Imagine a Warhol painting. It’s an original work of art, protected by copyright. Now, imagine the painting printed on a shirt. Is it still a copyrightable work? Absolutely. Now, imagine the shirt came first. If you could magically remove the design to a canvas, would you still have a functional shirt? Of course.

The Supreme Court recently considered separability of creativity from functionality in Star Athletica v. Varsity Brands. In July 2010, Varsity Brands, the world’s largest manufacturer of cheerleading and dance team uniforms, sued its competitor, Star Athletica, for copyright infringement of five of its designs for cheerleading outfits. Star Athletica fought back, asserting that the chevrons and stripes on the uniforms served a “utilitarian function.”

The U.S. District Court for the Western District of Tennessee sided with Star, agreeing that the design elements were inseparable from the garments’ function. However, following Varsity’s appeal, the Court of Appeals for the 6th Circuit reversed, stating that the chevrons and stripes that decorated the garment were just that, decoration, and not an element that was essential to the uniform.

The Court of Appeals reviewed and considered at least nine different tests to determine when graphics included in the design of a useful article can be separate from the functional aspect of the article. The court asked whether “a cheerleader is still a cheerleader if their outfit has no designs.” Their verdict: yes.

Star appealed to the Supreme Court, which had previously considered copyrights in useful articles in the context of statuettes on lamp bases during the 1950s in the case of Mazer v. Stein. In that case, the court held that a lamp manufacturer could copyright the statuettes that served as lamp bases.

At this point, you might be wondering why a case involving two cheerleading uniforms is important to those outside the fashion industry, who stand to gain (or lose) the most from the decision. To answer, we need to look back at how separability was previously applied to copyright claims.

Copyright protects art, among other things. In the US, when that expression is part of a useful object, it only protects to the extent that the creative part is “separable” from the functional part. Thus, in Mazer v. Stein, the addition of statuettes to a useful article did not magically deprive the statuettes of copyright protection. They were creative works.

However, industrial design does not follow the same rules of copyright as art. For instance, an architecturally interesting bike rack is not copyrightable if the design is necessary for the function. On the other hand, if you put a lampshade on a sculpture, it is still a sculpture. Good for Baroque design, bad for Bauhaus where “form follows function.” “Separability” is key. In the past, when faced with similar cases, some courts have looked literally at separability, as in, “can one physically separate the feature, and if so separated, can it stand on its own as a copyrightable work?” Other courts looked at it conceptually, as in “can the design stand on its own as a work, even if technically it cannot be separated?”

Considering these tests in Star Athletica, the Supreme Court held: “design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”

Since one could imagine the designs as a separate work which could be hung on the wall, and could still wear the clothes without the designs, copyright protection was upheld.

The ruling opens new opportunities for industries that previously relied on design patents, which are expensive and of shorter duration than copyrights, to protect their works. Because conceptual separability is the undisputed law of the land, infringement is more likely to be found than under a more stringent test such as literal separability.

Why this Matters More than Ever—3D Printing

Historically, cases involving copyrightability and useful objects usually took place between two manufacturers (of lamps, belt buckles, etc.), and had little application to the public at large. The average consumer does not manufacture useful objects. That is, the average consumer does not manufacture useful objects yet. With 3D printing, individuals will be able to produce useful articles, creative works, and works that combine both, which is why the Star Althetica case caught the attention of 3D printing companies Formlabs, Matter and Form and Shapeway, who together filed an amicus brief for Star, encouraging the Supreme Court to hear the case.

3D printing, also known as additive manufacturing, is a process that creates three-dimensional objects. The printers interact with software and print objects layer by layer. These objects are made from a variety of materials, from basic plastics to metals, chemicals and even proteins. 3D printers can be used to print prosthetic, limbs, airplane parts, art and even medicine. As 3D printing becomes universal and easier to use, it has the potential to radically shape how goods across industries are manufactured—as complex products, like medicine or mechanical parts, may be simple to produce at home. That means practically any business that makes physical objects will potentially face a scenario in which easy access to digital files, whether legal or not, moves the means of production to individuals at home. This will have implications for copyrights, patents, design patents and trademarks. In the case of copyright, many of the items printed will combine copyrightable and non-copyrightable elements.

As the rules around 3D printing develop, litigation now will affect the trajectory of the industry. Thus, the 3D printing companies filed an amicus brief asking the Supreme Court to hear the case. Formlabs is a 3D printing company dedicated to creating desktop printers, giving the public greater access to 3D printing. Matter and Form creates affordable high-resolution 3 scanners. Shapeway provides an online shopping service on which people can buy and sell 3D printed objects, which Shapeway prints and ships. All three of these companies are at the forefront of the 3D printing industry, albeit from different sides, and have an interest in defining copyright and intellectual property regulations for 3D printing in the future. It is in these companies’ best interest for regulations to be lax and clear, as it will enable them and other printing companies to produce goods with greater legal certainty.

In their brief, the companies argued that uncertainty, including the nine tests mentioned by the Circuit Court, had left 3D printing in a state of confusion, causing stagnation. As 3D printing allows more people to create and develop projects on a smaller scale, they argued the need for a single test.

With the ruling of the Supreme Court, a single test has been created. However, this is only the first step in what will likely be an ongoing battle over intellectual property and copyright in 3D printing. While uniformity throughout the courts will be helpful for identifying infringement, the strength of the law will likely be debated for years to come. As it currently stands, the test allows for a broad range of designs and objects to be considered copyrightable. This will benefit designers and producers, as it allows a certain degree of protection; however, this may also lead to an increase in infringement cases. For companies like Shapeway, who sell products on their online server, this could become problematic, as they may see an influx of infringement complaints from designers. It will be interesting to see how firms like Formlabs, Matter and Form, and Shapeway respond to the decision, as their actions, as well as the decision, may very well affect the future of 3D printing.

This post originally appeared on TechCrunch.

Author: Roy Kaufman

Roy Kaufman is Managing Director of both Business Development and Government Relations for CCC. He is a member of, among other things, the Bar of the State of New York, the Author’s Guild, and the editorial board of UKSG Insights. Kaufman also advises the US Government on international trade matters through membership in International Trade Advisory Committee (ITAC) 13 – Intellectual Property and the Library of Congress’s Copyright Public Modernization Committee. He serves on the Executive Committee of the of the United States Intellectual Property Alliance (USIPA) Board. He was the founding corporate Secretary of CrossRef, and formerly chaired its legal working group. He is a Chef in the Scholarly Kitchen and has written and lectured extensively on the subjects of copyright, licensing, open access, artificial intelligence, metadata, text/data mining, new media, artists’ rights, and art law. Kaufman is Editor-in-Chief of "Art Law Handbook: From Antiquities to the Internet" and author of two books on publishing contract law. He is a graduate of Brandeis University and Columbia Law School.
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