Star Athletica v.

Varsity Brands

Varsity Brands Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., (Varsity Brands) design,
make, and sell cheerleading uniforms. It has copyright registrations for two-dimensional designs appearing on their
uniforms and garments. The designs include combinations, positions, and arrangements of chevrons, lines, curves,
stripes, angles, diagonals, coloring, and shapes. Varsity Brands claims that Star Athletica infringed their copyrights to
5 designs.

The District Court ruled in favor of Star Athletica on the ground that the designs did not qualify as protectable pictorial,
graphic, or sculptural works; they served the utilitarian function of identifying the garments as “cheerleading uniforms.”
As such, the designs could not be physically or conceptually separated from the utilitarian function of the uniform.

The Court of Appeals (CA) reversed the District Court. It ruled that the graphic designs were separately identifiable
because the designs and a blank cheerleading uniform can appear side by side – one as a graphic design, and one as
a cheerleading uniform. The designs were capable of existing independently because they could be incorporated into
the surface of different types of garments, or hung on the wall, and framed as art.

On appeal to the Supreme Court, the parties raised the question: are the arrangements of lines, chevrons, and colorful
shapes appearing on Varsity Brands’ cheerleading uniforms eligible for copyright protection as separable features of
the design? The Court ruled in the affirmative.

Sec. 101 of Copyright Act defines pictorial, graphic and sculptural works as including “two-dimensional and three-
dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts,
diagrams, models, and technical drawings, including architectural plans.” A work of authorship is fixed in a tangible
medium of expression when it is embodied in a material object from which the work can be perceived, reproduced, or
otherwise communicated.

Sec. 101 establishes a special rule for copyrighting a pictorial, graphic, or sculptural work incorporated into a useful
article. A useful article is one having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information. The law provides that the design of a useful article is eligible for copyright protection
only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features, provided that: (1)
can be identified separately from, and (2) are capable of existing independently of, the utilitarian aspects of the article.
The separability analysis is used to determine whether the design is copyrightable or not.

The separability analysis consists of two requirements: separate identification and independent existence. For
separate identification, the decisionmaker only needs to look at the useful article and spot some two- or three-
dimensional element that appears to have pictorial, graphic, or sculptural qualities. For independent existence, the
separately identified feature must exist apart from the utilitarian aspects of the article. The feature must be able to
exist as its own pictorial, graphic, or sculptural work once it is imagined apart from the useful article.

The Copyright Act provides that the owner of a copyright has the exclusive right to reproduce the copyrighted work in
copies. Such right includes the right to reproduce the copyrighted work in or on any kind of article – whether useful or
not. Whereas Sec. 101 protects art first fixed in the medium of a useful article, Sec. 113 (a) protects a work of
authorship first fixed in some tangible medium other than a useful article and subsequently applied to a useful article.
The law, therefore, protects pictorial, graphical, and sculptural works regardless of whether they were created as free-
standing art or as features of useful articles.

In Mazer vs. Stein (decided under the 1909 Copyright Act), respondents sold fully equipped lamps with the sculpture
of a dancer for its lamp base. Subsequently, they filed for copyright registration of the dancer as a statuette, removing
any lamp components. Copies were then sold both as lamp bases and as statuettes. Petitioners copied the statuette
and sold lamps using that as base. They argued that respondents did not have a copyright in a statuette intended for
use as a lamp base. The Court ruled that first, the respondents owned a copyright to the statuette even though it was
intended for use as a lamp base. In doing so, the Court approved the Copyright Office’s regulation extending copyright
protection to works of art that might also serve a useful purpose (but not the mechanical or utilitarian aspect). Second,
the Court held that it was irrelevant to the copyright inquiry whether the statuette was initially created as a freestanding
sculpture or as a lamp base. If a design would have been copyrightable as a standalone pictorial, graphic, or
sculptural work, it is copyrightable if created first as part of a useful article.

