v.
`
`VARSITY BRANDS, INC., ET AL.,
`Respondents.
`
`
`
`
`_______________
`
`On Writ of Certiorari
`to the United States Court of Appeals
`for the Sixth Circuit
`_______________
`
`BRIEF OF PROFESSORS JEANNIE SUK GERSEN
`AND C. SCOTT HEMPHILL AS AMICI CURIAE
`IN SUPPORT OF RESPONDENTS
`_______________
`
`
`No. 15-866
`
`IN THE
`Supreme Court of the United States
`_______________
`
`STAR ATHLETICA, L.L.C.,
`
`
`
`
`
`
`Petitioner,
`
`JEANNIE SUK GERSEN
`HARVARD LAW SCHOOL
`1563 Massachusetts Ave.
`Cambridge, MA 02138
`
`C. SCOTT HEMPHILL
`NEW YORK UNIVERSITY
`SCHOOL OF LAW
`40 Washington Sq. South
`New York, NY 10012
`
`
`SCOTT B. WILKENS
` Counsel of Record
`MATTHEW S. HELLMAN
`SAMUEL C. BIRNBAUM*
`JENNER & BLOCK LLP
`1099 New York Ave. NW
`Suite 900
`Washington, DC 20001
`(202) 639-6000
`swilkens@jenner.com
`*Admitted only in New York.
`Practicing under the supervision of the
`partnership of Jenner & Block LLP.
`
`Counsel for Amici Curiae
`September 21, 2016
`
`

`
`i
`QUESTION PRESENTED
`What is the appropriate test to determine when a
`feature of a useful article is protectable under § 101 of
`the Copyright Act?
`
`
`
`
`

`
`ii
`TABLE OF CONTENTS
`
`QUESTION PRESENTED ................................................ i
`
`TABLE OF AUTHORITIES ............................................. iii
`
`INTEREST OF AMICI CURIAE..................................... 1
`
`SUMMARY OF ARGUMENT ........................................... 1
`
`ARGUMENT ......................................................................... 4
`
`I.
`
`II.
`
`General Copyright Principles Apply
`To Useful Articles. ........................................ 4
`
`The Term “Utilitarian Function” In
`Section 101 Refers To Mechanical Or
`Similarly Practical Utility, Not Every
`Possible Benefit. ............................................ 12
`
`III. Expressive Features Are
`Conceptually Separable Where They
`Are Not Dictated By Utilitarian
`Function. ......................................................... 19
`
`IV. The Copyrightability Of Overall
`Design Of Clothing Is Not At Issue
`In This Case.................................................... 28
`
`CONCLUSION ..................................................................... 30
`
`
`
`
`

`
`iii
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`CASES
`
`Baby Buddies, Inc. v. Toys “R” Us, Inc.,
`611 F.3d 1308 (11th Cir. 2010) .................................... 20
`
`Baker v. Selden,
`101 U.S. 99 (1879)............................... 6, 7, 10, 16, 17, 18
`
`Bleistein v. Donaldson Lithographing
`Co.,
`188 U.S. 239 (1903)....................................................... 23
`
`Carol Barnhart Inc. v. Economy Cover
`Corp.,
`773 F.2d 411 (2d Cir. 1985) ................................... 21, 22
`
`Chosun International, Inc. v. Chrisha
`Creations, Ltd.,
`413 F.3d 324 (2d Cir. 2005) .................................... 20-21
`
`Corley v. United States,
`556 U.S. 303 (2009)....................................................... 15
`
`Fashion Originators’ Guild of America,
`Inc. v. FTC,
`312 U.S. 457 (1941)....................................................... 29
`
`Feist Publications, Inc. v. Rural
`Telephone Service Co.,
`449 U.S. 340 (1991)....................................................... 28
`
`

