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William O’Brien Addresses the Uncertain Boundaries of the Copyright Law with Respect to “Useful Articles”

The Intellectual Property Law Section of the California State Bar recently published One LLP Partner William O’Brien’s “Copyright Commentary” column in the Spring 2016 edition of its magazine New Matter.  In a commentary entitled, “Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In?,” Bill points out the uncertainty that has been created by conflicting decisions in U.S. Courts of Appeals about when features of useful articles—ranging from clothing to cars—can be protected by copyrights rather than by other forms of intellectual property, like utility or design patents, that are more carefully tailored for that purpose.  Bill points out the important practical effects of applying copyrights to useful articles, such the much longer term of protection for copyrights and protection of features that would not meet patent-law requirements for novelty and non-obviousness.

To illustrate the present uncertainly in copyright law, Bill points out that ten different legal standards have been proposed for determining when “pictorial, graphic or sculptural” features of a useful object should be considered sufficiently separable from the object itself to qualify for copyright protection.  He says that, amidst this uncertainty, “some courts are now extending copyright protection to features whose separability from a useful article is questionable at best.”  For example, Bill cites decisions by the U.S. Court of Appeals for the Ninth Circuit saying that two cars—the Batmobile and the yellow Ford featured in the movie Gone in Sixty Seconds—could be given copyright protection as “characters.”  On that basis, the Circuit upheld a copyright infringement judgment against an auto replicator who had waited for the Batmobile’s design patents to expire before making a replica.  Bill also discusses a recent decision in which the Sixth Circuit held that the ornamental details of a cheerleading uniform were separate from the uniform’s “utilitarian function” of covering the body and could be protected by copyright.

Pointing up the lack of predictability in the present copyright law, Bill contrasts the recent Ninth Circuit decisions protecting cars as characters with a much earlier Ninth Circuit decision that denied copyright protection to the character Sam Spade from the book The Maltese Falcon.  He says, “It is hard to understand denying character status to Sam Spade—memorably played by Humphrey Bogart—but granting it to a souped-up yellow Ford.”

Bill predicts that the present uncertainty is likely to be accelerated by ongoing trends in media and technology, such as “convergence between physical products and works of authorship” and “improved interactivity and artificial intelligence,” which “will lead to even more opportunities to construe machines as ‘characters.’”  He asks, “Is Apple’s Siri personal assistant program a ‘character’—with her own voice, mannerisms, and even jokes, which make her far more human-like than the Batmobile?  If so, can Apple’s interactive technology—or even the iPhones that use it—be protected for 95 years under the Copyright Act?”  Bill concludes that, “Absent Supreme Court intervention, there is no clear limit to the expansion of copyright protection for product designs.”

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