Not So Cheerful About Varsity Brands (Crosspost)


(Written for master trademark attorney Ron Coleman’s Likelihood Of Confusion® blog, crossposted with his gracious consent.)

So last Wednesday (March 22, 2017, if you’re joining us late) the Supreme Court of the United States issued its decision in Star Athletica, LLC v. Varsity Brands, Inc, et al

And a very small, highly specialized subset of LawTwitter went nuts.

Ron Coleman collected some great examples on his post Rah Rah Raw. (Trademark attorneys: Clever names on demand.) On the one hand, we have experienced copyright/fashion lawyers saying things like this:

On the other hand, we have intellectual property law professors saying things like this:

If it’s not clear, that was a response to the prior tweet. Or even things like this:

…when they really ought to know better. 140 character limit or not, that seems a bit over the top. But is it? Let’s review the decision.

First, a very brief summary of patent law vs. copyright law. Patents protect useful inventions. Copyrights protect artistic creations. In a sense, patents “trump” copyrights, in that you cannot use a copyright to protect a useful invention. (For instance, you cannot copyright the shape of an improved airplane propeller and claim nobody else can make a similar propeller. That’s what patents are for.) Patents are harder to get than copyrights, have much shorter terms, and cost a lot more both to obtain and to enforce. On the other hand, you can usually make a lot more money in a patent infringement suit than in a copyright infringement suit, there are fewer defenses to patent infringement than copyright infringement, and defenses to patent infringement are harder to raise.

Just to make things conf… I mean, interesting there are also what are known as design patents. These protect the “ornamental design of useful articles.” They are sort of a bizarre hybrid of patents and copyrights that have some of the worst (and best) features of both. They are outside the scope of the decision, but keep in mind that they exist when discussing this area of the law, if for no other reason than that “design” does not mean quite the same thing to a (design) patent lawyer that it does to a copyright lawyer, and I think that causes some of the confusion we are seeing.

Speaking of designs, in this context, designs are the key. Both parties in the Varsity Brands case make cheerleader uniforms, including non-team-specific uniforms with a variety of geometric designs on them. Here are examples:


Those are uniforms for which Varsity Brands, Inc. (the original plaintiff, which is why I call the case Varsity Brands, hereafter “Varsity”) had registered copyrights. Star Athletica, LLC (hereafter, “Star”) made some competing uniforms which allegedly infringed said copyrights, and Varsity sued Star for copyright infringement.

Please allow me first and foremost to direct your attention to Footnote 1 on Page 11 of the main opinion:

1We do not today hold that the surface decorations are copyrightable. We express no opinion on whether these works are sufficiently original to qualify for copyright protection, see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 358–359 (1991), or on whether any other prerequisite of a valid copyright has been satisfied.

Failure to read/understand/accept the text of that footnote is, in my opinion, behind most of the more sensational tweets/comments such as Professor Fromer’s supra. The assertion that you can now slap a copyrighted design on any old thing and claim the thing itself enjoys the protection of copyright meets its first and highest hurdle in the fact that the design must in and of itself be copyrightable. The opinion is not addressing the question of copyrightability of the underlying design. (I myself, though not familiar with the particulars of the registrations, find them somewhat dubious in that regard.) It is assuming arguendo that the design is copyrighted, and resolving an old and complex circuit split on the legal ramifications of attaching a copyrighted design to a useful article.

And yes, there was a complex split. I have seen people claiming as many as six different tests existed for determining when useful article limitation overcame copyright protection. Many of them considered, to some degree, how functional the article was as an independent factor. And this is not a new idea. It is an old principle, recently re-affirmed in TrafFix Devices, Inc. v. Marketing_Displays, Inc. that you cannot use trade dress to create “perpetual patents.” Similarly, in Kohler Co. v. Moen, Incorporated the same rule was applied to trademarks. All of the tests attempting to do the same with copyright were created by intelligent judges and it is not my intent to dismiss or belittle them.

But I think that Occam’s Razor (the original, not the newfangled version) is very relevant here: “Do not multiply entities beyond necessity.” The intent of copyrights is to protect artistic works (henceforth I will not call them “designs.”) Using functionality as an independent test, in the case of artistic works applied to useful articles, is adding an unnecessary entity. And asking questions about intent versus perception or relative economic factors, as some of the tests did, is definitely adding unnecessary entities.

As a simple example, Justice Breyer’s dissent wants to apply a somewhat different approach:

Can we extract those features as copyrightable design works standing alone, without bringing along, via picture or design, the dresses of which they constitute a part? (Dissent, page 10.)

