Star Athletica and the Expansion of Useful Article Protection: Copyright Office Permits Registration of Automotive Floor Liner

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

The Supreme Court’s decision in Star Athletica v. Varsity Brands established a new and simplified test for determining whether useful articles can obtain copyright protection. Many have wondered, in the year since it was decided, about the practical effect of the ruling. Are there really that many items that would not have merited protection before Star Athletica, but that will get it now?  We recently received some insight into this issue from the Copyright Office Review Board (“CORB”). CORB decisions don’t bear traditional case captions, so let’s call this one In re Floor Liner.

What did Star Athletica do?

The Copyright Act was traditionally viewed as hostile to industrial design, as opposed to artistic design. Copyright protection is therefore not normally granted to “useful articles,” such as a lamp or a piece of clothing. However, under 17 U.S.C. § 101, the design elements of those useful articles are copyrightable if they are “separable,” that is, if they “can be identified separately from, and are capable of existing independently of,” the utilitarian aspects of the article.

There are two kinds of separability: a design element can be physically separable or conceptually separable from the utilitarian aspects of article. Here’s a nice illustration courtesy of Justice Breyer’s dissent in Star Athletica. The lamp on the left has a base that includes a sculpture of a cat that is literally physically separable. The lamp on the right incorporates the cat into the lamp function, so it is not physically separable. But you can easily conceptualize it as a standalone sculptural work, so it is conceptually separate.

Star Athletica was a dispute between two manufacturers of cheerleader uniforms. One accused the other of copying its designs, specifically the chevron and stripe patterns. The accused copier countered by arguing that the designs could not be copyrighted because they were not “separable” from the utilitarian purpose of the clothing.

Prior to Star Athletica, courts used an inconsistent variety of different factors to determine whether a design element was separable from a useful article. These included the distinctiveness of the shape, whether the designer’s artistic judgment was involved, and the extent to which functional considerations influenced the final product. However, the Supreme Court majority, in an opinion authored by Justice Thomas, swept all of that away by establishing a simplified two part test for determining when pictorial, graphic or sculptural design features are “separable” from a utilitarian object. Under the new test, courts simply ask:

  1. Can the design feature be perceived as a two or three dimensional work of art separate from the useful article?
  2. If so, would that feature qualify as a protectable work – on its own or in some other tangible medium of expression – if imagined separately from the useful article into which it is incorporated?

Under this test, the cheerleader uniforms easily qualified for protection. First, you can perceive of the stripes and chevrons that make up the design as a work of two-dimensional art separate from the useful article (the piece of clothing). Second, that separately imagined design could qualify as a protectable work because it is sufficiently original (which is a pretty low bar).

CORB Decisions since Star Athletica

CORB is a body within the Copyright Office that hears final administrative appeals from refusals to register copyrights. In 2016, the Copyright Office very helpfully began making CORB decisions available on its website.

Since Star Athletica, CORB has heard a handful of cases involving the useful article doctrine. The first CORB decision to cite the new test was In re Pizza Slice Pool Float, decided in July 2017. The case involved the copyrightability of a rectangular inflatable pool float with a pepperoni pizza slice design. CORB affirmed the refusal to register on the grounds that the design was not sufficiently original, but noted in dicta that the two-dimensional pizza design, although unoriginal, was easily separable from the object’s function under the Star Athletica test.

More recently, in April 2018, CORB had occasion to reverse a refusal to register using the Star Athletica test. In re Pendant Lamp-76 involved a glass sculpture in the shape of a bisected globe, which contained an internal filament so that it could function as a lamp. CORB held that the sculptural elements were separable, and therefore protectable: they could be perceived separately as a standalone work of art, irrespective of whether the object also functioned as a lamp; and that art (unlike the pizza slice) was sufficiently original to merit protection. These cases are interesting applications of the test, but they very likely would have come out the same way before the Supreme Court’s opinion.

In re Floor Liner

In re Floor Liner, decided April 19, 2018, is arguably the first CORB case that may have come out differently before Star Athletica. The applicant was Quadratec, Inc., which makes after-market auto parts, including all weather floor liners (you can see color versions of them here). Quadratec sought to register the raised pattern on the surface of the floor liner, comprising various “shapes and orientations” (including the “unique tread pattern” that Quadratec advertises as an element of its trade dress).  The Copyright Office refused registration of the pattern, apparently on the grounds that the three-dimensional design of the pattern served the purpose of trapping dirt and water.

