Brief of Professors Barton Beebe and Jeanne C. Fromer as Amici Curiae, Iancu v. Brunetti

Brief of Professors Barton Beebe and Jeanne C. Fromer as Amici Curiae (with Appendix), Iancu v. Brunetti, 588 U.S. 388 (2019) (No. 18-302)

Electric Corp. v. Public Service Commission of New York

United States v. Playboy Entm't Grp., Inc.

In 2017, this Court held that the Lanham Act's prohibition on the registration of trademarks that "disparage * * * or bring * * * into contemp [t] or disrepute" any "persons, living or dead," 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment. Matal v. Tam, 137 S. Ct. 1744, 1751 (2017). This case presents the question whether the neighboring prohibition on the registration of trademarks that "[c]onsis[t] of or compris[e] immoral * * * or scandalous matter," 15 U.S.C. § 1052(a), also runs afoul of the First Amendment's Free Speech Clause. Whether this provision is unconstitutional turns in part on whether, and to what extent, the PTO has applied this provision arbitrarily or inconsistently. We have therefore undertaken a large-scale empirical study of trademark applications and registrations at the PTO to assess to what degree the PTO is arbitrary or inconsistent in its implementation of the § 1052(a) prohibition on the registration of immoral or scandalous marks. In particular, we have systematically studied all 3.6 million applications for marks that include text (which we refer to as "word-mark applications") filed at the PTO from 2003 through 2015 to learn which marks the PTO has refused to register for being immoral or scandalous in contravention of § 1052(a). Our study shows, from multiple vantage points, that the PTO's enforcement of the immoral-orscandalous-marks provision is systematically inconsistent and arbitrary. That conclusion has led us to file this brief supporting respondent. Whether or not the Court agrees with our ultimate conclusion, however, our data may be useful to the Court's decision, and we have submitted the results of our study to assist the Court as fully as possible. Our study shows that the PTO's enforcement of the immoral-or-scandalous-marks provision is systematically inconsistent and arbitrary. First, many of the PTO's refusals show inconsistency on their face: the PTO routinely states that it cannot register an applied-for mark because the mark is immoral or scandalous-and because in any event, it has already allowed someone else to register the same mark, or a highly similar one, with respect to the same or similar goods or services. Second, the PTO is arbitrary and inconsistent in allowing certain applications to overcome an immoral-or-scandalous refusal under § 1052(a). Third, the PTO often treats identical or highly similar marks on identical or highly similar goods differently, approving some for publication and refusing others as immoral or scandalous. Fourth, in its immoral-or-scandalous refusals, the PTO has discriminated between registrable and unregistrable marks based on those marks' viewpoint. For our study, we used two datasets. First is the PTO's Trademark Case Files Dataset, which the PTO made publicly available in 2012 and has since updated annually. 3 That dataset currently provides detailed information about all 7.3 million trademark applications filed at the PTO from 1982 through 2017, including data on applicant and mark characteristics, prosecution events, and ownership and renewal history. The dataset also provides more limited information on the 208,084 trademarks already registered at the PTO as of 1982 that were based on applications filed before 1982. A significant limitation of the Trademark Case Files Dataset, however, is that it does not indicate the grounds for a refusal to register a mark. We therefore developed a second dataset of our own, containing all office actions issued by the PTO from 2003 (when the PTO began posting its office actions online) through 2017. 4 To develop this dataset, we systematically downloaded some 3.1 million office actions from the PTO website and used keywords and key phrases to autocode them for certain characteristics. Most relevant here, we autocoded the 3 See U.S. Patent & Trademark Office, Trademark Case Files Dataset (2018), https://www.uspto.gov/learning-and-resources/electronic-data-products/trademark-case-filesdataset-0; see also Stuart Graham et al., U.S. Patent & Trademark Office, The USPTO TradeMark Case Files Dataset: Descriptions, Lessons, and Insights 3, 35 (2013), https://www.us pto.gov/sites/default/files/ip/officechiefecon/Trademark_Case_Fil e_Data_Documentation_31January2013_final.pdf (describing the dataset and surveying trends in trademark applications and registrations). office actions for whether the PTO refused registration on the basis that the applied-for mark was immoral or scandalous, 15 U.S.C. § 1052(a), and on the basis that the applied-for mark was confusingly similar to an already-registered mark, 15 U.S.C. § 1052(d). 