However, as the main opinion points out, not only does this lead to implausible results (You can’t copyright a square canvas: does this mean any painting made on one can’t be copyrighted?) but it imposes a requirement not found in the Copyright Act. As the first paragraph of the syllabus says:

The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” 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.

There are two “entities,” if you will:

  1. Can you identify the artistic work separately?
  2. Can it exist independently of the useful article?

In Varsity Brands, the answer to both questions is clearly yes. The artistic work is the pattern of lines and figures. We could, with a really sharp knife, take the top layer of fabric off and create an independent work without destroying or limiting the usefulness of the underlying article in any way. How artistic it would be is a separate question, but if this:

…is a prized exhibit of one of the world’s great art galleries, who are we to say that Varsity’s works are unworthy of a little protection?

In any event, Justice Breyer’s proposed test, just like all the other tests, includes new entities which are neither necessary nor present in the statute. The test set forth in the opinion puts the burden exactly where the statute set it all along, and just as importantly, where the underlying principle of copyright protection would reasonably set it: on the independent existence and originality of the artistic work. Once they are established the “canvas” upon which artistic work rests, be it an actual canvas, a t-shirt, or a cheerleading uniform, matters not.

So what does all this mean to practitioners on the ground?

Going forward, this test will put a lot more emphasis back on the fundamentals of copyrightability and the doctrines governing it. Copyrightability is a mixed question of fact and law, heavily fact-dependent. Principles of copyrightability determination such as scènes à faire, the merger doctrine, and even the basic requirement of minimal artistic creativity set forth in Feist are untouched by the decision. These principles will form the basis for defense of copyright infringement allegations involving useful articles, rather than elaborate and circuit-dependent tests regarding how the functionality affects the copyright protection afforded the copyright owner.

Likewise, when the useful article itself is ornamental, preemption by the principles of design patent law will still come into play. If the ornamental design and the useful object are irretrievably combined, only design patent protection will be available. And that distinction will still be available as a defense to any claim of copyright infringement in the article as a whole.

For an example of how that could apply to fashion, consider the work of Tomoko Nakamichi:

In the case of clothing such as that made by Ms. Nakamichi, the artistic work is usually not going to be any individual decoration, but rather the article of clothing as a whole. If you remove the “artistic” parts, there is almost nothing useful left. Part of that is the non-two-dimensional nature of the artistic work. You will note that the Varsity Brands opinion talks a lot about applying two and three-dimensional artworks to useful articles. But here the subcomponents are mechanically integrated into the article itself, and removing them would cause the article to be less useful. Distinctions like this will become more important with the alternative tests that existed before Varsity Brands no longer available.

Relatedly, copyright law has an extensive body of doctrine as to how much of a copyrighted artwork must be copied to create an infringement and how much modification an alleged infringer must perform before the alleged infringing work is no longer a copy or an infringing derivative work. Those principles still apply, full force, to any allegation of copyright infringement related to a useful article under Varsity Brands. Along with standard copyrightability defenses and patent/design patent preemption, these provide accused infringers substantial protection from the tsunami of liability some commenters are predicting in the wake of Varsity Brands.

I hope you found this post educational. Even more importantly, to the extent you may have been worried about a sudden surge in potential liability on behalf of creators I hope it has reassured you somewhat. If readers have any questions or comments, I would be delighted to hear them. Thanks for reading!

Patents and the Software Developer – A Current Snapshot


Software patents are a pretty confusing topic, and that’s if you’re a patent attorney who understands software. If you’re not, it goes way beyond confusing. The situation has been confused since the Supreme Court ruled in a case called Bilski v. Kappos, in which it basically said software patents were okay, unless they weren’t. That caused some problems. So, ever helpful, more recently the Supreme Court ruled on a case called Alice Corp v. CLS Bank International, which could be read as saying that software patents aren’t okay, except when they are. So. That clears that up, right?


Okay. More details are in order.

The problem, fundamentally, is that you can only get a patent for what patent lawyers call patentable subject matter. Ideas, by definition, are not patentable subject matter. (Nor are they artistic creations, which is why, to oversimplify somewhat, you can neither patent nor copyright an “idea.”) The laws of nature, logic, and mathematics are, likewise, not patentable subject matter. To be patentable subject matter something must be a “process, machine, manufacture, or composition of matter.” We usually refer to patents for a process as “method” patents, in that one patents a method which comprises (“comprises” is how patent lawyers say “is made of, consists of, or otherwise is composed of”) a series of specific steps which arrive at a specific result. Software patents are by definition method or process patents: a patent on a machine which is incidentally run by software is not a software patent: it’s a machine (or device) patent.