`
`iv
`Gay Toys, Inc. v. Buddy L Corp.,
`522 F. Supp. 622 (E.D. Mich. 1981),
`vacated, 703 F.2d 970 (6th Cir. 1983) .................. 14, 15
`
`Gay Toys, Inc. v. Buddy L Corp.,
`703 F.2d 970 (6th Cir. 1983) ........................................ 15
`
`Kieselstein-Cord v. Accessories by Pearl,
`Inc.,
`632 F.2d 989 (2d Cir. 1980) ................................... 21, 22
`
`Kirtsaeng v. John Wiley & Sons, Inc.,
`133 S. Ct. 1351 (2013) ...................................... 19, 20, 29
`
`Mazer v. Stein,
`347 U.S. 201 (1954)..................................... 7, 8, 9, 17, 25
`
`Peel & Co., Inc. v. The Rug Market,
`238 F.3d 391 (5th Cir. 2001) .................................. 17, 23
`
`Pivot Point International, Inc. v.
`Charlene Products, Inc.,
`372 F.3d 913 (7th Cir. 2004) .................................. 20, 21
`
`Tilley v. TJX Companies,
`345 F.3d 34 (1st Cir. 2003) .......................................... 23
`
`Tufenkian Import/Export Ventures, Inc.
`v. Einstein Moomjy, Inc.,
`338 F.3d 127 (2d Cir. 2003) ................................... 17, 23
`
`Universal Furniture International, Inc.
`v. Collezione Europa USA, Inc.,
`618 F.3d 417 (4th Cir. 2010) (per
`curiam) .......................................................................... 20
`
`
`
`

`
`STATUTES AND RULES
`
`v
`
`17 U.S.C. § 101 ............................... 4, 5, 6, 12, 14, 15, 20, 26
`
`17 U.S.C. § 102(a) ............................................................... 28
`
`37 C.F.R. § 202.8 (1949) .................................................. 8, 9
`
`37 C.F.R. § 202.10(c) (1959) ................................................ 8
`
`OTHER AUTHORITIES
`
`Compendium of U.S. Copyright Office
`Practices § 924.2(B) (3d ed. 2014) ........................ 29, 30
`
`1 P. Goldstein, Copyright § 2.5.3 (3d ed.
`2016 Supplement) ...................................................... 7, 8
`
`H.R. Rep. 94-1476 (1976), reprinted in
`1976 U.S.C.C.A.N. 5659 ........................ 8, 12, 14, 17, 20
`
`C. Scott Hemphill & Jeannie Suk, The
`Fashion Originators’ Guild of
`America: Self-Help at the Edge of IP
`and Antitrust, in Intellectual
`Property at the Edge: The Contested
`Contours of IP 159 (Rochelle C.
`Dreyfus & Jane C. Ginsburg eds.,
`2013) ............................................................................... 29
`
`C. Scott Hemphill & Jeannie Suk, The
`Law, Culture, and Economics of
`Fashion, 61 STAN. L. REV. 1147 (2009) .................... 28
`
`1 M. Nimmer & D. Nimmer, Copyright
`(2016) ................................................................... 9, 10, 22
`
`
`
`

`
`vi
`Oxford English Dictionary (1933) ................................... 13
`
`2 W. Patry, Copyright (2016) ....................... 7, 8, 15, 21, 22
`
`Webster’s Third New International
`Dictionary (1966) ......................................................... 13
`
`
`
`
`
`

