Image courtesy petful.
A: Copyright law, of course.
There is a new legal decision by the Sixth Circuit Court of Appeals in the United States that brings together cheerleading uniforms and 3D printing. It isn’t a game changer – the decision doesn’t fundamentally rewrite legal rules – but it does shed some light on what is likely to be one of the thorniest issues around 3D printing and intellectual property law: a copyright concept known as severability. The question addressed by the court was seemingly straightforward: are the decorations on cheerleading uniforms a critical part of their functionality? The way the court found an answer to that question will help us understand what types of 3D printed things are – and are not – protected by copyright.
I clicked on the link but now am thinking I don’t want to read all of this: what’s the short version?
Severability is the test that US courts use to figure out which parts of things that are both functional and decorative can be protected by copyright (if any). There is now a new test to determine this in part of the United States. The test itself (arguably the tenth test currently being used) doesn’t bring a lot more clarity to the issue, but is an excuse to walk through how all of this works. Most of this blog post just explains how the court applied the test in this one case.
Still with me? Let’s go!
Background Point 1: Useful vs. Creative
As explained in the Introduction to Rights and Protections post, there is something of a divide between objects that are eligible for copyright protection and objects that are eligible for patent protection. Creative objects can get copyright protection while functional objects can get patent protection. In theory these two categories are mutually exclusive. In practice, some objects can be a little bit of both. Courts use “severability” to try and determine if the mixed elements of a single object can be separated out and protected individually.
Oh, and as a general matter clothing and uniforms are considered a functional object – they keep you warm and not naked.
Background Point 2: Severability
While a lamp is a useful article, the leg sculpture that forms the base of the lamp can be severed (both physically and conceptually) from the lamp’s utilitarian function and given independent copyright protection. Image from flickr user Spider.Dog.
Severability is key to understanding copyright protection in objects that mix functional with non-functional items. As a general rule, functional items do not get copyright protection. However, if a court can sever non-functional elements from functional elements, those non-functional elements can be protected by copyright. This severability can be “physical” (because the parts can be physically separated from each other) or “conceptual” (because the parts can be conceived of separately from each other). All of this stuff is covered in more detail in the What’s the Deal with Copyright and 3D Printing? whitepaper.
Enough – What is This Case About?
The uniforms in question.
Cheerleader uniforms. A company named Varsity Spirit designs and sells cheerleader uniforms. Their uniforms include colors, stripes, chevrons, and other patterns. Star Athletica makes cheerleader uniforms with similar combinations of colors, stripes, chevrons, and other patterns. Varsity accused Star of copying their uniforms and brought a copyright suit against Star. Star responded that it could not infringe on Varisty’s copyright because the patterns on the uniform where not eligible for copyright protection.
Essentially, Star said that Varsity’s patterns were functional parts of the cheerleader uniform. They helped mark the uniform as a cheerleader uniform as opposed to, say, just a pleated skirt and tank top.
That’s what makes this a severability case. Varsity says that the patterns are severable from the utilitarian uniforms and therefore should be eligible for copyright protection. Star says that the patterns are a core part of the uniforms which cannot be severed – and therefore cannot be protected by copyright.
How Did the Court Work Through This?
Severability is easy(ish) to explain but hard to apply in specific circumstances. After noting that there are at least nine (listed on pages 17-19 of the opinion) different tests of severability in use, the court decided to come up with its own 5(ish) part test.
- Part 1: Is the design in question something that could be protected by copyright?
Yes. In this case the court decided that the work Varsity registered with the Copyright Office was a “pictorial, graphic, or sculptural work, ” which is the type of thing protectable by copyright.
- Part 2: Is the design of a useful article?
Again yes. Uniforms are a useful article. Their use is to “cover the body, wick away moisture, and withstand the rigors of athletic movements.”
- Part 3: What are the useful aspects of the article? Importantly, “conveying information” doesn’t count as a use.
The court decided that the designs on the uniforms were primary intended to convey to people that it was a cheerleader uniform. Unfortunately for Star, in this court’s opinion “conveying information” like that doesn’t qualify as a useful purpose. I think it is fair to say that this is not a universally held opinion among courts.
- Part 4: Can the viewer of the design identify the artistic features separately from the useful features?
The court found that it could. The designs on the uniforms did nothing to help cover the body, wick away moisture, or withstand the rigors of athletic movement. As such, they were unrelated to the core functionality of the uniform. This is where the answer to part 3, and how you define the functional elements of the uniform at the start of the analysis, becomes important. Once the court decided that helping to identify a uniform as a cheerleader uniform didn’t count as a useful function, it was hard for them to find any other way.
