Remapping Copyright Functionality: The Quixotic Search for a Unified Test of Separability for PGS Works

Abstract

Intellectual property protection of design has been a vexing problem, perhaps more so in the United States than in Europe. Debates in the United States over design protection, whether conducted in the legislature or the courts, have centered on creating incentives for vexatious litigation among competitors and the adequacy of existing copyright, trademark, and patent laws in protecting the economic interests of designers. As the United States has not adopted a sui generis statute to protect designs, the debate continues within trademark, patent, and copyright laws as to the scope of protection for purely ornamental features of a work. This Article focuses on the debate within copyright, made particularly salient by the United States Supreme Court’s decision to review Star Athletica v. Varsity Brands in the 2016-2017 term.This Article explores the dilemmas confronting the Court in identifying the appropriate test for separability. The United States Court of Appeals for the Sixth Circuit, the intermediate appeals court whose decision in Star Athletica the Supreme Court is reviewing, identified nine distinct tests adopted by the intermediate appellate courts to separate copyrightable aesthetics from noncopyrightable function in a given work. The Sixth Circuit also announced its own hybrid test. These tests are the product of nearly forty years of jurisprudence, at least since the current Copyright Act of 1976. It is difficult to imagine how the Court will identify the one correct test from all these options. Most likely, it will distill some general principles to help guide the lower courts in reviewing cases, drawing on its foundational decision in Mazer v. Stein. Perhaps these principles will evolve into some clear rules and applicable standards. Most likely, litigation will continue and jurisprudence on separability will continue to proliferate. The case of maps and charts, although seemingly far removed from cheerleader outfits, fashion design, and accessorizing, provides a window into the dilemma of creating a coherent doctrine of copyright functionality. This Article casts attention maps and charts, in part, because they comprised, along with books, the original subject matter of copyright the first United States statute enacted in 1790.