`
`1
`INTEREST OF AMICI CURIAE1
`Amici are law professors at universities in the
`United States and
`teach, research, and write
`extensively on intellectual property law, including
`copyright law. They have no personal interest in the
`outcome of this case. Instead, they have a professional
`interest
`in ensuring that the copyright
`law
`is
`interpreted in a consistent, well-reasoned manner, with
`close adherence to the statutory text and this Court’s
`foundational copyright jurisprudence. Amici are:
`Jeannie Suk Gersen
`John H. Watson, Jr. Professor of Law
`Harvard Law School
`C. Scott Hemphill
`Professor of Law
`New York University School of Law
`Institutional affiliations are given for identification
`purposes only.
`SUMMARY OF ARGUMENT
`The question presented by this case goes to the
`heart of copyright law and implicates the Copyright
`Act’s guiding definitions as well as this Court’s
`foundational precedents reaching back to the 1870s.
`In the Copyright Act, Congress carefully addressed
`the copyrightability of works of authorship that possess
`utilitarian functions. In defining “useful article” in
`
`1 Pursuant to Rule 37.6, amici affirm that no counsel for a party
`authored this brief in whole or in part and that no person other
`than amici and their counsel made a monetary contribution to its
`preparation or submission. Petitioner’s and Respondents’ consent
`to the filing of amicus briefs is filed with the Clerk.
`
`
`
`

`
`2
`section 101 of the Copyright Act, Congress made clear
`that the design of a useful article, whether two-
`dimensional or three-dimensional, is protectable as a
`pictorial, graphic, or sculptural work, as long as its
`pictorial, graphic, or sculptural features are separable
`from its utilitarian aspects. This definition codified this
`Court’s decisions in Baker v. Selden and Mazer v. Stein,
`which, among other things, rejected any notion that
`useful articles are categorically excluded
`from
`copyright. Section 101 thus closely implements the
`understanding that existed prior to the 1976 Copyright
`Act. “Useful articles” do not stand apart from the rest
`of copyright as a carved out exception to protectability,
`but rather,
`like all other works, are subject to
`copyright’s general conditions of protectability.
`In contrast, Petitioner and its amici seek to carve
`out garment designs as a special category of works that
`are unprotectable. In doing so, Petitioner and its amici
`would undermine the coherence of copyright law and
`would render unprotectable not only garment designs
`but a far broader swath of works, including many that
`have long been protected. That result is entirely
`unwarranted.
`Petitioner and its amici assert that the term
`“utilitarian function” in section 101’s definition of
`“useful article” means something extremely broad.
`That interpretation cannot be correct, because it has
`the practical effect of excluding useful articles from
`copyright, a result that Baker v. Selden and Mazer v.
`Stein squarely
`foreclose.
` Properly understood,
`“utilitarian” in section 101 refers to mechanical or
`similarly practical utility or usefulness. It does not
`refer to usefulness for aesthetic, decorative, or cultural
`purposes, such as making someone look attractive or
`
`
`
`

`
`3
`stylish. Those kinds of functions of a work are
`paradigmatic non-utilitarian functions, even though it is
`possible to characterize those functions of a work in
`some very broad sense as “useful.” Treating a work’s
`decorative function as “utilitarian” would make almost
`every pictorial, graphic, or sculptural work utilitarian
`and thus unprotectable, because almost every such
`work has that kind of decorative function. That
`understanding of “utilitarian” would not only lead to
`absurd results, but would also contradict the text and
`structure of section 101 and make a hash of the statute.
`The dispositive question in this case is whether the
`pictorial, graphic, or sculptural features of a particular
`piece of clothing are separable from its utilitarian
`aspects. For the vast majority of clothing, such
`features are not separable because, in general, most
`clothing
`designs
`are
`dictated
`by
`utilitarian
`considerations. However, to the extent that the design
`may have pictorial, graphic, or sculptural features that
`are separable from utilitarian aspects, then those
`features are protectable. The instant amici propose
`the following test for separability, which is consistent
`with the statutory text and this Court’s precedents:
`The design of a useful article is protectable if it is not
`dictated by, or necessary to, utilitarian or functional
`considerations. The Second Circuit has employed this
`analytical approach in several important cases, and it is
`the only
`test consistent with copyright
`law’s
`longstanding principle that mere functional influences
`do not disqualify a work from copyright protection.
`
`
`
`