- Part 5: Can the designs exist independently of the useful object?
This question is really the core of the analysis and, truth be told, the first four parts don’t help answer it very well. The court walked through a bunch of sub-questions to try and answer this part. Ultimately they decided that the same designs could exist independently of the uniform and could, for example, be transferred onto things like jackets or pants (or a framed wall hanging).
As a result of all of this, the court found that the designs were severable from the uniforms and therefore were protectable by copyright.
What Does All of This Have to do with 3D Printing Again?
Can the dog feet on this otherwise functional cup by squidbear be severed and protected independently by copyright?
Although this case was about uniforms, it isn’t hard to imagine applying the same analysis to 3D printed dog cups or tea light holders. Understanding if a 3D printed object is protected by copyright becomes an important question if someone is copying it without permission. If the object is protected by copyright, that copying may be infringement. If the object isn’t protected by copyright, there may not be very much the designer can do. When you are thinking about building on some existing 3D model (or someone has built upon or copied your model) it is important to have a sense of how it may and may not be protected by copyright.
And if you think that this all feels a bit too complicated you are not alone. In a dissent, Justice McKeague reflected upon the multitude of ways that someone could think about severability and declared that “the law in this area is a mess.” He then went on – with some reason – to call on either the Supreme Court or Congress to straighten all of this out. While severability remains important, until either the Supreme Court or Congress clarifies some things, actually applying it is going to remain a challenge.
Super Copyright + Administrative Law Nerd Bonus
The court declined to grant the Copyright Office’s decision to register the works Chevron deference as to whether or not the designs were copyrightable. That’s one more example of how the Copyright Office isn’t really an administrative agency with actual rulemaking authority. If this paragraph is gobbledygook to you, you can safely ignore it and go on with your life.
You didn’t mention another method of protecting your work from infringement–trade secrets. Coca-Cola doesn’t have a copyright or a patent on their recipe (since it isn’t patentable)–they keep the recipe a secret.
That’s one of the reasons I don’t put my work on Thingiverse or MyMiniFactory… I don’t want my stuff to be re-mixed as raw material in someone else’s 3D print, and the best way to maintain control is to keep control of the files.
With Shapeways, I control the material and sizes offered for sale, and if someone wants the product, they can buy it. If they want to buy the design or contract a custom design, they can contact me.
Trade secret law doesn’t really protect copyrightable information. It protects utilitarian things, like business plans, processes, and otherwise patentable items. Copyrights and copyright protection exists from the moment the idea is expressed in some tangible way, whether it’s registered or not. Registration is beneficial for 3 reasons: 1. It establishes prima facie evidence of the truth of what’s stated on the application, thus shifting the burden of proof; 2. it entitles the owner to statutory damages instead of actual damages, the latter of which may amount to very little; and 3. it entitles the owner to attorney’s fees and costs should he or she prevail. However, be aware that a prevailing defendant may be entitled to attorneys’ fees from the copyright owner.
I agree that trade secret protection can be useful and important, but I also agree with Braun that it will probably have limited utility in preventing designs from being remixed. Fortunately, depending on the nature of your designs, copyright law may be able to step in and fill that void. Regardless of legal foundation, I’m glad that Shapeways is giving you more control over how people interact with your designs. Sometimes an ounce of technical design is worth a pound of legal control.
To confuse matters even more, one has to ask if the creative element of Varsity Spirit’s design is not substantially similar to others’ designs as well, i.e., was it a copy in the first place? I haven’t yet read the opinion, so I don’t know if that was considered. Additionally, does the dog foot cup mean no one can create a cup with dog feet? The answer to that question is as clear as mud because copyright does not protect the idea, only the expression of the idea. So a court could very well find that there is no infringement if differently designed dog feet are used. Or, it might, depending on the court. After all, aren’t dog feet a derivative of lion feet, like those used on old bathtubs? Lastly, the copyright office is administrative. It acts more to register the date of a design publication. It’s determination of whether the design is registrable is not the same as whether it’s worthy of protection: The copyright office’s decisions are all too frequently reversed by the courts. The bottom line is: nothing is clear in the realm of copyright protection. (This writer is a retired copyright attorney.)
Don’t forget that you’d have to show actual copying of the cup even if all if the other questions you raise were answered in favor of the plaintiff! Copyright law: always good times.
The court only decided that designs on cheerleader uniforms were categorically protectable under US copyright law. It remanded back to the lower court questions about the protectability of the specific designs, whether on unoriginality grounds or any other grounds. Presumably they’ll fight about substantial similarity as well if it ever gets that far.