Here, the decorations are separable from the uniforms and eligible for copyright protection. One can identify the
decorations as features having pictorial, graphic, or sculptural qualities. And if the arrangement of colors, shapes,
stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in
another medium—for example, on a painter’s canvas—they would qualify as two-dimensional works of art.
The dissent argues that the designs are not separable because imaginatively removing them from the uniforms and
placing them in some other medium of expression (e.g. a canvass) would create pictures of cheerleader uniforms. The
majority opinion held that such is not a bar to copyright. Just as two-dimensional fine art corresponds to the shape of
the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is
applied.

To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional
work of art fixed in the tangible medium of the uniform fabric. Even if Varsity Brands ultimately succeeded in
establishing a valid copyright to the surface decorations at issue here, it has no right to prohibit any person from
manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in
this case appear. They may prohibit only the reproduction of the surface designs in any tangible medium of
expression—a uniform or otherwise.

Star Athletica argued that a feature may exist independently only if it can stand alone as a copyrightable work and if
the useful article from which it was extracted would remain equally useful. In other words, copyright extends only to
“solely artistic” features of useful articles and that if the feature advances the utility of the article, the feature is not
copyrightable. The designs were allegedly not protected because they are inseparable from the utilitarian aspects of
the uniform – i.e. identifying the wearer as a cheerleader and enhancing the wearer’s physical appearance.

The Court held that the debate over the relative utility of a plain white cheerleading uniform was unnecessary. The
focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain
after the imaginary extraction. The statute does not require the decision maker to imagine a fully functioning useful
article without the artistic feature. Instead, it requires that the separated feature qualify as a non-useful pictorial,
graphic, or sculptural work on its own. Furthermore, the statute expressly protects two- and three-dimensional applied
art. An artistic feature that would be eligible for copyright protection on its own cannot lose that protection simply
because it was first created as a feature of the design of a useful article, even if it makes that article more useful.

The Court abandoned the distinction between physical and conceptual separability as used in the dissenting opinion.
Physical separability refers to the capability of the design features to be physically removed from the article leaving the
fully functioning utilitarian object in place whereas conceptual separability refers to the ability to conceive of the design
features separately without replicating a picture of the utilitarian object. The statutory text indicates that separability is
a conceptual undertaking. Because separability does not require the underlying useful article to remain, the physical-
conceptual distinction is unnecessary.

Star Athletica argued that allowing the surface decorations to qualify as a work of authorship is inconsistent with
Congress’ intent to entirely exclude industrial design from copyright. Star Athletica notes that Congress refused to
pass a provision that would have provided limited copyright protection for industrial designs, including clothing, when it
enacted the 1976 Act. As such, Congress intended to channel intellectual property claims for industrial design into
design patents.

The Court on this issue held that copyright and design patent are not mutually exclusive. It stated that Congress has
provided for limited copyright protection for certain features of industrial design.

Conclusion

An artistic feature of the design of a useful article is eligible for copyright protection 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 medium if imagined separately from the useful
article.

Sources:

 Applied art is art employed in the decoration, design, or execution of useful objects or those arts or crafts that
have a primarily utilitarian function, or the designs and decorations used in these arts.
Entertainment Research Group v. Genesis (1997, US)

ERG alleges that Aerostar copied and infringed ERG's copyrights in the inflatable costumes that ERG designed and
manufactured based on the underlying copyrighted characters.

To establish copyright infringement, the holder of the copyright must prove both valid ownership of the copyright and
infringement of that copyright by the alleged infringer.

In the instant case, the district court granted the motions for summary judgment on the infringement claim on the
ground that ERG failed to establish that it had a valid copyright in its costumes.

Issue: Whether ERG's costumes are actually copyrightable.

It is undisputed that ERG's costumes are based upon two-dimensional characters that are copyrighted and owned by
the purchasers of the costumes. The Copyright Act defines a derivative work as:

[A] work based upon one or more pre-existing works, such as a[n] ... art reproduction ... or any other form in which a
work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or
other modifications which, as a whole, represent an original work of authorship, is a "derivative work."

Given this definition, it is clear that ERG's costumes are derivative works for purposes of the Copyright Act.

That ERG's costumes are derivative works is not a bar to their copyrightability, however.