`
`I.
`
`4
`ARGUMENT
`General Copyright Principles Apply To Useful
`Articles.
`The area of copyright law dealing with “useful
`articles” suffers
`from two common and related
`misperceptions that run against the text of the
`Copyright Act: that useful articles are categorically
`excluded from copyright, and that the separability
`analysis
`is categorically more hostile to three-
`dimensional useful articles than to two-dimensional
`useful articles. These categorical ways of reasoning
`overcomplicate the Copyright Act, and have caused
`many lower courts to proliferate confusing, varied, and
`inconsistent tests that fail to follow the statute’s simple
`logic.
`In the Copyright Act, Congress carefully addressed
`the copyrightability of works of authorship that possess
`utilitarian functions. The Court should clarify that the
`statute’s separability requirement for the protectability
`of “useful articles,” whether those articles are two-
`dimensional or
`three-dimensional,
`is a
`logical
`manifestation of copyright’s
`longstanding general
`approach to protectable works of authorship that
`possess utilitarian functions.
`Whether a two-dimensional or three-dimensional
`“useful article” is protected by copyright is governed
`by section 101 of the Copyright Act, which provides in
`relevant part:
`sculptural
`and
`“Pictorial, graphic,
`works”
`include two-dimensional and
`three-dimensional works
`of
`fine,
`graphic, and applied art, photographs,
`prints and art reproductions, maps,
`
`
`
`

`
`5
`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.
`. . .
`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.”
`17 U.S.C. § 101.
`On its face, this language makes clear that “the
`design of a useful article,” whether “two-dimensional”
`or “three-dimensional,” is protectable as a “pictorial,
`graphic, or sculptural work,” and explains the
`circumstances in which it is protectable: “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
`
`
`
`

`
`6
`independently of, the utilitarian aspects of the article.”
`17 U.S.C. § 101.
`The Supreme Court’s landmark decision in Baker v.
`Selden, 101 U.S. 99 (1879), made clear well over a
`century ago that copyright may protect a work of
`authorship that has a utilitarian function, while not
`protecting the utilitarian function of that work. Thus,
`there simply has never been a blanket exclusion from
`copyright for works that have a utilitarian function. In
`Baker v. Selden, there was no question that a book that
`had the function of explaining a utilitarian system of
`bookkeeping was protectable, while
`the actual
`utilitarian system of bookkeeping explained in the book
`was not protectable. 101 U.S. at 104 (“The use of the
`art is a totally different thing from a publication of the
`book explaining it. The copyright of a book on book-
`keeping cannot secure the exclusive right to make, sell,
`and use account-books prepared upon the plan set forth
`in such book.”). As the Court explained:
`But there is a clear distinction between
`the book, as such, and the art which it is
`intended to
`illustrate.
` The mere
`statement of the proposition
`is so
`evident, that it requires hardly any
`argument to support it. The same
`distinction may be predicated of every
`other art as well as that of book-
`keeping. A treatise on the composition
`and use of medicines, be they old or
`new; on the construction and use of
`ploughs, or watches, or churns; or on the
`mixture and application of colors for
`painting or dyeing; or on the mode of
`drawing lines to produce the effect of
`
`
`
`

`
`7
`perspective, —would be the subject of
`copyright; but no one would contend
`that the copyright of the treatise would
`give the exclusive right to the art or
`manufacture described therein.
`Id. at 102.
`Following Baker v. Selden, works that possess
`utilitarian functions have long been understood to be
`copyrightable, so long as they satisfy the requirements
`specified by copyright law. The question then, has been
`how to determine to what extent works that possess
`utilitarian functions are copyrightable.
`The 1976 Copyright Act, which set out the
`requirement that to be protectable, a useful article’s
`design must have pictorial, graphic, or sculptural
`features that are separable from its utilitarian aspects,
`is widely thought to have given effect to the Copyright
`Office’s interpretation of pre-1976 law, including its
`interpretation of this Court’s decision in Mazer v. Stein,
`347 U.S. 201 (1954), which is discussed below. 1 P.
`Goldstein, Copyright § 2.5.3, p. 2:70 (3d ed. 2016
`Supplement) (hereinafter “Goldstein”); 2 W. Patry,
`Copyright § 3:134, p. 3-415 (2016) (hereinafter “Patry”)
`(stating that the “useful article” language in section 101
`“is an amalgam of the 1948 and 1959 [Copyright Office
`regulations]”).
`The 1976 Copyright Act’s legislative history makes
`this explicit. The House Report indicates that the first
`clause of section 101’s definition of “‘pictorial, graphic,
`and sculptural works,’” which includes “‘works of
`artistic craftsmanship insofar as their form but not
`their mechanical or utilitarian aspects are concerned,’”
`tracks the Copyright Office’s 1949 regulation relied
`
`
`
`

