Interview: Professor Fromer and the Star Athletica case

In this interview, Jeanne Fromer, professor at NYU School of Law, discusses her experience filing an amicus brief in the Star Athletica, L.L.C. v. Varsity Brands, Inc. case decided this past year. The Court ruled that the useful article doctrine did not pose a bar to Varsity Brands’ enforcement of copyright against Star Athletica in five designs of Varsity Brands’ cheerleading uniforms. Jeanne Fromer also discusses her views on and critiques of the Court’s decision.
 
Professor Jeanne Fromer specializes in intellectual property, including copyright, patent, trademark, trade secret, and design protection laws. Some of her recent and forthcoming scholarship studies trademark registrations empirically to examine whether we are running out of effective trademarks; the underregulation of certification marks; the protectability of fashion designs in intellectual property; design patent protection; and the role of patent disclosure. She is faculty co-director of the Engelberg Center on Innovation Law & Policy.
Professor Fromer is currently an Adviser for the American Law Institute‘s Restatement of the Law, Copyright. In 2011, Professor Fromer was awarded the American Law Institute‘s inaugural Young Scholars Medal for her scholarship in intellectual property.
Before coming to NYU, Professor Fromer served as a law clerk to Justice David H. Souter of the U.S. Supreme Court and to Judge Robert D. Sack of the U.S. Court of Appeals for the Second Circuit. She also worked at Hale and Dorr LLP (now WilmerHale) in the area of intellectual property. In addition, she was an Alexander Fellow with the New York University School of Law and a Resident Fellow with Yale Law School’s Information Society Project. Professor Fromer was a visiting professor at Harvard Law School, and she also previously taught at Fordham Law School.
Professor Fromer earned her B.A., summa cum laude, in Computer Science from Barnard College, Columbia University. She received her S.M. in Electrical Engineering and Computer Science from the Massachusetts Institute of Technology for research work in artificial intelligence and computational linguistics and worked at AT&T (Bell) Laboratories in those same areas. As a graduate student, Professor Fromer was both a National Science Foundation Graduate Research Fellow and an AT&T Laboratories Graduate Research Fellow. Professor Fromer received her J.D., magna cum laude, from Harvard Law School, serving as Articles and Commentaries Editor of the Harvard Law Review and as Editor of the Harvard Journal of Law and Technology.
 
Jennifer Yamin is a student at NYU School of Law graduating in May 2019 and a Staff Editor for the NYU Journal of Intellectual Property and Entertainment Law. Jennifer has focused her studies on intellectual property, entertainment law and sports law, serving as Vice President of the Sports Law Association. Jennifer received her BA in Communication Studies with a minor in legal studies from Northwestern University, where she was a Division I student-athlete and co-captain of the fencing team.
 
JY: Hi Professor Fromer. Thank you for taking the time to speak with me about the Star Athletica case. In the case, the Supreme Court establishes a two-part test to determine whether an artistic feature of the design of a useful article is eligible for copyright protection: If the feature (1) can be perceived as a 2 or 3D work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article. Can you explain the flaws, if any, with each part of this test?
 
JF: There are unfortunately a number of flaws with this two-part test. As a preliminary matter, I want to point out that the Supreme Court articulates step 1 of this test two different ways over the course of its majority opinion. The first way is the one you stated: can a claimed feature be perceived as a 2D or 3D work of art separate from the useful article? The second way is whether one can perceive the claimed feature as a pictorial, graphic, or sculptural feature separate from the useful article. It is very different to ask whether you can imagine or perceive a feature as art, and whether you can imagine or perceive it as a pictorial, graphic, or sculptural feature. The latter formulation is factual, and it is not loaded with any or very many normative aspects. Not only is this test straightforward, but it is very hard to imagine features of a useful article that don’t satisfy this test. With this reading, the two-part test effectively becomes a one-part test, consisting solely of the second part. Then, you are just asking whether a claimed feature is pictorial, graphic, or sculptural either on its own or in some other medium if imagined separately, which I also think lends itself almost always to an affirmative answer. This understanding suggests a test then that is very easy to satisfy, which is worrisome for reasons we can discuss.
 
The other way the Supreme Court articulates step 1 of the test is: “Is it a 2D or 3D work of art?” This formulation is laden with normative determinations about art that Justice Holmes cautioned against making in copyright law: in particular, that judges are not well placed to be assessing whether something has artistic qualities. In this vein, this reading scares me in another way. Even though it limits the reach of this test, it does so by having judges determine whether something is a work of art.
 
