separability. But the predicate issue—what is the design of a “useful article”—also warrants more attention than lower courts have given it. Thus, were the Court to leave separability to a case that in fact poses that issue, the Court would still contribute to clarifying this area of copyright law.

Second, the statutory requirements of separate identifiability and independent existence apply to “features” of the design, not to the entire shape of a useful article; attempts (including those ventured by this Article) to extend separability analysis to the useful article’s form as a whole prove unworkable. Accordingly, rather than continuing to struggle with an intractable statutory copyrightability standard, this Article proposes the enlargement of Title 17’s sui generis design protection regime to cover original designs of most useful articles.


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Columbia Journal of Law & the Arts

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October 31, 2017