On appeal to CORB, Quadratec emphasized that, although any grooves and lines in a floor liner will in fact trap dirt and water, the specific decorative pattern chosen by Quadratec “serves no useful function” and is “solely for cosmetic purposes.”  Applying the Star Athletica test, CORB found that the work contained artistic features that were separable from the overall useful article, specifically the collection and pattern of shapes, which can be imagined separately from a floor liner. The refusal to register was therefore reversed.

Why might this decision have come out differently before Star Athletica? Consider a few excerpts from the now-outdated 2014 Compendium of U.S. Copyright Office Practices. Section 924.2 stated:

The Office will register claims to copyright in useful articles only on the basis of separately identifiable pictorial, graphic, or sculptural features. These features should be capable of independent existence apart from the overall shape of the useful article.

Is the phrase “capable of independent existence” a tougher test than asking whether something is merely capable of being “perceived as a [separate] work of art?” Maybe, maybe not. But keep reading through to Section 924.1:

The mechanical or utilitarian aspects of a three-dimensional work of applied art are not copyrightable. For example, the serrated edge of a knife cannot be registered, even if the pattern of the serration is original.

If you believe that the grooves of a floor mat are integral to the purpose of a floor mat, just as the edge is integral to the purpose of a knife, then it’s difficult to reconcile the two examples.

Moving on to Section 924.2(B), here is how of the 2014 Compendium described the conceptual separability test:

Conceptual separability means that a feature of the useful article is clearly recognizable as a pictorial, graphic, or sculptural work, notwithstanding the fact that it cannot be physically separated from the article by ordinary means. . . A pictorial, graphic, or sculptural feature satisfies this requirement only if the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works — one an artistic work and the other a useful article. For example, the carving on the back of a chair or an engraving on a vase would be considered conceptually separable, because one could imagine the carving or the engraving as a drawing on a piece of paper that is entirely distinct from the overall shape of the chair and the vase. Even if the carving or the engraving was removed the shape of the chair and the vase would remain unchanged, and both the chair and the vase would still be capable of serving a useful purpose.

Could the floor liner have passed this test?  Are the floor liner patterns “clearly” recognizable as a standalone work, in the same way a piece of pizza is clearly recognizable? Before answering this question, consider that the 2014 Compendium made clear that “merely analogizing the general shape of a useful article to a work … of abstract sculpture does not satisfy the conceptual separability test.”

Finally, what about the chair example? If you remove a carving from the back of a chair, the thing still functions as a “fully realized” chair. But if you take the dirt-trapping patterns from an automotive floor mat, is it still functioning as a “fully realized” floor mat?  Before answering that question, consider that the 2014 Compendium further stated that “if the feature is an integral part of the overall shape or contour of the useful article, that feature cannot be considered conceptually separable because removing it would destroy the basic shape of the useful article.”

A Dirt Trap for Unwary

Even if you agree that Star Athletica makes it easier to register the design elements of useful articles, that doesn’t mean that registrants are without obligation.  An important part of In re Floor Liner is CORB’s statement that its opinion was dependent on the applicant’s “representation that this pattern services a purely aesthetic purpose.”  In a footnote, CORB explains that this representation, if it turns out not to be true, could subject the applicant to criminal penalties pursuant to 17 U.S.C. § 506(e).

So let’s say, hypothetically, that an applicant makes a false statement about function to the Copyright Office.  How would the Copyright Office ever find out?  Here’s how: someday, that applicant may wish to enforce the copyright, and the party on the other side is going to take discovery. Any evidence uncovered by the other side about the utilitarian value of the design will be a powerful defense to the claims, and it will introduce the threat of criminal liability into an otherwise purely civil matter.

So while it’s true that Star Athletica may offer new protections for designs that border the industrial and artistic realms, that new protection comes with some new risks. Applicants may have to attest to the Copyright Office that these designs are aesthetic and not functional in nature, so they should perform internal due diligence to make sure that any such attestations are unimpeachable, and that they will not one day be contradicted by the applicant’s own internal documents or witnesses. What is required is probably a much more searching inquiry than one would perform with a run-of-the-mill application for a purely artistic item.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at:

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit
  • New Relic - For more information on New Relic cookies, please visit
  • Google Analytics - For more information on Google Analytics cookies, visit To opt-out of being tracked by Google Analytics across all websites visit This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at:

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.