924.3 (E) Separating the Design Feature from the Useful Article
To satisfy the separability test, an artistic feature must “qualify as a nonuseful pictorial, graphic, or sculptural work on its own.” Star Athletica, 137 S. Ct. at 1013. “In other words, the feature must be able to exist as its own pictorial, graphic, or sculptural work . . . once it is imagined apart from the useful article.” Id. at 1010.
When applying this test, the U.S. Copyright Office focuses “on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.” Id. at 1013. This means that “some aspects of the useful article” must be “left behind” once the artistic feature has been “conceptually removed” from that item for copyright protection to apply. Id. at 1014 (internal quotation marks omitted). It also means that the overall form, shape, or configuration of a useful article cannot be protected by copyright. Id. at 1010, 1014.
To be clear, the “imagined remainder” does not need to “be a fully functioning useful article” or an “equally useful” article. Id. In other words, the Office does not need to imagine a fully functioning useful article “without the artistic feature.” Id. at 1013. Nor does it need to “imagine a nonartistic replacement for the removed feature” to determine if that feature is capable of existing apart from the article. Id. at 1014. But to satisfy the separability test, at least some portion of the useful article must remain in the viewer’s mind after the artistic feature has been imaginatively removed from the article.
For example, a decorative carving on the back of a chair can be imagined apart from the utilitarian aspects of the chair itself, because at least some portion of the useful article would be left behind, namely, the back, seat, arms, and legs. By contrast, the overall shape of the chair cannot be imagined apart from the item itself, because it “does not have the capacity to exist apart from the utilitarian aspects” of that item. Id. Nor does it have the capacity to exist “on its own” as a sculptural work. Id. at 1013.
See generally H.R. REP. NO. 94-1476, at 55 (citing a carving on the back of a chair as an example of a separable feature of a useful article), reprinted in 1976 U.S.C.C.A.N. at 5668; Transcript of Oral Argument at 72-73, Mazer v. Stein, 347 U.S. 201 (1954) (No. 228) (distinguishing between a piece of furniture and an ornate carving on furniture).