5 5 The trademark registration process begins when the applicant files an application identifying, among other things, the mark for which the applicant seeks registration and the goods or services with which the applicant currently uses the mark or intends in the future to use the mark. The PTO then examines the application for compliance with formalities and to determine if there are any grounds for refusal to register the mark, such as that the mark is immoral or scandalous under § 1052 (a) or that the mark is confusingly similar to an already-registered mark under § 1052 (d). If the PTO determines that the application complies with all formalities and that there are no grounds for refusal, the PTO then publishes the mark in the Trademark Official Gazette. At this stage, the PTO has essentially declared that as far as it is concerned, the mark is ready to be registered (though in rare instances, the PTO will sometimes issue a refusal even after the mark has been published). Any party that believes it may be harmed by registration of the mark then has thirty days to oppose registration of the mark. If no opposition is filed or if the mark is unsuccessfully opposed, the mark then proceeds to registration, except that if the applicant was not yet using the mark in commerce at the time of application, the applicant must first submit evidence of actual use in commerce before the PTO will register the mark. See U.S. Patent & Trademark Office, Trademark process, https://www.uspto.gov/tr ademarks-getting-started/trademark-process#step1 (providing an overview of the trademark registration process); Barton Beebe, Trademark Law: An Open-Source Casebook 269-73 (5th ed. 2018), http://tmcasebook.org/wp-content/uploads/2018/07/BeebeTMLaw-5.0-Full-Book.pdf. We used these two datasets, along with others, in recently published work to study whether we are exhausting the supply of competitively effective trademarks. Beebe & Fromer, Are We Running Out of Trademarks?. Here, we use these datasets to analyze comprehensively the PTO's application of the § 1052 prohibition on the registration of immoral or scandalous marks with respect to applications filed from 2003 through 2015. Because of the significant computational challenges presented by the analysis of trademark applications for marks consisting only of images, we restrict our analysis here to word-mark applications. During the period studied, 97% of trademark applications submitted to the PTO were for marks that consisted in whole or part of text. As background, Appendix 1 shows the number of word-mark applications for registration on the Principal Register received by the PTO from 2003 through 2015. For applications filed from 2003 through 2015, Appendix 2 details by filing year the number of word-mark applications that received an immoral-or-scandalous refusal and the number of such refusals that were overcome. Before relaying our findings, we note (and we caution the reader) that they include a number of words and phrases not appropriate for polite company. We have included these details so that the Court can decide for itself why the PTO registered some marks and refused registration to otherssometimes to the same mark. They are included in full so that the Court can fully evaluate the PTO's consistency-or lack thereof. While § 1052(a) of the Lanham Act prohibits the registration of a mark that "[c]onsists of or comprises immoral * * * or scandalous matter," § 1052(d) prohibits the registration of a mark that "[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office * * * as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d). Remarkably, the PTO routinely issues refusals to the same application on the twin bases that the appliedfor mark is immoral or scandalous under § 1052 (a) and that the applied-for mark is confusingly similar to an already-registered mark under § 1052 (d). In each of these cases, the PTO stated that the mark was immoral or scandalous and thus could not be registered-and that the PTO had already registered a highly similar mark on highly similar goods or services. By its own admission, therefore, the PTO is making a large number of inconsistent applications of the § 1052(a) prohibition on the registration of immoral-or-scandalous marks-and often just a short time apart. Consider some examples of applications for marks that are similar to respondent's proposed mark FUCT. In 2009, the PTO refused to register the mark FUK!T in connection with apparel (Class 25) 6 and the operation of an internet website (Class 42) on the bases that the applied-for mark was immoral or scandalous under § 1052(a) and confusingly similar under § 1052(d) to the recently-registered mark PHUKIT for apparel (Class 25). 7 Similarly, on June 6 Class numbers denote what goods or services the mark is to be used with. A trademark applicant must specify the goods and services in connection with which the applicant claims the exclusive right to use the mark. See 15 U.S.C. § 1051(a)(2). The applicant includes a written description of the goods and services and also designates one or more of the forty-five categories of goods and services contained in the International Classification of Goods and Services for the Purposes of the Registration of Marks, which are listed in Appendix 3. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure § 1401.03 (Oct. 2017); 37 C.F.R. § 2.32(a) (7); see also List of Classes with Explanatory Notes, World Intell. Prop. Org., http://web2.wipo.int/classifications/nice/nclpub/en/fr/20170101/cl assheadings/?explanatory_notes. Appendix 4 sets forth the international classes of goods or services claimed by all word-mark applications filed from 2003 through 2015 that received a § 1052(a) immoral-or-scandalous refusal. As Appendix 4 indicates, a very large proportion of applications receiving a § 1052(a) immoral-or-scandalous refusal claim the applied-for mark for use in connection with apparel goods (Class 25). Entertainment services (Class 41) and printed matter (Class 16) also show significant levels of applications receiving a § 1052(a) immoral-or-scandalous refusal. 18, 2013, the PTO registered the mark PHUC for apparel (Class 25). Four days before, on June 14, 2013, the PTO sent out an office action refusing to register the mark P.H.U.C. CANCER (PLEASE HELP US CURE CANCER) in connection with apparel (Class 25) on the bases that the mark was immoral or scandalous and confusingly similar to the about-to-be-registered mark PHUC for apparel. At no time during its registration process did the earlierfiled mark PHUC for apparel receive any immoral-orscandalous refusal. 8 The PTO has done this repeatedly-i.e., given different treatment to the same (or nearly same) Fword variant, for use on the same kind of goods. For example, the PTO registered F U 2 for apparel, but barely two years later refused to register F.U. for apparel because it was both immoral and confusingly similar to the registered mark F U 2.foot_4 Similarly, the PTO registered FVCK STREET WEAR for apparel, but then two years later refused to register FVCKD because it was scandalous and also confusingly similar to an already-registered mark. 10 There is a wide range of marks for which these twin refusals occur, well beyond those that are variations on respondent Brunetti's applied-for mark. As illustration, the PTO has asserted in office actions that each of the following marks both contravenes the immoral-or-scandalous-marks provision and is confusingly similar to an already-registered mark: recently-registered mark RED COCK BEER for beer; 16 • CAMEL TOES for apparel, immoral or scandalous and confusingly similar to the already-registered mark CAMEL TOES for apparel. 17 These twin refusals also occur with regard to marks containing non-English words. Consider the following examples, both in Spanish: • PINCHE TAQUERIA (translated by the PTO in its § 1052(a) refusal as "fucking taco stand") for food services (Class 43), immoral or scandalous and confusingly similar to an application filed nine days earlier for PINCHES TACOS for food services (Class 43), which received no immoral-or- 16 Trademark Application Serial No. 85,253,332, filed February 28, 2011, sought to register the mark FAT COCK BEER in connection with beer (Class 32). In an office action dated July 5, 2011, the PTO refused registration on the bases that the applied-for mark was immoral or scandalous and confusingly similar to the mark in U.S. Appendix 5 sets forth, by filing year, all 114 trademark applications filed from 2003 through 2015 that were refused registration (and failed to publish) on the bases that the applied-for mark was immoral or scandalous under § 1052(a) and confusingly similar under § 1052(d) to a mark that the PTO had already registered or at least already approved for publication in the Official Gazette. 20 This appendix shows more comprehensively what these examples illustrate: that the PTO has acted inconsistently in issuing immoral-or-scandalous refusals to a wide range of words-from commonly used profanities like FUCK and its variations to a slew of less widespread words-suggesting that the inconsistent treatment is broad and irremediable. 3,202,335, namely CABRON 49 for apparel (Class 25), as registered on January 23, 2007. 20 We do not include in this list trademark applications that received twin refusals for being immoral or scandalous and for being confusingly similar when the confusing similarity related to a different aspect of the mark than the one the PTO found immoral or scandalous. For example, with regard to the trademark application for ADIOS M.F. for alcoholic cocktail mixes (Class 33), see Trademark Application Serial No. 77,560,340, filed Sept. 2, 2008, the PTO, on December 8, 2008, refused the application on the ground that the mark was immoral or scandalous for meaning "goodbye motherfucker," and also that it was confusingly similar to registered mark ADIOS AMIGO for mixed drinks (Class 33), Trademark Registration No. 3,262,700, registered July 10, 2007. In such an instance, a twin refusal does not suggest inconsistency on the part of the PTO in application of the immoral-or-scandalousmarks provision. These inconsistencies cannot be explained away as merely the result of the marks at issue being used in different contexts-such as differing "meaning in relation to the particular goods and services for which registration is sought" and "change[s in attitudes] over time," as petitioner suggests. Gov't Br. 45-46. This is precisely because in these situations of twin refusals, the PTO asserted that the applied-for mark was immoral or scandalous and contextually similar enough to the already-registered mark that consumer confusion would result. 