Northern District of Texas Blog

On March 22, 2017, the Supreme Court issued its decision in Star Athletica v. Varsity Brands (decision available here). The Court held that the arrangement of “lines, chevrons, and colorful shapes appearing on the surface of [] cheerleading uniforms” are eligible for copyright protection “as separable features of the design of those cheerleading uniforms.” The question was vexing because useful articles—e.g., clothing, shovels—are generally not copyrightable. The designs-at-issue are available here.

The Court articulated the relevant test as follows:

We hold that a feature incorporated into the 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.

As to the first requirement (separate identification), the requirement is “not onerous.” “The decisionmaker need 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-existance) is “ordinarily more difficult to satisfy. The decisionmaker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article. In other words, the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101 once it is imagined apart from the useful article. If the feature is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article, then it was not a pictorial, graphic, or sculptural feature of that article, but rather one of its utilitarian aspects.”

“[C]opyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as free-standing art or as features of useful articles. The ultimate separability question, then, is 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 before being applied to a useful article.”

Only the designs on the uniforms, not the uniforms themselves, were copyrightable:

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 respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have 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.

Finally, the Court abandoned a prior test that some courts and commentators had advanced:

Because we reject the view that a useful article must remain after the artistic feature has been imaginatively separated from the article, we necessarily abandon the distinction between “physical” and “conceptual” separability, which some courts and commentators have adopted based on the Copyright Act’s legislative history. According to this view, a feature is physically separable from the underlying useful article if it can “be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” Conceptual separability applies if the feature physically could not be removed from the useful article by ordinary means.

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.

On March 21, 2017, the Supreme Court issued its decision in SCA Hygiene Products v. First Quality Baby Products (decision available here). In SCA, the patent owner accused the defendant of infringement in 2003. The defendant responded, claiming that the defendant’s own patent invalidated the patent owner’s patent. The patent owner then (in 2004), without notifying the defendant, placed its own patent into reexamination to determine whether the patent was valid in light of the defendant’s patent. In 2007, the PTO issued a certificate confirming the validity of the patent owner’s patent. In 2010, the patent owner filed suit against the defendant (seven years after it had first accused the defendant of infringement). The defendant moved for summary judgment based on laches (i.e., an unreasonable, prejudicial delay in commencing suit), which the district court granted (and the federal circuit upheld).

The Supreme Court reversed, holding that laches cannot defeat a damages claim brought within the period prescribed by the Patent Act’s statute of limitations. Accordingly, under current law, the patent owner can generally seek up to six years’ worth of damages.

Importantly, the Supreme Court did not address whether laches could serve as a defense to a claim seeking equitable relief. The Supreme Court also suggested that equitable estoppel “provides protection against some of the problems that [defendant] highlights, namely, unscrupulous patentees inducing potential targets of infringement suits to invest in the production of arguably infringing products.”

On February 22, 2017, the Supreme Court issued its Life Technologies v. Promega decision (available here). The Patent Act (Section 271(f)(1)) prohibits the supply from the United States of “all or a substantial portion” of the components of a patented invention for combination abroad. The question before the Court was whether a party that supplies a single component of a multicomponent invention for manufacture abroad can be held liable under § 271(f )(1). The Court held that that a single component does not constitute a substantial portion of the components that can give rise to liability under § 271(f )(1).

Notably, the Court did not consider how to identify the “components” of a patent or whether and how that inquiry relates to the elements of a patent claim. In the instant case, the parties agreed that the accused product contained five components and that all but one component was manufactured in the United Kingdom, so the issue did not present itself.