May 2016 – IP Law Watch

Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design

May 31 2016

Under the U.S. Copyright Act, a “useful article” such as a chair, a dress, or a uniform may obtain copyright protection, but only for elements that “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. For apparel, this generally means that the overall design of a garment is not protected by copyright, but certain ornamental features (such as a pattern woven into the fabric) may be protectable. In practice, the Copyright Act protects fabric designs, not dress designs. Recently, the U.S. Supreme Court decided to tackle this uncertain area, granting certiorari in Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Sixth Circuit Court of Appeals ruled 2 – 1 that the design features of Varsity Brands’ cheerleader uniform (e.g. “stripes, chevrons, color blocks, and zigzags”) were separable from the utilitarian aspects of the uniform, and thus eligible for copyright protection. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

The majority opinion identified nine specific approaches plus hybrids that various courts and the Copyright Office have formulated over the years to analyze how copyrightable design features can be separated from utilitarian elements, and the extent to which design features can achieve copyright protection. Id. at 484-87. The majority then employed its own hybrid five-part test grounded in the text of the Copyright Act, finding that the designs at issue played no role in the overall function of the article as a cheerleading uniform. The majority broadly defined the function of a cheerleading uniform: “to cover the body, permit free movement, and wick moisture.” Id. at 492. The dissent, meanwhile, took a more “particularized” view of the function of the uniform. Id. at 496. It pointed out that the design elements at issue do serve a utilitarian function because they identify the wearer as a cheerleader and should therefore be afforded no protection under the Copyright Act. Id.

The dissent in Varsity Brands characterized the law of copyright protection for design elements of useful articles as “a mess.” Id. at 496-97. The consequences of this mess are significant for businesses with stakes in garment design. As the dissent observed, clarity is needed to alleviate the courts’ confusion and protect business interests. Id. The Supreme Court now has an opportunity to spell out a more consistent approach to the “metaphysical quandary” of design-functionality in garment copyright protection. Ideally, the Court will clarify the boundaries of copyright protection, and specify the appropriate factors for courts to weigh when separating expressive elements from utilitarian functions. Star Athletica’s opening brief is due around late June, and we will continue to monitor this case.

U.S. Patent Office Issues New Examples of Patent Eligibility Analysis of Life Sciences Claims

May 12 2016

By Aaron J. Morrow, Margaux L. Nair and Robert M. Barrett

United States Intellectual Property Alert

On May 4, 2016, the United States Patent Office published a subject matter eligibility update for determining patent eligibility under 35 U.S.C. § 101. The Update supplements the previous guidelines and includes additional life science claim examples to assist patent examiners (“Examiners”) in making eligibility determinations. The Update indicates that Examiners should use the additional claim examples in conjunction with the prior guidelines which were published by the Patent Office on December 16, 2014. The additional examples include illustrative claim sets directed to vaccines, methods of diagnosing and treating a disorder, dietary sweeteners, gene screening, a paper-making machine, and a method of hydrolyzing fat.

To read the full alert, click here.

In Role-Playing Card Games, Where is the Line Between Protectable Expression and Unprotectable Rules of the Game?

May 11 2016

By Mark Wittow and Eliza Hall

The United States District Court for the Southern District of Texas recently examined the scope of copyright protection for role-playing card games, parsing the use of parallel themes and characters. The court ultimately granted summary judgment in favor of a distributor accused of infringing a role-playing card game by creating a substantially similar game, but in a parallel (different) setting. This case provides guidance to companies that create games in traditional or digital media, clarifying where the line should be drawn between the protectable expressive aspects of a game and unprotectable rules or underlying ideas and concepts. The court’s decision also provides a helpful illustration of the differing standards applied to motions to dismiss and motions for summary judgment.

What You Need to Know About the Recent Federal Circuit Rule Changes

May 02 2016

By: Devon C. Beane, Jason A. Engel, and Theodore J. Angelis

The U.S. Court of Appeals for the Federal Circuit recently implemented significant amendments to its Rules of Practice. The changes apply to all cases docked on or after April 1, 2016. In large part, the amendments were made to comport existing practices or requirements for electronic case filing with the Rules. Other changes, such as those relating to confidentiality, reflect a wholesale shift in Federal Circuit practice. This alert provides a brief overview of some of the more significant amendments. Please click here to read the full alert.

Archive:May 2016