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Copyrightable Features in Useful Articles – Working the Problem after Star Athletica

Before Star Athletica vs Varsity Brands was decided, we filed a copyright application for a sculptural work.  A few months later, the Supreme Court published its decision in Star Athletica and the Copyright Office rejected the application on the basis that it “includes functional [i.e., useful article] elements” and “does not contain any copyrightable sculptural authorship needed to sustain a claim to copyright.”  We appealed and filed a request for reconsideration.

The work was a sculpture by the world famous Brazilian artists known as Osgemeos.  It had previously been displayed at an opening at the Lehmann Maupin gallery in New York City.  The work, entitled “Gramophone,” is pictured below.

By way of explanation, the Gramophone sculpture includes two turn tables, a mixing board as well as speakers and in its entirety, it is capable of playing music.  For any DJs reading, this piece is not in commercial or mass production.  There’s only the one.  It’s art.   But, if you want to buy it, you can find out more by clicking here.

Under Star Athletica, the Supreme Court identified a two pronged test for determining the copyrightability of works that included useful articles.  Under the first prong, “the decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.”  If such an element is spotted, then, under the second prong, the decisionmaker must determine whether such element “has the capacity to exist apart from the utilitarian aspects” of the work.

The Copyright Office’s rejection letter correctly cited this two prong test, but somehow concluded that Gramophone contained useful article elements and did not contain any non-useful sculptural design element that could be copyrighted and registered.  Now, please take a look at the picture of the sculpture again and then read on.

Citing Star Athletica in our appeal, we argued that the work contained numerous separable copyrightable elements separable from the utilitarian articles incorporated in the work.  These included the painted faces with three dimensional grills for mouths, the yellow cubes and their arrangement, and the non-functional horns, among other things.  Moreover, we cited the fact that the 2nd Circuit has long held that “a work may be copyrightable even though it is entirely a compilation of unprotectable elements.”  Knitwaves, Inc. v Lollytogs Ltd. (Inc.), 71 F.3d 996, 1004 (2d Cir. 1995) (citing Feist Publications, Inc. v. Rural Tel. Serv. Col., 499 U.S. 340 (1991)).

You can probably guess how this story ends.  Ultimately, the Copyright Office granted registration of the work as a sculpture.  Interestingly, the copyright registration included a note from the Copyright Office stating “Regarding basis for registration: Graphic and sculptural features identified separately from and capable of existing independently of the utilitarian aspects of a useful article.”

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About this Author

Kurt E. Anderson, Intellectual Property Attorney, Giordano Law Firm, Intellectual Property & Technology Corporate,Business and Banking,Business Law, Trademark and Copyright Law, Licensing, Commercial Lending

Kurt's practice focuses on technology and intellectual property. He counsels clients in the following areas: 

  • Licensing and US and international transactional matters (e.g., development agreements, supply and distribution agreements, independent contractor agreements and professional service agreements) in a variety of industries including software, SaaS, open source, pharmaceutical and consumer goods.

  • Trademark and copyright registration and enforcement.

  • Trade secret protection and enforcement.

In the area of business...

Melissa V. Skrocki, Giordano Law Firm, Business Attorney

Melissa focuses her practice on counseling business clients through various transactions with an emphasis on intellectual property issues. Melissa's business law practice includes the representation of clients in contract negotiations, confidentiality agreements, organization and formation of business entities, mergers and acquisitions, shareholder licensure agreements, operating agreements and licensing agreements. Melissa assists women and minority owned business clients with state and federal MWBE certification and renewal.  

In connection with the firm's Intellectual Property and Technology practice, Melissa advises clients with regard to state, federal and international trademark matters such as availability searches, registrations and maintenance of trademarks. She also counsels clients with regard to domain name disputes, privacy and use policies and other Internet related matters. She is also well versed in the intricacies of federal copyright law and intellectual property licensing agreements. 

In the area of Renewable Energy, Melissa represents clients in the sale of ownership interests in renewable energy companies, negotiates commercial financing with SREC secured interests and preparation of operating agreements. She also negotiates co-generation agreements for her clients.

Christopher J. Marino, Giordano Law Firm, Litigation Attorney

Mr. Marino has a bi-coastal litigation practice focusing on general commercial and business disputes, trademark law, copyright law, trade secret law and unfair business practices, and entertainment and media law. He has extensive experience litigating and resolving general commercial and intellectual property disputes, and also provides transactional and business counseling in the areas of copyright, trademark, trade secret, unfair competition and business practices, and general commercial law. Mr. Marino also has experience serving as outside general counsel, advising clients in the area...