LawFlash

Draft Revisions to Copyright Registration Practices Reflect Broader Protection of Product Design

March 26, 2019

The US Copyright Office (Copyright Office), on March 15, published draft revisions to hundreds of sections of its registration guidelines (Draft Revisions) in its Compendium of U.S. Copyright Office Practices (Compendium).[1] The Draft Revisions will implement recent regulatory changes and case law developments, including the revised test for identifying copyrightable features of useful articles in light of the US Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).[2] Key changes relating to useful articles (e.g., furniture, clothing, cars) support expanded protection opportunities as well as new practices for cost-effective group registrations. Interested parties can submit comments on the Draft Revisions until May 14, 2019. The September 2017 version of the Compendium[3] remains in effect until the Draft Revisions are finalized and adopted.

Useful Articles v. Works of Artistic Craftsmanship

In 2017, the US Supreme Court expanded the range of protectable features of useful articles[4] by (1) rejecting the prior requirement that the useful article remain equally useful after removal of the artistic features; and (2) eliminating consideration of any design process, commercial appeal, or intended use.[5] The Draft Revision introduces detailed registration guidance implementing this decision, including clarification of a longstanding—but seemingly forgotten—distinction between useful articles and works of artistic craftsmanship. The reemergence of this distinction opens additional opportunities for a variety of products.[6]

As a quick refresher, useful articles are distinguished from copyrightable works by having “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”[7] By contrast, “works of artistic craftsmanship” are described as “essentially artistic” works even though “they may have some ‘incidentally . . . useful purpose.’”[8] Useful articles are entitled to copyright protection for separable artistic features while works of artistic craftsmanship are entitled to copyright protection for the overall shape of their designs. No definitions of “intrinsic” or “incidental” are provided in the Draft Revisions, but “[i]n determining whether an article does – or does not – have an intrinsically utilitarian function,” the Copyright Office will “focus[] solely on the work itself”—not on intended use.[9] And, in a borderline case, the Copyright Office “will treat [such] item as a useful article” and apply separability analysis.[10]

Under the Draft Revisions, useful articles include tools, vehicles, clothing, furniture, appliances and the like.[11] Per the Copyright Act, only artistic features “that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article” may be protected by copyright.[12] Accordingly, the Draft Revisions maintain that copyright registration is not available for “the overall form, shape, or configuration of the useful article itself, no matter how pleasing or attractive it may be.”[13] The scope of protectable features, however, has expanded due to the revised two-step test set forth in Star Athletica, namely: (1) identify whether any features “can be perceived as a two- or three-dimensional work of art separate from the useful article”; and (2) determine if that feature “would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”[14] To clarify how this test will work in practice, the Draft Revisions include two notable changes:

  • Separable Features May Enhance the Functionality of the Useful Article
    Prior registration practices required “the utilitarian aspects of the [useful] article [to remain] completely intact” after removal of the proposed artistic feature.[15] The Draft Revisions significantly relax this standard, as directed by the Supreme Court, plainly stating “a separable artistic feature may be copyrightable ‘even if it makes that [useful] article more useful.’”[16] So long as the feature is “nonuseful” when “imaginatively separated” from the article, the feature is registrable, if sufficiently creative.[17]
  • Analysis Focuses Only on Separable Features (Not the Remnants of the Useful Article)
    Similarly, prior registration practice analyzed whether “the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works.”[18] The Draft Guidance eliminates this part of the analysis, explaining that the new focus will be “on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.”[19]

Morgan Lewis has been on the forefront of registering two- and three-dimensional features of useful articles under these broader standards. The long-awaited articulation of these changes in the Compendium should facilitate more efficient and objective Copyright Office evaluations of design features across a variety of products that, prior to Star Athletica, would have been deemed “non-separable.”