But this second reading has given me the only way to make sense of a puzzling thing in the opinion: how the Supreme Court majority simply declares that a shovel is not copyrightable. If you apply the test under the first understanding, a shovel has sculptural, and perhaps pictorial or graphic, qualities so it satisfies the first part of the test. And you can easily imagine how it would qualify as a protectable work on its own because you can imagine it separately from the useful article as a protectable pictorial, graphic, or sculptural work in some other medium. But under the 2^nd possible reading of step 1, I wonder if the Supreme Court majority thought simply, “Well, a shovel is not a work of art.” And thus it fails step 1 and is not copyrightable. I think a lot of people would disagree with that artistic conclusion, because a la Marcel Duchamp, anything can plausibly be art. And a judicial conclusion that a shovel is categorically not art is dangerous. That said, I do think this reading of step 1 gives judges an opportunity to deny copyright protection for design features they don’t perceive as art.
 
JY: Justice Thomas interprets section 101’s definition of “pictorial, graphic, and sculptural works” as saying, “In sum, a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” In what ways did the majority ignore or misinterpret the statute?
 
JF: In part two of the test, the Court oddly misread the statute and affected the results of the test. I say oddly because this is a Court that purported to do a strict statutory reading but then changed the words of the statute. In step two of the test, the Court said “would it qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.” Those last three words are not what the statute says. If you look at section 101, it says that “it shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article.” Those last six words are not the same as “the useful article.” In this case, if you articulate the test as the Supreme Court did, it’s of course easy to imagine the stripes, chevrons, and the color-blocking existing independently from the uniform, the useful article. You can have a cheerleading uniform that doesn’t have those features. And if you can imagine a uniform without those features on it, then you satisfy step two of the test.
 
But the statute says the claimed features have to exist independently of the utilitarian aspects of the article, which is a very different inquiry. The statutory inquiry requires you to first sort out what’s pictorial, graphic, and sculptural and what’s utilitarian (because you have to know if the features can exist independently of those utilitiaran aspects). As Chris Buccafusco (https://cardozo.yu.edu/directory/christopher-j-buccafusco) and I point out in both our Penn Law Review essay on “Forgetting Functionality” (https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3021116) and our forthcoming Notre Dame Law Review article on “Fashion’s Function in Intellectual Property Law” (https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2826201), features can fall into one of three categories: They can be 1) pictorial, graphic, or sculptural, thus expressive; 2) functional; 3) or both expressive and functional simultaneously, or dual-nature.
 
An example of a dual-nature feature might be features of a car’s tire. The tire might look nice, but it also has to have certain design aspects to support the weight of the car and be able to move, so at the same time certain design features of the tire might be doing both. You have to know whether a claimed feature is expressive, functional, or both to determine if it can be identified separately from and is capable of existing separately from the article’s utilitarian aspects. First of all, if the claimed feature is a dual-nature feature, just by its nature it can’t exist independently of the article’s utilitarian aspects because it is a utilitarian aspect as well as an expressive aspect. Moreover, if you separate features into the three buckets, the only way a feature could satisfy the second part of the test is if it is solely expressive. Although this all sounds very abstract, in the context of this case, we think that the stripes, zig-zags, and color-blocking on the uniforms are certainly expressive (pictorial, graphic, or sculptural) but they are also simultaneously functional, as we can discuss. Because of that dual nature, these features can’t logically be identified separately from or exist independently of the utilitarian aspects. That is precisely because the features are both expressive and functional at the same time. The Supreme Court entirely  neglected the functionality side of the equation in analyzing the copyright statute. In making this slip in its statutory reading by referring to being separable from the useful article rather than the utilitarian aspects, the majority got to an answer in the case that was not only, we think, wrong but was also wrongly analyzed.
 
JY: Can you discuss your involvement with this case? Who were the other people involved and what was the collaboration process like?
 
JF: Chris Buccafusco, a Cardozo Law professor and previous co-author of mine, and I were talking about this case. We thought that in the Star Athletica case, the Court wouldn’t even have to reach the question of what the precise separability test ought to be. We didn’t think this was a good vehicle to resolve that question. Why? Because we thought under any test for separability the features that were being claimed here by Varsity Brands in its copyright infringement claim were not separable. And the reason being is that the zig-zag, stripes, chevrons, and color-blocking were features that we thought, as per the analytical framework I just discussed, were simultaneously expressive and functional.
 
