In Star Athletica v. Varsity Brands, the Supreme Court recently unveiled a new approach to separability. Because copyright law protects expression, not function, aesthetic features of useful articles are eligible for copyright protection only if they are separable from the functional work in which they are incorporated. But the Copyright Actdoes not define separability, and Star Athletica is the latest judicial effort to try to fill that void. Unfortunately, the new separability is open to a wide range of critiques. Relatively low-hanging fruit are the vagueness and indeterminacy of the new test, the Court's unsatisfactory attempts to avoid defining "function," the threat of overprotection resulting from the opportunistic litigation the Court invites, and the uncertainty regarding the deterrent effects on overprotection of copyright's other limiting doctrines.
But there is a deeper, less visible problem as well. By focusing only on the protectability of the particular designs at issue in an infringement case, neither Star Athletica's new separability test nor copyright's other limiting doctrines address the elephant in the room:the possible market impact of an aggregation of copyright registrations of design features with slight variations. Varsity Brands registered two hundred copyrights in variations of its similar uniform designs. Should this be considered a problem in its market? A strategy of covering the design field can have powerful foreclosure effects on markets for useful works, particularly in markets featuring standardization and high switching costs. Thus, perhaps the most significant threat today to what Congress sought to protect by adopting the separability requirement lies not in the individual copyright registration for an aesthetic design or the individual infringement suit but in the business strategy of copyright aggregation for aesthetic elements of functional works in some types of markets.
A saving grace of the vagueness and indeterminacy of the Court's new approach to separability is that it punted the question of artistic functionality to lower courts. They can apply downstream copyright doctrines-originality, exclusion doctrines (such as merger doctrine, scenes à faire, and the prohibition on copyright for processes,systems, and methods of operation), and infringement analysis-in ways that limit the potential overreach of the Court's new take on the useful articles doctrine in individual cases. But the problem is thatsuch limiting readings ignore the broader-frame issue of aggregative registration strategies. Instead of opting for illusory simplicity, the Court could have gone further to resolve the difficult problem of functionally integrated expression had it defined function through the lens of aggregate anticompetitive effects and developed a workable theory of copyright abuse. While it did not do so, however, its new separability doctrine does not preclude lower courts from addressing those issues with a view to Copyright Act goals of protecting communicative expression, channeling creative works to the right intellectual property domains, and promoting competition in functional works markets. Doing so could lead lower courts to expand the kinds of function deemed to make aesthetic features inseparable for useful articles cases-thereby ensuring a more realistic conception of function. Thus, pursuant to the middle-ground approach recommended here, pictorial, graphic, or sculptural elements with objectively definable perceptual and neurological impacts when integrated into useful articles could be considered analytically inseparable because of those impacts. By contrast, a presumption of separability could attach to more subjective and culturally grounded types of function. In turn, concerns about anticompetitive effects of aggregative copyright registration practices could be addressed by the development of a workable copyright abuse defense to deter such practices where called for. Courts engaging in this interpretation of the new separability could well blunt the most worrisome consequences of the Supreme Court's approach in Star Athletica.
Lili Levi, The New Separability, 20 Vand. J. Ent. & Tech. L. 709 (2018).