`
`8
`upon in Mazer. H.R. Rep. No. 94-1476, at 54 (1976)
`(“House Report”), reprinted in 1976 U.S.C.C.A.N. 5659,
`5667; 1 Goldstein § 2.5.3, p. 2:70.2 The second clause,
`requiring that the protected subject matter be
`separable from the useful article’s utilitarian aspects,
`tracks
`the Copyright Office’s 1959
`regulation
`interpreting Mazer.
` House Report, at 54-55; 1
`Goldstein § 2.5.3, p. 2:70.3
`In Mazer v. Stein, the Court examined whether a
`valid copyright existed in “statuettes of male and
`female dancing figures . . . . used as bases for table
`lamps, with electric wiring, sockets and lamp shades
`attached.” 347 U.S. at 202. In answering this question
`in the affirmative, the Court rejected any notion that
`useful articles—in Mazer v. Stein, electric lamp bases—
`are categorically excluded from copyright. Id. at 214
`(“The conclusion that the statues here in issue may be
`copyrighted goes far to solve the question whether
`their intended reproduction as lamp stands bars or
`invalidates their registration.”); id. at 218 (“We find
`nothing
`in the copyright statute to support the
`argument that the intended use or use in industry of an
`
`2 That regulation, published at 37 C.F.R. § 202.8 (1949), provided
`that “[w]orks of art . . . includes works of artistic craftsmanship, in
`so far as their form but not their mechanical or utilitarian aspects
`are concerned, such as artistic jewelry, enamels, glassware, and
`tapestries, as well as all works belonging to the fine arts, such as
`paintings, drawings and sculpture. . . .” Mazer, 347 U.S. at 212-13.
`3 That regulation, codified at 37 C.F.R. § 202.10(c) (1959), provided
`that “[i]f the shape of a utilitarian article incorporates features,
`such as artistic sculpture, carving, or pictorial representation,
`which can be identified separately and are capable of existing
`independently as a work of art,” those features are protected by
`copyright. 2 Patry § 3:133, p. 3-402.
`
`
`
`

`
`9
`article eligible for copyright bars or invalidates its
`registration. We do not read such a limitation into the
`copyright law.”).
`In reaching its holding, the Court analyzed the
`development of copyright coverage from the founding
`of the Republic through the early 1950s, and concluded
`that “[t]he successive acts, the legislative history of the
`1909 Act and the practice of the Copyright Office unite
`to show that ‘works of art’ and ‘reproductions of works
`of art’ are terms that were intended by Congress to
`include the authority to copyright these statuettes.”4
`Mazer, 347 U.S. at 213-14. The Court relied heavily on
`Baker v. Selden, “reaffirming the gist of the holding in
`Baker and . . . the idea—first articulated in Baker—
`that useful works do not ipso facto become ineligible for
`copyright protection.” 1 M. Nimmer & D. Nimmer,
`Copyright § 2A.05[B][1], p. 2A-26 (2016) (hereinafter
`“Nimmer”) (conceding that prior editions of the
`Nimmer treatise had erroneously “interpreted Mazer
`to narrow the scope of the Court’s holding in Baker”).
`In short, the 1976 Copyright Act relied heavily on
`pre-1976 Copyright Office regulations, which in turn
`relied heavily on Mazer v. Stein and Baker v. Selden.
`Section 101’s specification of the circumstances under
`which “the design of a useful article” is protectable
`should thus be understood as a careful codification of
`Baker v. Selden’s conclusion: that the protection of a
`particular copyrightable work of authorship does not
`
`4 Indeed, the Court stated that “[a]s a standard we can hardly do
`better than the words of the present [1949] Regulation, naming the
`things that appertain to the arts.” 347 U.S. at 214 (citation
`omitted). For the text of that regulation, published at 37 C.F.R.
`§ 202.8 (1949), see supra note 2.
`
`
`
`

