Robert Clarida and Robert J. Bernstein ()
What do cheerleading uniforms and laminated faux-maple flooring have in common? And what does either one have to do with copyright law? Read on: Both have recently been the subject of dubious rulings about the copyrightability of useful articles that could, if not reversed, further muddy the already murky doctrinal waters the courts have created around this issue. This column will discuss Varsity Brands, Inc. v. Star Athletica1and Home Legend v. Mannington Mills,2 and will suggest that they misconstrued what the Copyright Act means when it refers to the “utilitarian aspects” of a useful article. Under settled copyright principles, both the cheerleader uniforms in Varsity Brands and the laminated flooring in Home Legend certainly qualify as useful articles, but in analyzing the copyrightability of their decorative elements, these decisions fail to follow basic principles enunciated by the U.S. Supreme Court in the seminal case of Mazer v. Stein.3
From ‘Mazer’ to Copyright Act
The foundation of current law concerning copyright for useful articles is the 1954 Supreme Court decision in Mazer v. Stein. The work in Mazer was a lamp, the base of which incorporated a sculptural figure of a Balinese dancer. The court concluded that the sculptural figure was copyrightable under §5(g) or §5(h) of the Copyright Act of 1909, 17 U.S.C. 1 et seq. (1909), as a “work of art” even though it was part of a useful object which fell outside the scope of copyright law.
Shortly after Mazer, the Copyright Office announced a new policy allowing for copyright in textile designs, which had previously been denied protection if they were embodied in a useful article such as a piece of clothing or furniture.4 That was followed by a Copyright Office regulation, 37 C.F.R. 202.10(c), which for the first time explicitly recognized separability as the key concept in deciding whether a feature of a useful article could be registered for copyright:
[I]f the shape of a utilitarian article incorporates features, such as artistic sculpture, carving or pictorial representation, which can be identified separately and are capable of existing independently as a work of art such features will be eligible for registration (Emphasis added).
In drafting the Copyright Act of 1976, 17 U.S.C. 101 et seq. (1976), Congress codified the Mazer holding by creating two new, interrelated definitions in §101, based largely on the Copyright Office’s post-Mazer separability regulation: (1) Congress defined “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”; (2) Congress broadened the previous category “works of art” to the more inclusive “pictorial, graphic and sculptural” [PGS] works, and specified that “the design of a useful article, as defined in this section, shall be considered a [PGS] work only if, and only to the extent that, such 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.” A proper understanding of the statute and its origins in Mazer reveals a common problem with the separability analyses undertaken in Varsity Brands and Home Legend.
The works at issue in Varsity Brands were cheerleading uniforms, or more precisely, the two-dimensional graphic designs imprinted onto or woven into the fabric of the garments. Plaintiff registered those designs as two-dimensional artwork with the Copyright Office, the defendant copied them, and litigation ensued in the Western District of Tennessee. It has long been held that an item of clothing is a useful article because it keeps people warm, dry, and covered up, but as per the 1954 Copyright Office regulation, a design “imprinted on fabric, such as a rose petal” is copyrightable nonetheless.5 The rose petal design on a dress or a raincoat does not function, in a copyright-precluding sense, it merely decorates, like the Balinese dancer on the lamp in Mazer.
The Varsity Brands court acknowledges this distinction in theory, but fails to recognize that the designs on a cheerleading uniform don’t function either, they merely decorate. Instead, after summarizing the often-inconsistent separability tests employed by various circuits, the court opines in effect that a graphic design on a cheerleading uniform, as opposed to the same design on any other garment, is not copyrightable because “the utilitarian function of a cheerleading uniform is not merely to clothe the body; it is to clothe the body in a way that evokes the concept of cheerleading. Artistic judgment and design are undeniably important in this context, but they are not separable from the utilitarian function of the resulting garment.”6 In other words, the “function” of the uniform includes the purely social function of communicating that the wearer is a cheerleader.
The court continues,
A desk without carved designs on it, although perhaps less aesthetically pleasing, is still a desk. As such, it still serves its utilitarian function and is separate conceptually from the carved designs themselves. In contrast, a blank silhouette of a purported “cheerleading uniform” without team colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular, is not recognizable as a cheerleading uniform. It evokes [*25] an entirely different concept in the viewer’s mind. This is because, as a matter of law, the design of cheerleading uniforms has merged with the utilitarian function they serve.7
The court asserts that a cheerleading uniform is not merely a functional garment, like any other dress; it has a different, additional function solely because of the decoration placed on it. Does it not also follow, under this reasoning, that a “blank silhouette” of a lamp without a Balinese dancer is not a Balinese dancer lamp, and therefore “evokes an entirely different concept in the viewer’s mind” than the decorated lamp in Mazer?
The court’s analysis makes very little sense as copyright law, but the court purports to ground it in “classical philosophy,” citing Plato’s concept that a tree possesses “tree-ness.” Thus “the court’s focus eventually turns to the ‘cheerleading-uniform-ness’ of a fabric garment.”8 For the Varsity Brands court, the decorative elements are functional because the garment would not be recognized as a cheerleading uniform without them. This alleged “function” of possessing “cheerleading-uniform-ness” completely misinterprets what Congress intended when it spoke in §101 of the “utilitarian aspects” of a useful article, in the wake of Mazer.
