sebastian-davenport-handley-146343Suppose that you have expressed your idea into a tangible form such as two-dimensional artistic elements incorporated into an industrial design.  Although your copyright exists upon the moment of creation, do you have a valid copyright?  Should you register your copyright on the two-dimensional artistic elements with the U.S. Copyright Office?  Can you stop a competitor from using your two-dimensional artistic elements in their industrial design?  The answer is YES!

In the United States, to establish copyright infringement, “two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns. Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). “If the plaintiff does not have direct proof of copying, the plaintiff may show copying by demonstrating that the defendants had access to the copyrighted work and that the works are ‘substantially similar.’” Herzog v. Castle Rock Entm’t, 193 F.3d, 1241, 1248 (11th Cir. 1999).

Can someone obtain a valid copyright in artistic elements of an industrial design?  Section 101 of the Copyright Act affords limited protection for artistic elements incorporated into an industrial design by providing that “pictorial, graphic, or sculptural features” of the “design of a useful article” are eligible for copyright protection as artistic works if those features “can be identified” separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101.

In the recent case of Star Athletica L.L.C. v. Varsity Brands, Inc., 580 U.S. ___ (2017), Varsity Brands had obtained copyrights for two-dimensional designs appearing on the surface of their cheerleading uniforms and other garments.  Star Athletica L.L.C. Inc. sold cheerleading uniforms with similar designs of Varsity Brands and Varsity Brands sued for copyright infringement of their designs.  Star Athletica initially won at the trial court with a finding of no copyright infringement.  The trial court concluded that the designs did not qualify as protectable pictorial, graphic, or sculptural works because the designs served the useful, or “utilitarian” function of identifying the garments as “cheerleading uniforms” and therefore could not be ”physically or conceptually” separated under Section 101 “from the utilitarian function” of the uniform.

The U.S. Supreme Court addressed the issue over the proper test for implementing Section 101’s separate-identification and independent-existence requirement.  The Court held that a feature incorporated into a 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 in some other tangible medium if imagined separately from the useful article.

The first requirement – separate identification – requires one to 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.  The second requirement – independent-existence – requires one to determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.  The feature will have utilitarian aspects if it is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article.

To determine the separability question, one must determine whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article.  For example, a design may be etched or painted on the surface of a skateboard.  If that entire design is imaginatively removed from the skateboard’s surface and placed on an easel, the design would still resemble the shape of the skateboard.  As such, the image on the easel does not “replicate” the skateboard as a useful article, but the design is a two-dimensional work of art that corresponds to the shape of the skateboard.  Thus, the design is eligible for copyright protection as a pictorial, graphic, or sculptural work.

Based on the above scenario, you should register your copyright in the artistic elements in an industrial design immediately.  You will then be able to sue your competitor for copyright infringement of your artistic elements in their industrial design.  Your competitor may argue that you do not have a valid copyright because the artistic elements are not capable of existing as a pictorial, graphic, or sculptural work once separated from the industrial design.  However, if your artistic elements can be perceived as a two- or three-dimensional work of art separate from the industrial design and qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other tangible medium imagined separately from the industrial design, you should have a valid copyright and prevail in your copyright infringement suit.  Therefore, it is recommended that you register the artistic elements in your industrial design with the U.S. Copyright Office.