United States District Court, C.D. Illinois, Springfield Division
MYERSCOUGH UNITED STATES DISTRICT JUDGE.
have filed a Joint Motion to Reconsider Summary Judgment
Order (d/e 134). The Motion is GRANTED IN PART and DENIED IN
PART. In light of the recent United States Supreme Court
case, Star Athletica, L.L.C. v. Varsity Brands,
Inc., 137 S.Ct. 1002) (2017), the Court will reconsider
the portion of its Opinion (d/e 115) granting partial summary
judgment in favor of Plaintiff on Count I on the ground that
Plaintiff has a valid copyright. Upon reconsideration, the
Court finds that partial summary judgment in favor of
Plaintiff was properly granted.
lawsuit, Plaintiff alleges, in part, that Defendants have
infringed on Plaintiff's copyrighted product, Sparrow
Clips. A Sparrow Clip is a clothespin with a silhouetted bird
design on top. Plaintiff claims copyright only in the
separate bird silhouette and the color selection shown in
each set of Sparrow Clips.
protection subsists in original works of authorship fixed in
any tangible medium, including pictorial, graphic, and
sculptural works. 17 U.S.C. § 102(a)(5); 17 U.S.C.
§ 101 (defining pictorial, graphic, and sculptural works
to include two- and three-dimensional works of fine, graphic,
and applied art). Useful articles, defined as articles that
have “an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey
information, ” are not entitled to copyright
protection. See 17 U.S.C. § 101 (defining
useful article). However, if a work is a useful article, it
can still fall within the definition of “pictorial,
graphic, and sculptural work” and be protected by
copyright “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.” 17 U.S.C. § 101. Copyrightability is a
question of law for the court. Schrock v. Learning Curve
Int'l, Inc., 586 F.3d 513, 517 (7th Cir. 2009).
2016, Plaintiff sought partial summary judgment on Count I,
its copyright infringement claim, asserting that Plaintiff
owned a valid copyright and Defendants infringed that
copyright by producing and selling exact copies of
Plaintiff's protected expression. Defendants sought
partial summary judgment on Counts I and IV, asserting that
Plaintiff could not prove the existence of a valid copyright
because Sparrow Clips are not sufficiently creative to be
copyrightable and are useful articles that are not subject to
August 2016, this Court granted partial summary judgment in
favor of Plaintiff on Count I. See Opinion (d/e
115). The Court found that the bird design was original.
Id. at 31. In addition, the Court, applying the law
in effect at that time, considered whether the design
element-the bird portion of the Sparrow Clip-was physically
or conceptually separable from the utilitarian aspects of the
work. Id. at 34. The Court found no genuine dispute
that the Sparrow Clips, as a whole, are useful articles. The
Court further found, however, that the bird design was both
physically and conceptually separable from the utilitarian
aspect of the work. Id. at 37-40.
March 2017, the United States Supreme Court decided Star
Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.Ct.
1002 (2017). The Star Athletica Court examined
whether two-dimensional designs appearing on the surface of
cheerleading uniforms were entitled to copyright protection.
See id. at 1007.
the “widespread disagreement over the proper test for
implementing § 101's separate-identification and
independent-existence requirements, ” the Supreme Court
articulated a two-part test for determining when a feature
incorporated into the design of a useful article is eligible
for copyright protection. Id. at 1007. In doing so,
the Court abandoned the distinction between physical and
conceptual separability that some courts (including this
Court) had adopted. Id. at 1014. Specifically, the
Supreme Court held that an artistic feature of a useful
article's design is eligible for copyright protection
only if the artistic feature (1) can be perceived as a two-or
three-dimensional work of art separate from the useful
article (referred to as the separate identification
requirement) and (2) 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 (referred to as the independent-existence
requirement). Id. at 1010.
that test to the surface decorations on the cheerleading
uniforms, the Supreme Court found the test satisfied. First,
the Supreme Court found that the surface decorations had
pictorial, graphic, or sculptural qualities. Star
Athletica, 137 S.Ct. at 1012. Second, the Court found
that if the “arrangement of colors, shapes, stripes,
and chevrons on the surface of the cheerleading uniforms were
separated from the uniform and applied to another medium . .
. they would qualify as two-dimensional . . . works of . . .
art.” Id. (internal quotation marks omitted).
Moreover, removing the surface decorations and applying them
to a different medium did not replicate the uniform itself.
Id. Consequently, the Supreme Court found the
decorations separable from the uniforms and eligible for
copyright protection. Id.
Star Athletica Court rejected the petitioner's
argument that the design feature must stand alone as a
copyrightable work and that the useful article from
which it was extracted must remain equally useful.
Id. at 1013. The Court also rejected the
petitioner's argument that the Court should incorporate
two objective components into the test, namely why or how the
article and design feature were designed and whether the
design feature is marketable. Id. at 1015.
the Star Athletica test here, the Court again finds
that the bird portion of the Sparrow Clips is subject to
copyright protection. First, the bird portion can be
perceived as a three-dimensional work of art separate from
the useful article. One can identify the bird portion as
having pictorial, graphic, or sculptural qualities.
the bird portion would qualify as a protectable sculptural
work on its own if it were imagined separately from the
useful article into which it is incorporated. The bird
portion would be eligible for copyright protection as a
pictorial, graphic, or sculptural work had it been originally
fixed in some tangible medium other than attached to the
clothespin. See Star Athletica, 137 S.Ct. at 1011
(“The ultimate separability question, then, is whether
the feature for which copyright protection is claimed would
have been eligible for copyright protection as a pictorial,