924.5 Guidelines for Applying the Separability and Originality Tests
When evaluating the design of a useful article, the U.S. Copyright Office focuses solely on the appearance of the artistic features that have been submitted for registration. In other words, the Office imagines how those features would appear if they were conceptually separated from the article, and then determines if that specific design qualifies as an original and nonuseful pictorial, graphic, or sculptural work.
If the registration specialist determines that the useful article contains a sufficient amount of separable, copyrightable authorship, he or she will register the claim. In
addition, the specialist will add an annotation to the certificate identifying the separable, copyrightable features of the design, such as: “Basis for registration: [Pictorial / graphic / sculptural] features identified separately from and capable of existing independently of the utilitarian aspects of a useful article.”
As with any other pictorial, graphic, or sculptural work, the Office does not consider the materials used to create the design or the number of copies that have been made. 37 C.F.R. § 202.10 (A); H.R. REP. NO. 94-1476, at 54, reprinted in 1976 U.S.C.C.A.N. at 5667.
The Office does not consider the author’s intention, artistic reputation, skill, experience, or expertise. Star Athletica, 137 S. Ct. at 1015 (declining to consider “the designer’s artistic judgment” because it is not “grounded in the text of the statute”).
The Office will not consider any alternative features or designs that the author may have created, or any other designs that may have been created by third parties. Nor does it consider the intended use of the article in industry when deciding whether a design is copyrightable. Mazer, 347 U.S. at 219. Evaluating these factors would require the Office “to consider evidence of the creator’s design methods, purposes, and reasons.” Star Athletica, 137 S. Ct. at 1015. The Supreme Court made it clear that copyrightability must be based on “how the article and feature are perceived, not how or why they were designed.” Id. at 1015.
For similar reasons, the Office does not consider the marketability or commercial appeal of the design. See H.R. REP. NO. 94-1476, at 54, reprinted in 1976 U.S.C.C.A.N. at 5667. “Nothing in the statute suggests that copyrightability depends on market surveys.” Star Athletica, 137 S. Ct. at 1015. Evaluating the commercial exploitation of a design would make copyright protection turn upon the applicant’s subjective intent at the time when the claim was submitted. “Moreover, asking whether some segment of the market would be interested in a given work threatens to prize popular art over other forms, or to substitute judicial [or administrative] aesthetic preferences for the policy choices embodied in the Copyright Act.” Id.
Finally, the fact that an article or design may or may not be eligible for protection by a utility or design patent is irrelevant to the issue of copyrightability. Id. at 1015; Mazer, 347 U.S. at 217; 37 C.F.R. § 202.10 (A); H.R. REP. NO. 94-1476, at 54, reprinted in 1976 U.S.C.C.A.N. at 5667.