Two Cheers for Copyright

Some people are cheering and some people are shrugging in the wake of the Supreme Court’s decision last week in Star Athletica v. Varsity Brands.[1] The Court held that designs for Varsity Brands’ cheerleading uniforms may be protected as copyrighted works against unauthorized copying by its upstart rival, Star Athletica.

Cheering, because the decision appears to put wind in the sails of those who would like to see expanded IP protection in the US for fashion designs. That’s not so important to established designers and fashion houses, who have market position, money, and trademark law already working in their favor (though well-known IP aggressors like Louis Vuitton (LV) no doubt value every added IP arrow in the quiver). But less well-established, less wealthy, and less famous designers – FashTech startups, for example; novice and solo and struggling designers; and so forth – may appreciate the shift more. Shoe designer Antonio Brown is currently pursuing a trademark lawsuit against LV, a case that largely hinges on whether his shoe designs are sufficiently well-known to be protected against LV’s copycat products. Copyright law would make that question moot. If the designs are protected copyrightable works and if they are original, then copying is likely forbidden regardless of how well-known they are.

Shrugging, because it’s possible to read the majority opinion as not materially changing the law. Or changing the law on materials, but not so much. Six justices signed on to the result in favor of Varsity Brands; two (Justice Breyer, joined by Justice Kennedy) dissented. The dissent doesn’t stand so much on a grand principle of law. Justice Breyer mostly invests in a different detailed account of why Varsity Brands’ cheerleader uniforms don’t meet the Court’s legal standard – why (in his view) there is no creative copyrightable “work” here, originality aside, that can be legally protected aside from the physical uniforms themselves.

Is this a big deal, and if so, why?

The basic question in the case was (and in design cases in copyright law, is) whether there is a copyrightable “work of authorship,” a creative “thing” that can be protected against copying, to be discerned in the middle of a two-dimensional or three-dimensional object that has some function associated with it. Copyright law is meant to protect “creative” things, or “artistic” things, or “expressive” things. The canonical models are works of literature, music, and film, though the law is much broader than those. Copyright law is not meant to protect functional or utilitarian things – artifacts, objects, technology, and modern science being the canonical examples. Patent law (including design patent law) and parts of trademark law are useful sources of legal protection in those areas.

Legal lines and real-world, practical lines are almost never crystal clear. What sorts of protection for “creative” appearances or features should the law apply to a tangible object that has creative or expressive elements?

US copyright law today gives us the concept of the “PGS work,” short for “pictorial, graphic, or sculptural work,” which may be contained in what the law calls a “useful article.”  The law tells lawyers and courts to figure out what’s useful and what’s a “PGS work” when those things are combined. A “PGS work” may be found inside a “useful article,” or a “PGS work” may simply exist as a standalone, independent thing.

Two sorts of combinations give rise to potentially problematic cases. One combination is relatively easy to analyze: a physical book, or a vinyl phonograph record, or a painter’s canvas is a useful or utilitarian thing that happens to be the medium or bearer of creative content. The law almost never worries about that case, for two reasons. Why? Because the function of the utilitarian object (the physical book) is to supply the reader (or listener, or viewer) with the creative content. Copyright law actually declares that this case presents no line-drawing problems, because the “utility” of the medium does not count – the utility is defined as portraying the content or conveying information. The law’s definition of “useful article” actually excludes this case. If the object is itself “pictorial, graphic, or sculptural” because its purpose is to serve as a medium for information – a painting on canvas, for example — then it is not a “useful article,” and it is copyrightable so long as other copyright requirements are met – mostly, the requirement that the work be original. If the object is not “pictorial, graphic, or sculptural” – for example, it’s a book, printed on paper and bound with glue and cardboard – then we don’t even worry about its potential “PGS” status. That book is simply copyrightable in the first place, so long (again) as it meets the originality requirement and any other relevant copyright law standards.