New guidelines for registering works of artistic craftsmanship provide additional opportunities for a variety of retail and home décor industries. Whereas the overall configuration of useful articles remains non-protectable, “the overall shape and configuration of” a work of artistic craftsmanship can be protected, except for “mechanical or utilitarian aspects.”[20] The different scope of protection depends on the Copyright Office’s determination of whether the work has an “intrinsic” or merely “incidental” utilitarian function.[21] As with many copyright issues—from fair use to the evolving nature of “authorship” in the digital age[22]–-a case-by-case analysis will apply and case law will help shape the boundaries. For now, the Draft Revisions provide the following examples of works of artistic craftsmanship: stained glass windows, wallpaper, and piggy banks.[23] For sufficiently creative works, the registration will protect the overall configuration but exclude, for example, the “dowel hanger at the top of a tapestry or the plug in the belly of a piggy bank.”[24]

While additional public comment before May 14, 2019 may lead to further clarification, it is clear that the following cost-effective benefits of copyright registration are now available for many works subject to increasing competition in a global marketplace:

  • Immediate access to federal courts[25]
  • Relatively quick registration determinations (six to nine months for most online applications, with substantially expedited processing times available in certain circumstances)[26]
  • Registration of the design with the US Customs and Border Protection to help seize infringing imports
  • Availability of statutory damages and attorney fees to remedy infringement
  • Public record of claim to copyright in the work
  • Presumption of ownership for timely-registered works
  • Registration any time during the term of protection (e.g., 95 years from publication of works made for hire)
  • Independent protection analysis from other forms of IP (e.g., design patent or trade dress protection is not a bar and such protections should be considered in a comprehensive protection strategy)[27]
  • Affordable and long-lasting protection (with government fees under $100)

In addition to updates concerning design protection, the Draft Revisions also implement a host of recent regulatory changes, which are part of ongoing efforts to modernize copyright law and the Copyright Office. These changes include:

  1. a revised group registration option for unpublished works, which allows 10 works per application, provided certain conditions are satisfied (changes are notable for companies that register works acquired by assignment);[28]
  2. new and revised practices (and some limitations) for registering groups of up to 750 published or unpublished photographs;[29]
  3. revised practices for group registration of serials (journals and other periodicals),[30] newspapers,[31] and newsletters;[32] and
  4. certain related information about the new group option for secure test items.[33]

While largely beneficial because of the individual protection for each work within a group registration (for the price of one application), these changes also introduce additional nuance to the registration process by specifying details down to file-format and file-naming conventions. With a dozen pending rulemakings,[34] and new registration and recordation systems in the works,[35] modernization should continue to present opportunities for increasingly cost-effective protection of valuable copyrights where practitioners can navigate the evolving nuances and developing case law.

Contacts

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Rachel E. Fertig (Washington, DC), Joshua M. Dalton (Boston), or any of the following lawyers from Morgan Lewis’s trademark/copyright team:

Boston
Rachelle A. Dubow

Chicago
Kathryn A. Feiereisel

Philadelphia
Kenneth J. Davis
John L. Hemmer

San Francisco
Brent A. Hawkins
David R. Kocan
Carla B. Oakley
Lindsey M. Shinn
Sharon R. Smith

Washington, DC
Kristin H. Altoff
Karen A. Butcher
Ron N. Dreben
Dana S. Gross
Anita B. Polott
Jane W. Wise


[1] Redlines showing the Draft Revisions to the current Compendium are available on the Copyright Office website. U.S. Copyright Office, Public Draft for the Compendium of U.S. Copyright Office Practices (3d ed. 2019), (Draft Revisions).

[2] See Joshua Dalton & Sarah Paige, Supreme Court Outlines New Test for Copyrightability of Useful Articles, Morgan, Lewis & Bockius LLP, (Mar. 24, 2017).

[3] The current version of the Compendium is available on the Copyright Office website. U.S. Copyright Office, Compendium of U.S. Copyright Office Practices (3d ed. 2017) (Compendium (2017)).

[4] 17 U.S.C. § 101 (“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. An article that is normally a part of a useful article is considered a ‘useful article.’”).

[5] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1014-15 (2017) (The “inquiry is limited to how the article and feature are perceived, not how or why they were designed . . . [and n]othing in the statute suggests that copyrightability depends on market surveys.”)

[6] See Draft Revisions § 925.3 (“By its express terms, the statutory definition for “[p]ictorial, graphic, and sculptural works” distinguishes between ‘works of artistic craftsmanship’ on the one hand, and ‘the design of a useful article’ on the other.”) (citing 17 U.S.C. § 101)).

[7] 17 U.S.C. § 101 (emphasis added). The Copyright Office has also revised prior sections on x-rays, charts, and blank forms to confirm that an “item that merely conveys information is not considered a useful article, even if that information is inherently useful.” Draft Revisions § 924.1 (emphasis added).