`
`10
`also extend to the utilitarian function of that very work.
`Baker, 101 U.S. at 102, 104; 1 Nimmer, § 2A.06, p. 2A-
`27 - 2A-28 (“much of the Court’s holding in Baker v.
`Selden has since been codified in the current Act”).
`Some assume that section 101 somehow struck a death
`blow to the protectability of useful articles, see
`Petitioner’s Brief (“Pet. Br.”) at 24, but that is
`incorrect. Section 101 instead indicates the features of
`a useful article’s design that are protectable, and in so
`doing, closely
`implements the understanding that
`existed prior to the 1976 Act, of copyright in works of
`authorship that possess a utilitarian function.
`In light of the foregoing, it is also incorrect to think
`that the term “utilitarian function” in section 101’s
`definition of
`“useful article” means
`something
`extremely broad and different from the very utilitarian
`function that Baker v. Selden and Mazer v. Stein meant
`to exclude
`from protectability
`in an otherwise
`copyrightable work of authorship. E.g., Pet. Br. at 22,
`38-39, 44-45 (defining utilitarian to include all of an
`article’s “inherent, essential, or natural functions”;
`“[e]ven the slightest utilitarian function results in no
`copyright
`for the
`feature”); Brief of Professors
`Christopher Buccafusco and Jeanne Fromer as Amici
`Curiae in Support of Petitioner (hereinafter “Profs.
`Buccafusco & Fromer Amicus Br.”) at 11 (defining
`utilitarian to include any “designs or aspects of designs
`. . . whose value is dependent on their effect on other
`objects”; concluding under this very broad definition
`that “[t]o the extent that aspects of garment design
`affect the way in which the wearer is perceived, they
`are utilitarian” (emphasis in original)). Interpreting
`“utilitarian” in such an expansive fashion has the
`practical effect of excluding “useful articles” from
`
`
`
`

`
`11
`copyright, a result that Baker v. Selden and Mazer v.
`Stein squarely foreclose. To the contrary, copyright
`protects a design of a useful article to the extent that
`its pictorial, graphic, and sculptural features can be
`separated from its utilitarian aspects.
`In using the term “utilitarian aspects of the article,”
`section 101 means the same thing in the context of
`“useful articles” that it means in any other copyright
`context involving works of authorship that also have a
`utilitarian function. In other words, “useful articles” do
`not stand apart from the rest of copyright as a carved
`out exception to protectability, but rather, like all other
`works, are subject to copyright’s general conditions of
`protectability. Thus, if Baker v. Selden is understood
`to mean that utilitarian aspects of a work of authorship
`are not protectable, then similarly, in the subset of
`works of authorship that are considered “useful
`articles,” utilitarian aspects of such useful articles are
`not protectable, but their pictorial, graphic, and
`sculptural features are.
`As this case makes plain, the question of the
`separability of a useful article’s utilitarian aspects from
`its pictorial, graphic, and sculptural features has led
`courts, litigants, amici, and commentators to adopt a
`dizzying array of standards and tests for separability.
`Brief of the Intellectual Property Law Association of
`Chicago as Amicus Curiae in Support of Neither Party
`at 8-11 (describing eleven different separability tests);
`Brief of Amicus Curiae New York Intellectual
`Property Law Association in Support of Neither Party
`at 13-17 (describing ten different separability tests).
`Petitioner’s own proposed test includes four distinct
`steps and would cause a host of problems, discussed in
`Part III infra. Pet. Br. at 38-39. These many different
`
`
`
`