The Copyright Act explicitly provides that the subject matter of copyright includes "derivative works."
Nevertheless, the copyright protection afforded to derivative works is more limited than it is for original works of
authorship. The copyright in a derivative work "extends only to the material contributed by the author of such work, as
distinguished from the pre-existing material employed in the work."

Issue: Whether ERG's costumes are copyrightable as derivative works.

First, to support a copyright the original aspects of a derivative work must be more than trivial.

Second, the original aspects of a derivative work must reflect the degree to which it relies on pre-existing material and
must not in any way affect the scope of any copyright protection in that pre-existing material.

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work,
as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the
preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration,
ownership, or subsistence of, any copyright protection in the preexisting material.

Whether ERG's costumes are sufficiently "original" to justify protection as derivative works

We have explained what "originality" means in the context of derivative works as follows:

All that is needed to satisfy both the Constitution and the statute is that the "author" contributed something more than
a "merely trivial" variation, something recognizably "his own." Originality in this context "means little more than a
prohibition of actual copying." No matter how poor artistically the "author's" addition, it is enough if it be his own.

For copyright purposes, costumes would fall under the category of "pictorial, graphic and sculptural works" and would
be treated as sculptural works. The Copyright Act states that sculptural works of artistic craftsmanship receive
copyright protection only insofar as their form but not their mechanical or utilitarian aspects are concerned; the design
of a useful article [ordinarily not copyrightable] ... 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.

Accordingly, any aspects of ERG's costumes that are purely functional, utilitarian or mechanical, will not be given any
copyright protection. Moreover, any artistic aspects of ERG's costumes will also not receive copyright protection
unless they can be identified separately from, and are capable of existing independently of, the utilitarian purpose of
the costumes.

Based on this statutory provision, the district court ruled that, "Any differences in appearance between a derivative
work and the preexisting work which are driven primarily by a functional, utilitarian or mechanical purpose cannot be
considered when seeking artistic differences for the purpose of originality."
In the instant circumstances, where the derivative works at issue are sculptures, it makes no sense to include the
utilitarian aspects for purposes of determining originality when it is clear in the Copyright Act, that these utilitarian
aspects are not copyrightable.

Whether the non-functional aspects of the ERG costumes were sufficiently original

Any artistic differences in the costumes are merely trivial. The courts and commentators seem to agree that making
decisions that enable one to reproduce or transform an already existing work into another medium or dimension--
though perhaps quite difficult and intricate decisions--is not enough to constitute the contribution of something
"recognizably his own."

The "mere act of converting two dimensions to three dimensions, although it creates a distinguishable
variation, may not represent a contribution of independent effort because no one can claim to have
independently evolved the idea and technique of working in three dimensions"

"The mere reproduction of the underlying characters in plastic, even though ... [i]t undoubtedly involved some
degree of manufacturing skill, does not constitute originality"

The plaintiff moldmaker had not added any "artistic effort" since he had "simply converted a two-dimensional
design to a three-dimensional object"

In evaluating the originality of ERG's costumes, any differences that exist because of functional or mechanical
considerations should not be considered.

We agree with the district court's conclusion that the differences in form, texture and proportionality that ERG points to
as non-trivial differences all stemmed from functional considerations. Indeed, even though Mr. Breed states that he
was forced to make an "artistic decision" as to what changes should be made to the costumes so that the original
character's essence would not be lost, a close reading of Mr. Breed's statement reveals that this "artistic decision" was
necessitated solely by the functional consideration that "the scale of the character does not fit the human proportion"
and, therefore, must be changed so that the costumes can be functional. Accordingly, these so-called artistic
differences are really nothing more than changes necessitated by utilitarian concerns.

In other words, because ERG's costumes are "instantly identifiable as embodiments" of the underlying copyrighted
characters in "yet another form," no reasonable juror could conclude that there are any "non-trivial" artistic differences
between the underlying cartoon characters and the immediately recognizable costumes that ERG has designed and
manufactured.

