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Knowing Separability When We See It

According to the majority in Star Athletica v. Varsity Brands, features that are incorporated into a useful article are separable, and thus potentially copyrightable, if they “(1) can be perceived as a two‐ or three‐dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on [their] own or fixed in some other tangible medium of expression—if [they] were imagined separately from the useful article.”

This formulation has not been well received, primarily because it seems to allow copyright protection for many more features of useful articles than was permitted by pre‐Star Athletica doctrine, notwithstanding the wide range of tests previously used and the doctrine’s well‐recognized conceptual incoherence. I share the concern about over‐protection, even though the Supreme Court’s test bears some similarity to the one my co‐authors and I proposed in an amicus brief in the case. As we demonstrated in our brief, Congress intended the useful articles doctrine to distinguish applied art from industrial design, making the former eligible for copyright protection but excluding the latter. Courts, we argued, should operationalize that distinction by deeming features separable only when they “(1) can be extracted from the article, even if doing so would destroy the article, and (2) once extracted, would stand alone as an original pictorial, graphic, or sculptural work (PGS work) that is not a useful article.”