[8] Draft Revisions § 925.1 (quoting United States v. Perry, 146 U.S. 71, 75 (1892)) (emphasis added).

[9] Id. § 924.1 (stating, for example, “lamps are inherently useful because they provide illumination, and the shape, cut, and dimensions of an article of clothing is inherently useful because it covers the body”) (internal citations omitted).

[10] Id. § 925.3.

[11] See id. § 924.1.

[12] 17 U.S.C. § 101 (defining “[p]ictorial, graphic, and sculptural works”).

[13] Draft Revisions § 924.3(F) (citing Star Athletica, 137 S. Ct. at 1010).

[14] Star Athletica, 137 S. Ct. at 1007; accord Draft Revisions § 924.3.

[15] U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 924.2(A) (3d ed. 2014), https://www.copyright.gov/comp3/docs/compendium-12-22-14.pdf (“Compendium (2014)”) (emphasis added).

[16] Draft Revisions § 924.3(C) (citing Star Athletica, 137 S. Ct. at 1014) (emphasis added).

[17] Id. § 924.3(C) (quoting Star Athletica, 137 S. Ct. at 1013, 1014).

[18] Compendium (2014) § 924.2(B).

[19] Draft Revisions § 924.3(E) (quoting Star Athletica, 137 S. Ct. at 1013) (emphasis added).

[20] Id. § 925.3 (internal citations omitted); id. at § 925.1 (“A work of artistic craftsmanship is a ‘work of art’ that primarily serves a decorative or ornamental purpose, but ‘might also serve a useful purpose.’”) (citing Star Athletica, 137 S. Ct. at 1011).

[21] Id. § 925.3.

[22] See John Polito, Lindsey Shinn, & Kayla Clark, EU Fintech Regulation Raises US Copyright Questions, Morgan, Lewis & Bockius LLP (Mar. 19, 2019); see also Draft Revision § 313.2 (adding the following language to the discussion of the “human authorship” requirement: “The crucial question is ‘whether the work is basically one of human authorship, with the computer [or other device] merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by man but by a machine’”) (quoting US Copyright Office, Report to the Librarian of Congress by the Register of Copyrights 5 (1966)).

[23] Draft Revisions § 925.1. Some of the other examples, such as paperweights and bookends, may be better classified as sculptures, where there is no mechanical aspect to remove. See id. § 924.1 (“‘A sculpture does not become a useful article simply because it could potentially be used as a doorstop or a coat rack.”).

[24] Id. § 925.2.

[25] See Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019) (holding that copyright registration (or refusal) is a prerequisite to filing a copyright claim in federal court, except for certain statutory carveouts); see also John Polito, David Kocan, & Tania Prado, Supreme Court to Consider Copyright Registration-Before-Suit Rift, Morgan, Lewis & Bockius LLP (July 12, 2018).

[26] See US Copyright Office, Registration Processing Times, Copyright.gov, (Oct. 2, 2018), (indicating that nearly 30% of all claims require correspondence, which can lengthen examination times); US Copyright Office, Circular 10: Special Handling, Copyright.gov, (Sept. 2017).

[27] Draft Revisions § 905.

[28] Id. § 1106; see also Group Registration of Unpublished Works, 84 Fed. Reg. 3693 (Feb. 13, 2019).

[29] Draft Revisions § 1114 (“A registration for a group of photographs covers the copyrightable authorship in each photo that is submitted for registration, and each photo is registered as a separate work.”); see also Group Registration of Photographs, 83 Fed. Reg. 2542 (January 18, 2018).

[30] Draft Revisions § 1107; see also Group Registration of Newsletters and Serials, 83 Fed. Reg. 61,546 (Nov. 30, 2018).

[31] Draft Revisions § 1108; see also Group Registration of Newspapers, 84 Fed. Reg. 3,698 (Feb. 13, 2019).

[32] Draft Revisions § 1109.

[33] Draft Revisions §§ 1101, 1106.1; see also Secure Tests, 82 Fed. Reg. 52,224 (Nov. 13, 2017).

[34] See generally, U.S. Copyright Office, Rulemakings: Open Rulemakings, Copyright.gov (last visited March 26, 2019).

[35] See generally, Registration Modernization, 83 Fed. Reg. 52,336 (Oct. 17, 2018); Modernizing Copyright Recordation, 82 Fed. Reg. 22,771 (May 18, 2017).