Sample embodying device: COMPUTER 202 displaying PROGRAM 208. Art by me. Don’t judge me.

Many patent lawyers, including the author, will usually include claims on a machine which runs software which embodies the method in a patent application as well as the method itself, to try to obtain the broadest possible protection (and in case later the Supreme Court just says, “You know what? Software patents. Just not okay, period.”) But in the end it’s about the method.

So Alice (You thought I forgot, didn’t you?) set forth a new test which we are supposed to use to evaluate whether a particular method, or software incorporating it, is patentable subject matter. Or rather, it stated that a test it had previously established to determine whether a “law of nature” was patentable subject matter applied to method patents generally. (This case was Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc.) Here are the elements:

First, does the patent claim an abstract idea, like an algorithm, that is entirely separable from any physical embodiment? For software patents, the answer to this is almost always going to be “yes.” Which means the second part of the test applies.

In the second step we try to find out whether the patent adds to the abstract idea”something extra” that embodies an “inventive concept.” If there is not, then the claim does not address patentable subject matter, and the patent fails. If it does, then we go into the normal patent tests of novelty (Is this already known to the world?) and unobviousnes (Would a person of ordinary skill in the relevant art consider this an obvious solution to the problem being addressed?)

Here are a few comments the Supreme Court made to try to make this clearer:

  • A mere instruction to implement an abstract idea on a computer “cannot impart patent eligibility.”
  • “Stating an abstract idea ‘while adding the words “apply it”‘ is not enough for patent eligibility.”
  • “Nor is limiting the use of an abstract idea to a particular technological environment.”

So the question of the hour is, is whatever you, the intrepid software developer, wants to patent an abstract idea, and if so, have you come up with an “inventive concept” which makes it patentable?

Spoiler: It very likely is, and you very likely have not. I hate to be a downer, but them’s the odds. That doesn’t mean you shouldn’t ask a patent attorney to review your invention, nor does it mean that they will automatically tell you it’s not patentable. But prepare yourself for a negative response, and then anything else will be a pleasant surprise.

How do you know whether you have added an “inventive concept?” In the context of software patents, this seems to be evolving in the direction of a “technological improvement,” which of course seems to be somewhat redundant with the “novelty” requirement, but nobody said this has to make sense. Here’s a very, very rough rule of thumb: if your invention performs some task in a way which is different from the way in which that task has historically been done, you may have added an inventive concept. If it performs some task in a way which a person of ordinary skill would see as actively less advantageous than the historical approach, but in fact improves the solution to the task, you have a very good chance of having added an inventive concept. Contrarily, if you are simply doing something which has not been done historically, but which simply implements a straightforward solution to a novel problem, you very likely have not added an inventive concept.

Suppose, for instance, that nobody had ever made a “po-kee-no” computer game. (That is, a computer game which implemented a known game which is a combination of poker and keno.) To make such a game, you would need an algorithm which implemented the rules of po-kee-no in such a way that a computer could evaluate any given po-kee-no “hand” and determine the payout. No matter how clever your algorithm, it in the end would be an abstract idea (“the rules of po-kee-no, evaluated by a computer”) and would not include any inventive concept since you did not invent the rules of po-kee-no nor the traditional approach to converting game rules to compute algorithms. So no patent for you!

However, further suppose you had discovered that while it is not part of the rules of po-kee-no, it is much faster and more efficient to evaluate a po-kee-no hand by first looking to see if there are any jacks in it. Mathematically, this makes no sense (and, I hasten to add, it’s not actually true.) So while it is still an abstract idea (“look for jacks first,”) it contains an inventive concept which is not suggested by either the algorithm (“follow the rules of po-kee-no”) or the traditional approach to implementing game rules on a computer (“turn the rules into mathematical/logical statements and evaluate the statements.”) So there is a good chance that a method of playing po-kee-no on a computer which looked for jacks first would be patentable under Alice.

For those of you who are game developers, here’s a link to another little article on some game-specific Alice-type decisions.

Video Game Patents Are in Deathmatch Mode

Note that more than eighty percent of the patents adjudicated after Alice have been found invalid!

At the end of the day, there is a whole host of other questions which come into the analysis of whether to patent a software method. (Including whether you have the funds to support both the application process and any necessary enforcement proceedings.) But at the heart of it, be honest with yourself about whether you have really created a technological improvement, which is a very high bar to clear, or whether you have just come up with a kick-ass implementation, which is nothing to sneeze at even if you can’t patent it. I hope that gives you a sense of the current thinking of patent attorneys regarding software patents. As always, questions and comments are welcome.


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