In sum, because Mr. Breed's Declaration and the photographs and artwork submitted in conjunction with his
declaration do not raise any disputed factual issue as to whether there are any non-trivial artistic differences between
ERG's costumes and the underlying copyrighted characters, the district court's grant of summary judgment was
appropriate.
Baker v. Selden (1879, US)

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no
exclusive right to the modes of drawing described, though they may never have been known or used before. By
publishing the book without getting a patent for the art, the latter is given to the public.

We observe that Charles Selden, by his books, explained and described a peculiar system of bookkeeping, and
illustrated his method by means of ruled lines and blank columns, with proper headings on a page or on successive
pages. While no one has a right to print or publish his book, or any material part thereof, as a book intended to convey
instruction in the art, any person may practice and use the art itself which he has described and illustrated therein.

The use of the art is a totally different thing from a publication of the book explaining it. The copyright of a book on
bookkeeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth
in such book.

The conclusion to which we have come is that blank account books are not the subject of copyright, and that the mere
copyright of Selden's book did not confer upon him the exclusive right to make and use account books, ruled and
arranged as designated by him and described and illustrated in said book.
Ching v. Salinas

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a
Utility Model, described as Leaf Spring Eye Bushing for Automobile made up of plastic. Ching and Joseph Yu were
issued by the National Library Certificates of Copyright Registration and Deposit of the said work described therein as
Leaf Spring Eye Bushing for Automobile.

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for police/investigative
assistance for the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works.

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William Salinas, Sr.
and the officers and members of the Board of Directors of Wilaware Product Corporation. It was alleged that the
respondents therein reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of
Republic Act (R.A.) No. 8293.

Salinas averred that the works covered by the certificates issued by the National Library are not artistic in nature; they
are considered automotive spare parts and pertain to technology. They aver that the models are not original, and as
such are the proper subject of a patent, not copyright.

RTC: The court ruled that the work covered by the certificates issued to the Ching pertained to solutions to technical
problems, not literary and artistic as provided in Article 172 of the Intellectual Property Code.

Ching’s contentions:
 That the IP Code provides in no uncertain terms that copyright protection automatically attaches to a work by
the sole fact of its creation, irrespective of its mode or form of expression, as well as of its content, quality or
purpose.
 That the law gives a non-inclusive definition of work as referring to original intellectual creations in the literary
and artistic domain protected from the moment of their creation;
 That the law includes original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design and other works of applied art under Section 172.1(h) of R.A. No. 8293.
 That the Copyright Law protects is the authors intellectual creation, regardless of whether it is one with
utilitarian functions or incorporated in a useful article produced on an industrial scale.
 That the law does not provide that the intended use or use in industry of an article eligible for patent bars or
invalidates its registration under the Law on Copyright.
 That he has in his favor the benefit of the presumption that his copyright is valid; hence, the burden of
overturning this presumption is on the alleged infringers, the respondents herein.

Salinas’ contentions:
 That the work of the petitioner is essentially a technical solution to the problem of wear and tear in
automobiles, the substitution of materials, i.e., from rubber to plastic matter of polyvinyl chloride, an oil
resistant soft texture plastic material strong enough to endure pressure brought about by the vibration of the
counter bearing and thus brings bushings.
 That a technical solution in any field of human activity which is novel may be the subject of a patent, and not
of a copyright.
 That the certificates issued by the National Library are only certifications that, at a point in time, a certain work
were deposited in the said office. Furthermore, the registration of copyrights does not provide for automatic
protection.
 That a copyright exists only when the work is covered by the protection of R.A. No. 8293.

SC Decision:

The said Leaf Spring Eye Bushing for Automobile is merely a utility model described as comprising a generally
cylindrical body having a co-axial bore that is centrally located and provided with a perpendicular flange on one of its
ends and a cylindrical metal jacket surrounding the peripheral walls of said body, with the bushing made of plastic that
is either polyvinyl chloride or polypropylene. Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion
comprising a generally semi-circular body having a central hole to secure a conventional bearing and a plurality of
ridges provided therefore, with said cushion bearing being made of the same plastic materials.