`
`12
`approaches to separability overcomplicate a simple
`statutory scheme. As this brief will explain, the proper
`test for “separability” for two-dimensional and three-
`dimensional works flows from and must respect
`copyright law’s foundational principle that functional
`influences do not disqualify a work from copyright
`protection. The proper test for separability, set forth in
`Part III infra, therefore relies on the concept of
`conceptual separability, which is endorsed in the
`legislative history to the 1976 Copyright Act. See
`House Report, at 55.
`II.
`The Term “Utilitarian Function” In Section
`101 Refers To Mechanical Or Similarly
`Practical Utility, Not Every Possible Benefit.
`“Utilitarian” in section 101 refers to mechanical or
`similarly practical utility or usefulness. It does not
`refer to usefulness for aesthetic, decorative, or cultural
`purposes. The statutory text expressly distinguishes
`the “form” or other aesthetic aspects of a “work[] of
`artistic craftsmanship” from the work’s “mechanical or
`utilitarian aspects.” 17 U.S.C. § 101 (emphasis added).
`Thus, for example, “utilitarian” does not mean
`usefulness for making something or someone look
`attractive or beautiful, or showing that they are stylish.
`A painting may be useful for making a room look
`beautiful, or communicating that the owner is an
`admirer of abstract expressionism, but that does not
`make the painting “utilitarian.” Just the opposite is
`true.
` Those kinds of functions of a work are
`paradigmatic non-utilitarian functions, even though it is
`possible to characterize those functions of the work as
`“useful.”
`
`
`
`

