Wherethe line between art, which is protected by copyright, and industrial designsshould be drawn is difficult to determine. A recent decisionof the Supreme Court of the United States adds to the discussion.
The Facts
Varsity Brands, Inc. designs, makes andsells cheerleading uniforms. They ownmore than 200 U.S. copyright registrations for the two-dimensional designs thatappear on the surface of their uniforms and other garments. The designs are primarily composed ofcombinations and arrangements of elements that included chevrons, lines,curves, stripes, angles, diagonals, inverted chevrons, coloring and shapes. Thedesigns in issue are reproduced below:
Design 299A Design 299B Design 074 Design 078 Design 0815
The CopyrightAct
In the U.S. the Copyright Actcontains a special rule relating to the copyright subsisting in a pictorial,graphic or sculptural work incorporated into a “useful article”. A “useful article” is defined as an article having an intrinsic utilitarian function that isnot merely to portray the appearance of the article or to conveyinformation. The design of a usefularticle is protected by copyright only if, and only tothe extent that, the design incorporates pictorial, graphic orsculptural features that can be identified separately from and are capable of existing independently of theutilitarian aspects of the article.
Separability
In the U.S. the analysis to determine if a feature can be separatelyidentified from and exists independently of a useful article is referred to as “separability”. The courts below disagreed on whether thedesign of the cheerleading uniforms was eligible for copyright protection asseparable features of the uniforms.
The court broke down the rule into two steps. A design of a useful article is eligible forcopyright protection, if it (1) “can be identified separately from” and (2) is “capableof existing independently of the utilitarian aspects of the article”. The first requirement – separateidentification - was not onerous to apply and satisfied. The independent-existence requirement is normallymore difficult to satisfy. To beprotected, the feature must be able to exist as its own pictorial, graphic orsculptural work once it is imagined apart from theuseful article. To qualify as apictorial, graphic or sculptural work on its own, the feature cannot itself bea useful article.
A regulation had been enacted to assist in applying the rule. The regulation provides that if the sole intrinsicfunction of an article is its utility, that the article is unique andattractively shaped will not qualify it for copyright protection. However, if the shape of a utilitarianarticle incorporates features such as artistic sculpture, carving or pictorialrepresentation which can be identified separately and arecapable of existing independently as a work of art, the features areeligible for protection.
Applying the Rule
Applying the rule and the analytical approach described above to thecheerleading uniforms, the majority of the court concluded that the designssatisfied the two elements of the rule. The designs included features having pictorial, graphic or sculpturalquantities. In addition, if thepresentations of the designs were separated from the uniform they would qualifyas two-dimensional works of art under the U.S. Copyright Act. In fact,Varsity Brands had applied the designs to the different clothing withoutreplicating the uniform.
The majority of the court found that the test was satisfied and dismissedthe appeal. However, two justices of thecourt dissented. The dissenting judgessaid that the designs could not be perceived as works of art separate from theuseful article because the artistic arrangement of the two-dimensional designelements followed the shapes or pattern of the cheerleader uniform. The designs could not be extracted from thetwo-dimensional design of the dresses as a whole.
It has been suggested that this decision is important for clothing designers in the U.S. becauseit offers potential protection for the non-utilitarian design aspect ofclothing, even when the designer included those elements as part of a utilitarianarticle.
The CanadianPosition
Unfortunately for clothing designers, the Canadian Copyright Act is not as helpful. The Canadian Act provides that where copyright subsists in a design applied toa useful article or in an artistic work from which the design is derived andwith the authority of the copyright owner, the article is reproduced in aquantity of more than fifty, it is not infringement of the copyright or themoral rights for anyone to reproduce the design of the article or design notdiffering substantially from the design by making the article or making adrawing or other reproduction in any material form of the article.
A “useful article” means an article that hasa utilitarian function and “utilitarian function”, regarding an article,means a function other than merely serving as a substrate or carrier forartistic or literary matter”. These provisionsapply to designs created after June 8, 1988. In addition, there are exemptions for certain artisticworks from the limitation but they would not apply inthis case.
Since the cheerleader uniforms have a function other than merelyserving as a substrate or carrier for artistic matter, the result would be theopposite of that reached in the U.S. and no copyright protection would beavailable.
Comment
U.S. copyright owners have potentially broader rights then do ownersof copyright in Canada on this point. Inaddition, the problem is made worse by protection in Canada being lostrelatively quickly absent applying for protection under the Industrial Design Act. Unlike the European Union, there is no commonlaw design right to provide protection in the absenceof a registration.
It is difficult to determine whether an article is useful or merelyserves as a substrate or carrier for artistic or a literary matter. For example, a tie pin or cuff links may beuseful jewelry since they hold clothing together, while a brooch or an earringmay be purely ornamental and not useful .
Nothing in the Canadian Actprevents the owner of the design from obtaining protection under the Industrial Design Act. However, expenses are associated with obtainingsuch protection that do not exist for copyright works and there is a one yearbar after which registration is not possible.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a generalnature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
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