Plainly, these are not literary or artistic works. They are not intellectual creations in the literary and artistic domain, or
works of applied art. They are certainly not ornamental designs or one having decorative quality or value.
It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its marketability. The
central inquiry is whether the article is a work of art. Works for applied art include all original pictorials, graphics, and
sculptural works that are intended to be or have been embodied in useful article regardless of factors such as mass
production, commercial exploitation, and the potential availability of design patent protection.
As gleaned from the description of the models and their objectives, these articles are useful articles which are defined
as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey
information. Indeed, while works of applied art, original intellectual, literary and artistic works are copyrightable, useful
articles and works of industrial design are not.

A useful article may be copyrightable 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.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the authors intellectual
creation, regardless of whether it is a creation with utilitarian functions or incorporated in a useful article produced on
an industrial scale, is protected by copyright law. However, the law refers to a work of applied art which is an artistic
creation. It bears stressing that there is no copyright protection for works of applied art or industrial design which has
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of the article. Functional
components of useful articles, no matter how artistically designed, have generally been denied copyright protection
unless they are separable from the useful article.

In this case, the petitioners models are not works of applied art, nor artistic works. They are utility models, useful
articles, albeit with no artistic design or value.

Being plain automotive spare parts that must conform to the original structural design of the components they seek to
replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the decorative
quality or value that must characterize authentic works of applied art. They are not even artistic creations with
incidental utilitarian functions or works incorporated in a useful article.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the catch-all phrase
other literary, scholarly, scientific and artistic works in Section 172.1(a) of R.A. No. 8293. Applying the principle
of ejusdem generis which states that where a statute describes things of a particular class or kind accompanied by
words of a generic character, the generic word will usually be limited to things of a similar nature with those
particularly enumerated, unless there be something in the context of the state which would repel such inference, the
Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature
as the works enumerated in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of
copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. In Joaquin, Jr. v.
Drilon and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court held that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights
are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and
by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance of a search
warrant for violation of copyright laws. In Kho v. Court of Appeals and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated, the Court held that these copyright and patent rights are completely distinct and separate from one
another, and the protection afforded by one cannot be used interchangeably to cover items or works
that exclusively pertain to the others. Thus:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto,
a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the
scope of a copyright is confined to literary and artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable.
Olano, et al., v. Lim Eng Co

In 2004, respondent Lim Eng Co. (LEC) filed a complaint for copyright infringement against petitioners Sison Olaño,
Sergio Ong, Marilyn Go and Jap Fuk Hai, the directors of Metrotech Steel Industries, Inc. (Metrotech). BNU
represented Metrotech’s directors before the Department of Justice, the C.A., and the S.C.

LEC claimed copyright over “hatch doors” based on Certificate of Copyright Registration and Deposit Nos. I-2004-13
and I-2004-14 covering illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science and Certificate of Copyright Registration and Deposit Nos. H-2004-566 and H-
2004-567 covering plans/drawings for “original” ornamental designs or models for articles of manufacture. LEC
alleged that Metrotech manufactured hatch doors for a construction project by copying its plans/drawings.

Metrotech’s directors admitted the manufacturing of hatch doors but denied the commission of copyright infringement.
Metrotech contended that the manufacturing of hatch doors per se is not copyright infringement because LEC’s
copyright protection did not extend to the objects depicted in the illustrations and plans. Further, the directors argued
that there is no artistic or ornamental expression in hatch doors which would make it copyrightable.

The Supreme Court found that Metrotech’s directors are not guilty of copyright infringement.

Ownership of valid copyrighted material by complainant is one of the essential elements of copyright infringement
under RA 8293.

Valid copyrighted material must be shown by proof of originality and copyrightability. The SC ruled that LEC’s
Certificate of Registration Nos. I-2004-13 and I-2004-14 cover only the hatch door sketches/drawings and not the
actual hatch door they depict. The SC further ruled that the hatch door has no element of design which may be
separated from its utilitarian function. Therefore, the hatch door is an object of utility, and not an artistic creation. It is
not eligible for copyright.

Citing the case of Ching v Salinas that works of applied art, original intellectual, literary and artistic works are
copyrightable while useful articles and works of industrial designs are not. Useful articles may be copyrightable only if
their aesthetic or artistic features can be independently identified from their utilitarian aspects.