But the vinyl record is an easy case, just like a physical book is an easy case, not only because the definition of a “PGS” work sets aside physical objects that convey or portray information. (Maps are another example in this category.) It’s also an easy case because it reflects a much longer-standing, much more fundamental principle of copyright law: the distinction between the intangible “work of authorship” that copyright law protects, on the one hand, and the “tangible medium of expression” in which that work has to be embedded for it to be protected in the first place. That physical book that you buy? The author or the book publisher owns the copyright in the content, because that’s the creative or original or expressive material that copyright exists to promote. But as buyer of the book, you own the paper and the glue and the binding. That’s your property right in the artifact; you acquired that property right because you bought it, or someone gave it to you.

That distinction between content and artifact drives all of copyright law, and that distinction was really driving the Supreme Court’s analysis of cheerleader uniforms. When a judge or a copyright lawyer or a member of the cheer community looks at a cheerleader uniform, how is one to separate out the “creative work” (an intangible thing, remember) from the physicality of the actual uniform as someone would wear it?

That’s the second, hard case, because the design of the cheerleader uniform (or the design as applied to the cheerleader uniform – a distinction that is important but not fully addressed in the Court’s opiniions) has both “creative” and “functional” dimensions, each of which has different flavors. The designer of a cheerleader uniform, like any fashion designer, might get creative with respect to fabric, fit, style, pattern, accessory, and cut. Some of those creative choices might go to the cost of the outfit, or to the wearer’s comfort; some might go to status signals (“high fashion” or “street fashion” or “mid-market fashion”); some might go to purpose (“this is a soccer uniform”). Some of those choices are “creative” in the sense that copyright traditionally has captured, because they go to “intangible expression.” Some of those choices are not “creative” in a copyright sense, because they are attributes of the physical artifact – the garment that someone wears, in the field and in the flesh. Sometimes – as in the case of cheerleader uniforms, it appears – it’s both.

And the Supreme Court’s answer to “what to do in the case of both?” seems to be this: The designer may claim copyright in at least some creative elements – if those creative elements may be imagined to have a possible existence other than exclusively with respect to their appearance on the uniforms. That’s the Court’s interpretation of the statutory definition of “PGS works,” which protects the intangible work if it is “separable” from the useful object in which it is embedded. Justice Breyer’s dissent, read with the benefit of a little distance from the details of the facts of the case, seems to agree largely with that legal standard but to apply it differently to the facts of cheer. “What do in the case of both?,” he seems to ask. The designer cannot claim copyright. The Court’s “imagination” test does not differ significantly from the statute’s “separability” test – unless it does.

If this sounds all rather metaphysical and abstract, then you’ve read accurately: It is. In the vast majority of copyright lawsuits, these distinctions aren’t nearly so arcane. In fact, it’s relatively rare to see a copyright case argued or decided on the ground that the copyright claimant does or does not have an intangible “work” that is eligible for consideration as an original work of authorship. The “work-iness” of something is almost always bound up with its “originality,” and “originality,” yeah-or-nay, almost always determines the status of the plaintiff’s legal right. But the fact that the argument is so rare may just go to show us how deeply embedded in the law are the assumptions that works exist as immaterial, conceptual “objects” that can be distinguished from the material forms in which they may be created and distributed, legally as well as creatively, and that despite the vagaries of how they are defined, they matter fundamentally to the framework of copyright law. When those assumptions get tested, as I think that they did in Star Athletica, the legal system doesn’t have a good vocabulary for hashing out the answer. When the Court concludes that a PGS work exists when we can imagine that it exists, the legal rule has the ring of what is sometimes called the Tinkerbell Effect.[2] We see the work if we believe that the work exists.

The practical, on the ground implications of Star Athletica will be difficult to discern for a while. On the one hand, the Court has given lawyers and business a single interpretation of a part of copyright law that for many years was subject to multiple appellate views. Some of those earlier cases are now, unambiguously, overruled. On the other hand, the proof of the legal pudding is always in the eating. We’ll all be watching to see what creative lawyers do with the Supreme Court’s ruling in cases yet to come.

[1] https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf
[2] https://en.wikipedia.org/wiki/Tinkerbell_effect