To get to the meat of the claim here: How do you say that zig-zags are functional? What are they doing? What is color-blocking doing? What are v-shaped lines doing? Or stripes? We think this is very well understood among both fashion designers and consumers. And we also think the copyright statute understands functionality in the same way. Most fashion designs are made not just to look beautiful, which they often do, but they are designed to affect the perception of the wearer. The idea is that the clothing is designed to be worn on the body, and it can and does in certain ways affect the perceptions of the wearer’s body. What do I mean by that? As one well-known example, wearing vertical stripes ought to make you look taller and thinner. If you wear horizontal stripes, it will have the opposite effect and make you look wider and shorter. More broadly, there are many optical illusions that fashion designers can employ in their design. One illusion that is prevalent in clothing is the Müller-Lyer illusion, where you have a line bracketed on each end by arrow tails. When the arrow tails bracket the line, the line looks longer than if you bracket it on each end by arrow heads. You can do this lengthening effect on clothing very easily. How? Just by having a v-neck collar and an inverted “V ” at the bottom of a skirt. These design choices create a much longer line on the body and torso. To make this more concrete in the context of this case, we think this is precisely one of the things that these cheerleading uniform designs were doing. Varsity Brands was are also using design features that accentuate the bust line and hips and using color-blocking in a way that many designers like Stella McCartney have done to also change the way the curves look on the body. The precise type of color-blocking tends to make the wearer appear curvier and slimmer. That is what the zigzags, chevrons, color-blocking, and lines are doing here in the uniforms. And that is why we think these features are functional. They are affecting the perception of the wearer in addition to also being pictorial, graphic, and sculptural features. As dual-nature features, they are inherently inseparable, not capable of existing independently of the utilitarian aspects of the article because they are utilitarian aspects of the article.
 

 
 

 
Part of this analysis requires a resolution of what “functional” means. Some people might say that features like stripes and zig-zags are not functional because they don’t keep the body warm, or that they’re not like pockets which are functional because they hold things. That is, how are design features that affect the perception of the wearer functional? We think the statute helps us resolve this question because the statute clearly suggests that design features would easily qualify as functional by stating, “a useful article is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Features that affect the perception of the wearer are not merely to portray the appearance of the article or to convey information because they are affecting the perception of the wearer, not just the appearance of the article. Under this broad understanding of functionality, these features count as functional. As a policy matter, Congress thought it was important that copyright law not broadly protect useful articles like fashion designs because their functional aspects were better treated either by satisfying patent law’s relatively stricter threshold protectability requirements or as falling into the public domain. The statutory analysis confirmed this broad, and disqualifying, notion of functionality to us.
 
For these reasons, Professor Buccafusco and I decided to write an amicus brief in the Star Athletica case. We focused on the statutory analysis and how it applied to the facts of the case to affect the outcome. We were very fortunate to get the assistance of two wonderful lawyers, Meir Feder and Matthew Silveira of  Jones Day. They filed the brief on our behalf. These lawyers gave us such useful strategic advice. We are so appreciative that we got their support. We filed our brief and it ended up influencing the lawyers arguing on behalf of Star Athletica. Their reply brief ended up incorporating similar arguments to ours. And both the lawyers and the Supreme Court discussed our arguments during the oral argument. Unfortunately, it didn’t make a difference in the opinion, which came out opposite to how we’d argued it ought to come out.
 
That said, it was really interesting and important to spend the time working on this brief and the associated scholarly articles. As a scholar, it’s not always the case that something you are working on academically actually intersects with a case or legislation or administrative action that is unfolding in the real world. But when it does, it’s great to seize it. Just working with the lawyers at Jones Day on this case, it really was helpful to think about what would convince a court. Practitioners are, for good reason, thinking about legal issues very practically, such as how courts are going to apply a test down the road in the future. That sort of practical thinking helped us to refine our thinking in this case. It was really a worthwhile experience to get involved with the case even though we wish the case had been decided the other way.
 
JY: To close, what do you think will be the future effects of this case on copyright law?
 
JF: We are seeing more copyright claims being asserted in fashion cases. Beforehand, people were asserting trademark and/or design patent claims mostly. Since the Star Athletica decision, we are seeing copyright claims being asserted as well.
 
Jennifer Yamin is a J.D. candidate, 2019, at NYU School of Law.