In 2003 the U.S. Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp. emphasized that “[t]he rights of a patentee or copyright holder are part of a ‘carefully crafted bargain,’ … under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution.” Meaning that because copyright and patent owners struck this bargain, courts need to guard against extending that protection through a different form of intellectual property. Otherwise the “monopoly” of patent and copyright owners would be extended, upsetting the bargain.

Although Dastar addressed the need to keep a clear demarcation between trademark rights (which can last forever) and copyrights, similar concerns require that a careful line be drawn between copyright protection (which generally lasts 95 years from “publication”) for useful articles and design patents for similar subject matter (which last 15 years from the date granted). Except that, as we’ll see below, the line separating the two becomes blurred from time to time.

Drawing that line between copyright and design patent protection was the subtext in a case involving copyrights related to flooring, Home Legend, LLC v. Mannington Mills, Inc., for which the Supreme Court denied certification on October 5, 2015Home Legend, a flooring company, sought a declaratory judgment that its sale of laminate flooring designed to mimic the look of distressed wood did not infringe a competitor’s registered copyright in a two-dimensional “décor Paper” design known as the “Glazed Maple Design.” The copyright holder, Mannington Mills, countersued for copyright infringement. The district court granted summary judgment to Home Legend, arguing that the design lacked the originality necessary to be eligible for copyright protection and was not separable from the functional element of the flooring. But the 11th Circuit reversed, finding instead that the design was both physically and conceptually separable from the underlying functionality of Mannington Mills’ laminate flooring product. Home Legend petitioned the Supreme Court for a writ of certiorari for it to take up the case. Although the focus of Home Legend’s briefing was on the copyrightability of the design and the notion of separability with regard to copyrights for useful articles, it raised a broader concern. Home Legend asserted in a reply brief in support of its writ for certiorari that “[I]t is patent law, not copyright, which properly conveys protection for the ornamental aspects of industrial designs, i.e., the ornamental aspects that determine the appearance of useful articles like clothing and flooring.”

Home Legend is not the first to express concern and frustration at the apparent overlap between patent and copyright. For a long time courts have resisted extending copyright protection to designs relating to useful articles, such as clothing—“giving copyright protection to clothing, which has a utilitarian function, would allow for the protection of patent-like features without having to fulfill the rigorous standards for obtaining a design patent.” Winfield Collection, Ltd v. Gemmy Indus. Corp., 147 Fed.Appx. 547, 551 (6th Cir. 2005). Moreover, for much of the 20th century, Copyright Office regulations codified the doctrine of “election of protection,” whereby copyright registration would be denied for useful pictorial, graphic, or sculptural expressions if a design patent application had been filed for the same subject matter. “The public policy ground was based on the theory that it is an undue extension of the patent monopoly to allow, after the patent has expired, a copyright for the same design.” 60 FR 15605, Supplementary Information (March 24, 1995).

This concern over extending monopolies began to erode in 1954 when the Supreme Court in Mazer v. Stein, 347 U.S. 201 (1954) found that there was nothing in the patent or copyright statute that precluded an overlap in protection between design patent and copyright. The Mazer court did not, however, express a view on the election of protection doctrine. In 1974, the Court of Customs and Patent Appeals finally did address the doctrine head-on, and found it to be unsupported by the statutes. In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974). Following Yardley, PTO reversed its policy on the election of protection doctrine. The Copyright Office took an additional 20 years to do so, rescinding the doctrine in 1995 and promulgating a new regulation allowing dual filing, which remains in effect today. See 37 CFR § 202.10(a) (1995).

But, as the Copyright Office’s comments in the federal register point out, the Supreme Court in Mazer“expressly refused to entertain the issue of whether the grant of either monopoly precluded that of the other.” 60 FR 15605, Supplementary Information. Now that the Supreme Court has signaled a concern over monopoly grant overlap in Dastar, the question remains open whether an “election of protection” doctrine makes sense.

Home Legend’s comment that only design patent protection should be available for “ornamental aspects that determine the appearance of useful articles” has some resonance, but also begs the question. Attempting to identify when ornamental instead of functional aspects determine appearance—i.e., when form drives function or function drives form— often proves a bedeviling task. Home Legend’s reply brief was focused on a recent 6th Circuit opinionVarsity Brands, Inc. v. Star Athletica, LLC, that addressed the copyrightability of useful articles in the form of cheerleader uniforms. In fact, the 6th Circuit referred to this unspooling of form and function as a “metaphysical quandary,” and the dissent commented that “[t]he law in this area is a mess….” The dissent called for “much-needed clarification. “This blog has already commented that determining whether copyright protection should extend to useful articles is an exercise in metaphysics”.

The tension is heightened because copyright is not supposed to provide any protection to functionality or general ideas. The test for ornamentality of a design patent, by contrast, can allow for some slight degree of functionality in the design. That is, properly applied, the ornamentality test considers not whether the design has any functional aspects to it, but rather whether the design was “dictated solely by” the article’s function. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148 (1989). So long as the functionality of the article can be achieved by alternative designs (which is known as the “multiplicity of forms” approach), monopolization of functionality is not present. For an excellent article on this subject, read this.

The separability test deployed in copyright cases is supposed to protect against the kind of “copyright creep” that would inadvertently extend protection to functionality. However, how and where the separability line gets drawn can appear awfully subjective, and may result in de facto extensions of copyright law into areas meant for patent law. The “election of protection” doctrine provided some hedge against “copyright creep”— it forced the applicant to take its chances when it decided to file for copyright protection for a design, which could be invalidated for its relationship to functionality, instead of design patent protection, which allows for a closer tie between the form and the function. However, the Supreme Court may be willing to just simply separate the two types of protection and end the overlap altogether as it did in Dastar.

The Supreme Court’s denial of certiorari in Mannington Mills does not end the controversy. It remains to be seen whether Star Athletica will petition for certiorari in the Varsity Brands case. As design continues to grow in importance in areas like mobile devices, graphic user interfaces, and industrial machinery, the overlap between copyright and design patent, and the blurred lines between form and function, will become an increasingly prominent issue. Additional guidance would sure be appreciated.