Mcle Self-study Article

• Citation: Vol. 41 No. 1
• Publication year: 2016
• Author: WILLIAM J. O'BRIEN

MCLE Self-Study Article

WILLIAM J. O'BRIEN

One LLP

COPYRIGHT COMMENTARY

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In?

THE LAW PROVIDES A VARIETY OF TOOLS for protecting intellectual property, and it is important to choose the right one for a given task. Each form of intellectual property protection - including patents, copyrights, trademarks, trade secrets, and more - comes with its own distinct subject matter, duration, corresponding rights, and remedies. The rationales for the different treatment of different forms of intellectual property are not always clear and persuasive but have grown up incrementally in the statutes and case law and reflect a rough sense of what protections are appropriate for the various kinds of intellectual property and of how much freedom should be allowed for various kinds of competing activities.

The form of intellectual property that applies to a particular subject matter can make a tremendous practical difference to the intellectual property claimant, competitors, and the consuming public. Among the most important differences is in the length of protection afforded to different forms of intellectual property. For example, Congress has decided to protect useful inventions for 20 years from filing and to protect ornamental features of utilitarian objects for 15 years from issuance.¹ In contrast, copyrights last for the author's life plus 70 years (or in the case of corporate authors, for 95 years from publication, or 120 years from creation, whichever ends first).² So if a corporation can succeed in asserting copyright ownership of the ornamental design of a useful product, it can gain what amounts to a term extension of 80 years. Moreover, obtaining trademark or trade dress protection for a product design can extend intellectual property rights indefinitely.³

The type of intellectual property that applies can also determine whether the claimant is entitled to any rights at all. For example, the applicant for a utility patent must undergo an examination to confirm that the invention to be patented was novel and would not have been obvious to a person of ordinary skill in the field of the invention.⁴ There are no such restrictions on copyrights, trademarks, or trade dress, so applying any of those forms of intellectual property to product designs may constrain competition that Congress intended to permit.

The Supreme Court's Role in Policing Boundaries

Despite its importance, the task of policing the boundaries between different forms of intellectual property may not always receive the priority that it deserves from trial courts or even courts of appeal. Faced with a defendant who appears to have unfairly appropriated someone else's creation, judges may decide to throw the book at the miscreant without carefully analyzing what specific forms of intellectual property apply. From time to time, the U.S. Supreme Court finds it necessary to step in and restore or clarify the proper boundaries between different forms of intellectual property. This has included two cases within the last 15 years in which the Court restrained trade dress protection for product designs.

In TrafFix Devices v. Marketing Displays, the Supreme Court circumscribed the ability of a patent owner to extend its ownership of a patented product design by claiming that the design should be protected as trade dress after expiration of the patent. Reversing the Sixth Circuit, the Court held that "[a] utility patent is strong evidence that the features therein claimed are functional" and therefore not entitled to trade dress protection.⁵ In Wal-Mart Stores v. Samara Brothers, the Court furthered the constrained treatment of product designs as trade dress protected by the Lanham Act. Reversing the Second Circuit, the Court held that "a product's design is distinctive, and therefore protectible, only upon a showing that, 'in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.'"⁶

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The Supreme Court's decisions support the "general principle...that intellectual property owners should not be permitted to recategorize one form of intellectual property as another, thereby extending the duration of protection beyond that which Congress deemed appropriate for their actual creative efforts...."⁷ But increasingly, courts have been affording copyright protection to products that traditionally would have been protected - if at all - only by utility or design patents. Two pending certiorari petitions suggest that the time has come for the Supreme Court to cut back on the expanding scope of copyright protection allowed by some lower courts and to clarify the legal doctrines related to copyrights in useful articles.

• On January 5, Star Athletica asked the Supreme Court to overturn the Sixth Circuit's decision that cheerleader uniform features such as stripes, chevrons, and color blocks "can be identified separately from, and are capable of existing independently of, the utilitarian aspects" of the uniforms and thus are protected by copyright.⁸
• On January 22, Mark Towle asked the Court to overturn the Ninth Circuit's decision that he had infringed copyrights in a Batman movie and television show by making cars that resemble the Batmobiles portrayed in those works.⁹

Is it time for our highest court to clarify the scope of copyright protection for clothing, cars, and other useful articles? The dissenting judge in the Sixth Circuit case said that "until we get much-needed clarification, courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law."¹⁰

Copyright Protection for Features of Useful Articles

The Copyright Act restricts copying of a wide range of "original works of authorship," including, books, music, movies, plays, dances, and "pictorial, graphic, and sculptural works."¹¹ But what prevents the design of a conventional product like a pair of underpants or a mobile phone from being monopolized for 95 years as supposed "sculptural works"? The statutory definition provides that "[t]he design of a useful article...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...