December 7, 2017 – University City, Philadelphia Copyright Attorneys at EsquireTrademarks.com attended a Panel discussion at Penn Law entitled “Interpreting and Applying the Court’s Copyright Jurisprudence After Star Athletica” The panel was presented by University of Pennsylvania Law Review, CTIC, Penn Intellectual Property Group, and the Copyright Society of the USA. The purpose of the event was to celebrate the release of Law Review Online’s Special Issue—”From Shovels to Jerseys: A Guide to Apply Star Athletica v. Varsity Brands”. The panel was moderated by David Nimmer and featured many of the authors who contributed to the Law Review Online’s Special Issue. Specifically, the panel was comprised of Tyler T. Ochoa, Jeanne C. Fromer, Mark P. McKenna, and Peter S. Menell.
What is the big deal about Star Athletica?
Star Athletica is Supreme Court guidance that helps Courts and legal professionals (copyright attorneys) identify the outer boundaries of copyright law. Useful articles are not protectable under copyright law – but ornamental aspects of useful articles are protectable. There exists a grey area where ornamental aspects and a useful articles overlap. In Star Athletica, the fight was over cheerleading uniform designs. One party argued that the cheerleading uniforms were useful articles – not protectable under copyright. The other party argued that the cheerleading uniforms were ornamental – and therefore proper subject matter for copyright protection.
Consider, for example, a lobster shaped bottle opener. Copyright law protects original “pictorial, graphic, and sculptural works,” which include two- and three-dimensional works of fine, graphic, and applied art. HOWEVER – Copyright law does not protect the mechanical or utilitarian aspects. Copyright Office Circular No. 40 (Copyright Registration for Pictorial, Graphic, and Sculptural Works). Arguably, the lobster design is a sculptural work protectable under copyright law. BUT, the bottle opener is utilitarian – and not protectable by copyright.
As an Intellectual Property Lawyer – Protect with Copyright and Patent Law … Even Trademark Law
Copyrightability for useful/ornamental items will forever be difficult to define. As a patent / trademark / copyright attorney advising the client, the best method is to apply for both copyright and patent in the useful article. If the item can act as a source identifier, we try to use trademark law, as well, to protect it. Most importantly, you advise the client that this is a grey area of law. Neither method of protection is bulletproof. Every case is different and turns on its own facts. So, we use what legal tools are available and let the courts work it out over the years. A questionable copyright registration is better than having not applied at all. Most cases never make it to federal court – never mind the Supreme Court. You get the client the protection using the legal tools available, and you warn of the possible risks of invalidation.
For more information about Star Athletica v. Varsity Brands you may check out the Oyez.org page dedicated to the opinion.
EsquireTrademarks.com – Philadelphia Copyright Attorneys – What We Do:
- Our Philadelphia copyright & trademark attorney, prepares and files trademark applications for clients throughout the United States and abroad.
- We prosecute and defend trademark infringement and unfair competition actions in the Federal Courts throughout the United States and abroad.
- We also prosecute trademark office actions and appeals before the United States Trademark Office.
- We handle internet based trademark disputes and trademark, DMCA, and copyright takedowns.
- We draw on our experience as trademark litigators to guide you through the trademark process.
- We support businesses, law firms, and individuals by providing top notch legal services in intellectual property matters.