Steps in “useful article” analysis

Beta (draft Mar. 4, 2015)

The concept of useful articles is analogous to other doctrines in copyright that bar copyright protection for functional or factual matter, such as the idea/expression doctrine, merger, scenes a faire, and the laundry listing in section 102(b). Why bar copyright for functional matter? Consider that such claims may be more appropriate under patent law, which exists to protect novel, nonobvious, and useful inventions. If we allow copyright in functional matter, then that may allow back-door patents that last life + 70 rather than just 20 years. Concerns over back-door patents were noted in the landmark case of Baker v. Selden in 1880, and those concerns still exist today.

Although the useful article doctrine is analogous to other bars for functional matter, the analysis is very different. First, the bar to protection for useful articles only applies to pictorial, graphic, or sculptural works, which is defined by Section 101 as:

“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural 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.

In turn, “useful article” is defined by Section 101 as:

A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.

We’ll talk about this in class, but for now, let’s consider the order of analysis.

  1. PGS? Is the work a pictorial, graphic, or sculptural work (“PGS”)? If it is not, then the analysis ends here and the work may be protected by copyright unless there is some other bar to copyright (such as idea/expression, etc.).
  2. Useful article? Is the PGS work a useful article or embodied in a useful article? Examples may include clothing, lamps, and other functional items. If it is not, then the analysis ends here and the PGS work may be protected by copyright unless there is some other bar to copyright (such as idea/expression, etc.).
  3. Separable? Can the PGS features “be identified separately from, and are [they] capable of existing independently of, the utilitarian aspects of the article?” The legislative history and caselaw tell us that there are two types of separability:
    1. Physical separability. Can the PGS features be physically separated from the utilitarian aspects? If so, then the PGS work may be protected by copyright unless there is some other bar to copyright (such as idea/expression, etc.).
    2. Conceptual separability. Can the PGS features be conceptually separated from the utilitarian aspects? If so, then the PGS work may be protected by copyright unless there is some other bar to copyright (such as idea/expression, etc.). Note that courts disagree on what test should be used for conceptual separability (see, e.g.Brandir).

Clothing is a classic example of useful articles.

Clothing can easily be described as a PGS work (see step # 1 and the definition of PGS work).

Even though it falls into the PGS category, clothing is also a useful article: it keeps you warm and it covers your body (see step # 2 and the definition of useful article).

In some cases, a design affixed to clothing (such as  a graphic image on a t-shirt) can easily be conceptually separated from the shirt (see step # 3(b)). In such cases, the design on the shirt can be protected. But the shirt itself most likely cannot be protected. Indeed, it is hard to claim copyright in the design of the shirt itself (i.e., its cut and shape).

It is true that the design of a shirt, or a dress, or a suit, may involve significant expression. But under the useful article doctrine, Congress has chosen to bar copyright protection for (1) PGS works (2) that are useful articles (3) lacking separability, even when those works involve significant expression.

So, how to protect clothing through IP? Protection is possible, but in a scattershot fashion (pun intended). One could claim copyright in a design affixed to clothing, so long as it is appropriately separable. One can put a logo on clothing and claim trademark. One might also try to claim trade dress, but Walmart v. Samara Bros. makes such a claim difficult because the claimant would have to prove secondary meaning. Later on, we’ll discuss patents.

As a final thought, the difficulty of providing IP protection to clothing has led to several proposals for sui generis protection for clothing. To date, none of these bills have passed.

Page added Mar. 4, 2015