Pam Samuelson (Berkeley Center for Law & Technology)

How Intellectual Property Law Conceptualizes Designs

Should form follow function in the design of everyday things? Most modern designers would say yes, that is a desirable outcome. Intellectual property law has a more mixed reaction to the integration of form & function. This integration is welcome in the context of patent law. But copyright protection is available for the design of pictorial, graphic & sculptural (PGS) works only if the artistic or expressive elements of the design can exist separately from any intrinsic utilitarian function the design may serve. Because copyright is very easy to obtain, lasts longer, & has more generous remedies, some designers have sought to get both copyright and patent protection, or to assert copyright protection for designs that are more properly the subject matter of patent protections. Courts have developed many different tests to address the separability of artistic and functional elements in PGS works. The Supreme Court may address which is the appropriate test in the Star Athletica v. Varsity Brands case now pending before it. Varsity claims copyright in designs for cheerleader uniforms. Star Athletica has defended by asserting that copyright is invalid or not infringed by its similar uniforms because any artistic elements are inseparable from the functionality of the designs. This talk will discuss the muddle the courts have made of the separability doctrine and will suggest an approach that accomplishes the Congressional objective to allow protection of applied art, but to leave designs of most industrial products to the rigors of marketplace competition.