`
`13
`“utilitarian”
`of
`definitions
`Contemporaneous
`confirm that Congress was not referring to a work’s
`aesthetic, decorative, or cultural purposes. Webster’s
`Third New International Dictionary 2525
`(1966)
`(defining “utilitarian” as “characterized by or aiming at
`utility as distinguished from beauty or ornament;”
`defining “utility” as “the quality or state of being
`useful” or “something useful or designed primarily for
`use”); 11 Oxford English Dictionary 484 (1933) (defining
`“utilitarian” as “[o]f or pertaining to utility; relating to
`mere material interests,” “[i]n quasi-depreciative use:
`Having regard to mere utility rather than beauty,
`amenity, etc.,” and “preferring mere utility to beauty or
`amenity;” and defining “utility” as “[t]he
`fact,
`character, or quality of being useful or serviceable”).
`Along these same lines, clothing’s usefulness in
`decorating or flattering a person’s appearance does not
`make that aspect of the clothing utilitarian or useful in
`the practical, mechanical sense that the Copyright Act
`is concerned with. The useful aspect of clothing in
`practical terms is its physical utility in providing
`covering for the body or keeping the body warm or
`cool. Similarly, the utilitarian function of a chair is
`holding up a sitting person’s body. That the chair
`accentuates its surroundings may make the chair
`aesthetically useful for someone who takes pride in the
`beauty of his home. But that does not make the chair’s
`aesthetic appearance a utilitarian function of the chair.
`Indeed, treating a work’s decorative function as
`“utilitarian” would make almost every pictorial,
`graphic, or sculptural work utilitarian, because almost
`every such work has that kind of decorative function.
`An impressionist painting of a garden would be
`utilitarian and unprotectable because it conveys to
`
`
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`14
`others the owner’s love of gardens and flowers, or of
`the impressionist style. A chair with a nineteenth
`century English carving on its back would be utilitarian
`and unprotectable because it enhances the appearance
`of a Victorian-era house. Cf. House Report, at 55
`(offering as an example of a protectable design “a
`carving on the back of a chair”).
`That cannot be right, as it would contradict the text
`and structure of section 101. In section 101, Congress
`clearly intended the word “utilitarian” as a limitation
`on, not a broadening of, the works and aspects of works
`that are not copyrightable. First, section 101 specifies
`that “[p]ictorial, graphic, and sculptural works” include
`“works
`of
`artistic
`craftsmanship”
`that
`have
`“mechanical or utilitarian aspects” as distinguished
`from their “form” or other artistic features. 17 U.S.C.
`§ 101 (emphasis added). Petitioner’s definition of
`“utilitarian” eliminates that distinction. Second, section
`101 draws a distinction between “pictorial, graphic, or
`sculptural work[s]” that are “useful articles” from those
`that are not. Id. “[P]ictorial, graphic, or sculptural
`works” that are “useful articles . . . hav[e] an intrinsic
`utilitarian function that is not merely to portray the
`appearance of the article or to convey information.” Id.
`Petitioner’s definition of “utilitarian” would break down
`this distinction too and make virtually all pictorial,
`graphic, or sculptural works useful articles.5
`
`5 The absurd consequences from such a broad definition of
`utilitarian are readily apparent in the case of Gay Toys, Inc. v.
`Buddy L Corp., 522 F. Supp. 622 (E.D. Mich. 1981), vacated, 703
`F.2d 970 (6th Cir. 1983). There, the district court held a toy
`airplane was a non-copyrightable useful article because
`it
`“possesses utilitarian and functional characteristics in that it
`permits a child to dream and to let his or her imagination soar.”
`
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`
`15
`Third, with respect to “useful articles,” the statute’s
`separability test is premised on the notion that at least
`in some cases, “pictorial, graphic, or sculptural
`features” are separate and distinct from “utilitarian
`aspects.” 17 U.S.C. § 101. Again, Petitioner’s definition
`of utilitarian would eliminate this distinction, rendering
`superfluous the statutory command that courts must
`assess the non-utilitarian aspects of useful articles to
`determine if they are separable from the utilitarian
`aspects. See Corley v. United States, 556 U.S. 303, 314
`(2009) (“A statute should be construed so that effect is
`given to all its provisions, so that no part will be
`inoperative or superfluous, void or insignificant.”)
`(quoting Hibbs v. Winn, 542 U.S. 88, 101 (2004)).
`It would make a hash of the statute to define
`utilitarian so broadly that it swallows every feature of a
`work. Yet that is how Petitioner and Petitioner’s amici
`contend that “utilitarian” should be understood: that it
`knows no bounds.
` See Pet. Br. at 32 (defining
`utilitarian with respect to a prom dress to include
`“caus[ing] an observer to perceive that the wearer is
`attending the prom, draw attention to certain parts of
`the wearer’s body and not others, and generally create
`a slimming effect”); Profs. Buccafusco & Fromer
`
`522 F. Supp. at 625. The Sixth Circuit reversed, explaining that “a
`toy airplane is to be played with and enjoyed, but a painting of an
`airplane, which is copyrightable, is to be looked at and enjoyed.
`Other than the portrayal of a real airplane, a toy airplane, like a
`painting, has no intrinsic utilitarian function.” Gay Toys, Inc. v.
`Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). See also 2 Patry
`§ 3:149, pp. 3-477 - 3-478 (“Toys . . . and other playthings are not
`useful articles despite the purpose of stimulating children’s (or
`adults’)
`imaginations, since such
`intent
`is not an
`intrinsic
`utilitarian purpose within the meaning of the statute.” (footnotes
`omitted)).
`
`
`
`

`
`16
`Amicus Br. at 4 (defining “the full scope of what is
`utilitarian” to include “expressive features of clothing
`designs” that “affect[] how the wearer is perceived”), at
`8 (stating that garment design has utility “beyond
`standard mechanical or techn