We offer no opinion as to whether the particular stripes and chevrons at issue in Varsity Brands would be copyrightable if printed on a piece of paper, but if they would be—as the Copyright Office concluded they were—they should not lose that protection because they are applied as decoration on a useful article, be it a lamp, a garment, or an airplane. Copyrightability should depend on authorship and originality, as the Supreme Court held in Feist Publ’ns v. Rural Tel. Serv., 499 U.S. 340 (1991), and not on the medium in which the work, or any particular copy of it, is fixed.
The District of Georgia in Home Legend v. Mannington Mills made a similar error. The work at issue was laminated flooring with a specific “Glazed Maple” design that was “inspired by and intended to emulate the looks of natural wood floors.”9 The flooring consisted of several layers of substrate, pressed together like a sandwich, with a photographic paper “design layer” immediately below the clear protective “wear layer” on top. Mannington created the design layer by starting with raw maple boards, then hand-carving and scraping gouges or “chatter” into the wood and applying stain to make the grain more apparent. It then digitally scanned the boards, printed the resulting images onto paper, and selected which images to include in the overall design.
There was testimony that “Mannington added most of the chatter visible on the Glazed Maple design manually,” and “for the most part, all of that [grain] was applied by hand in some way or another.” The intent was “to create a product that looked like it was hand crafted and time worn,” and the result was “literally a piece of artwork,” “like putting a painting on the floor.”10
Even assuming Mannington’s description to be true for purposes of the motion, the court nonetheless rejected Mannington’s copyright claim for three reasons: “(1) Mannington simply sought to copyright an idea or process; (2) Mannington’s design was not sufficiently original to warrant copyright protection; and (3) Mannington cannot obtain copyright protection for a useful article.”
The “idea or process” argument is unconvincing, because there was no showing that there was only one way, or a very limited number of ways, to depict aged-looking maple planks. That is the basis for denying copyrightability on “idea or process” grounds under §102(b). Rhetoric aside, Mannington sought protection for two-dimensional artwork, not for the idea of maple-like graphics on laminated floors. The “lack of originality” argument, as in Varsity Brands, may or may not be meritorious, depending on how much authorship actually inheres in Mannington’s design. However, the fact that “Mannington, by its own admission, sought to copy the look of rustic wood” and “simply attempted to re-create the look of natural, rustic wood in another medium—artwork” (id. at *31, emphasis added) is beside the point under Feist, if in fact Mannington made a more than merely trivial variation in the source material. In fact, Mannington’s gouged, chattered, faux-aged surface design did not exist in nature and was more than a trivial variation from its source.
The court therefore erred, in the authors’ estimation, in stating that it “makes no difference” that the Mannington graphic bears “little actual resemblance to the original wood grain.” (Id. at 34, n.7) On the issue of lack of originality, that is really all that matters under Feist, as there is no dispute that Mannington created its design independently.
Of greater concern, however, is Home Legend’s application of the useful article doctrine. As in Varsity Brands, the court arrives at the conclusion that “the 2-D artwork element of the laminate flooring simply is not separable from the functional element of the flooring.” In fact, however, the record seems clear that the artwork is a separate paper layer that could be omitted from the functional sandwich of the substrates and wear layer without in any way impairing the floor’s ability to do its job, just as the Balinese dancer could have been removed from the lamp in Mazer without affecting its function of providing light in a dark room. Granted, such a floor would not be perceived as a “Glazed Maple” floor, but it would be a floor and do what a floor has to do. That was enough for the Supreme Court to uphold copyrightability in Mazer and it should be enough here. The Home Legend court effectively holds instead that a Glazed Maple floor has different “utilitarian aspects” than a plain white floor or a faux-oak floor. The Copyright Act cannot support such a conclusion.
It is remarkable that neither Home Legend nor Varsity Brands cites Mazer, which is the starting point for most decisions in this area. Both review the truly impenetrable case law of competing separability “tests” among the U.S. circuit courts, without considering what Congress meant to do by codifying Mazer in the §101 definitions of “useful article” and “pictorial, graphic or sculptural work.” In sum, if a court allows the appearance of a useful article to become part of the definition of the “function” of that object, as these cases do, then no separability can ever exist, the statute is meaningless, and Mazer has been overruled sub silentio. Both cases are on appeal. Unless reversed, copyright attorneys may have to start advising clients that only design patents, with their greater burdens, costs and limitations, and their far shorter term of protection, are an effective means of protecting original works of authorship that happen to be incorporated on or into useful articles.
1. 2014 U.S. Dist. LEXIS 26279 (W.D.Tenn. 2014).
2. 2014 WL 3687334 (N.D.Ga. 2014).
3. 347 U.S. 201 (1954).
4. “Copyright Office Announces New Policy,” American Patent Law Assoc. Bulletin (1954).
5. Varsity Brands at *9, citing NIMMER ON COPYRIGHT §2.08[H]-.
6. 2014 U.S. Dist. LEXIS 26279 at *24.
7. Id. at *24-25.
8. Id. at *2.
9. Id. at *7.
10. Id. at *11, *17.