21 Moreover, the PTO issued these twin refusals against applied-for marks whose application dates were close in time to the publication and registration dates of the earlierfiled marks that the PTO cited as the basis for its confusing similarity refusals under § 1052(d), which indicates that changing attitudes cannot explain these inconsistencies. 21 Specifically, in deciding to refuse the registration of an applied-for mark as confusingly similar to an already-registered mark, the PTO looks to "[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression" and "[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use." In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Arbitrary in Allowing Certain Applications to Overcome a § 1052(a) Immoral-or-Scandalous Refusal. Sometimes the PTO refuses to register a mark as immoral or scandalous, but then backs down and allows the mark to be published and ultimately registered. A review of these registrations provides further evidence that the PTO is arbitrary and inconsistent in its administration of the immoral-orscandalous marks provision. Of the 1,901 word-mark applications filed from 2003 through 2015 that were refused registration as immoral or scandalous, 140 applications overcame that refusal and 91 proceeded to registration. 22 In many instances, the PTO appears arbitrarily to have accepted dubious reasoning in withdrawing its § 1052(a) immoral-or-scandalous refusal-reasoning that the PTO has rejected in similar contexts. For example, in 2013 the PTO refused to register the mark F'D UP for use in connection with apparel (Class 25) and skateboard parts (Class 28) 23 on the ground that it was immoral or scandalous, reasoning in an office action that "'F'D UP' is a common abbreviation for the obscene and vulgar phrase 22 See Appendix 2. 23 See Trademark Application Serial No. 85/762,896 (filed Oct. 24, 2012). 'fucked up.'" 24 The applicant responded: "We have defined the f'd up to represent fired up (get fired up) [, and] we are now using the words fired up with our advertising of f'd up products." 25 Apparently accepting this representation as sufficient to resolve the matter, the PTO issued no further office actions, published the application on September 3, 2013, and registered it on March 11, 2014. By contrast, in 2010 the PTO refused to register the mark EFF U for use in connection with apparel (Class 25) 26 on the ground that it was immoral or scandalous, reasoning in an office action that "EFF U, * * * the phonetic equivalent of 'Fu' meaning 'fuck you,'" is "scandalous, immoral, and offensive." 27 The applicant responded that EFFU was not necessarily vulgar and an "example of eff-u not being vulgar would be a television show called EFFIN science." 28 The PTO maintained its refusal, stating that "EFFU, which is a direct vulgar insult meaning 'go away' or 'go to hell,' is distinguishable from the term EFFIN." 29 The applicant subsequently abandoned its application. In the instant case, respondent has similarly asserted to the PTO that FUCT is not necessarily vulgar. He argued in response to the PTO's immoralor-scandalous refusal that "[a]lthough FUCT is a made-up word, "to the extent it has any meaning at all, it is FRIENDS U CAN'T TRUST."foot_12 Indeed, Mr. Brunetti cited in support of this definition the same source, the "Urban Dictionary," that the PTO itself cites. But unlike the applicant for the mark F'D UP, Brunetti drew an examiner who was unwilling to accept reasoning of this nature. Another example: in 2007, the PTO refused to register the mark MILF NEXT DOOR for use in connection with adult-oriented internet audiovisual entertainment (Class 41), 31 explaining that "the acronym MILF means MOTHER I'D LIKE TO F**K." 32 In response, the applicant explained, among much else, that "MILF is a title of distinction-a badge of honor-a triumph of the mature woman over a society that fetishizes youth and deems age to be akin to rot. Against this onslaught, this fortysomething woman proudly bears the title, and no less importantly craves to retain it." 33 The PTO maintained and made final its immoral-or-scandalous refusal. 34 But then six months later, it inexplicably withdrew its refusal 35 37 The applicant responded that "'MILF' is susceptible to multiple meanings which may be completely innocuous," among them "'Moro Islamic Liberation Front (Muslim group in the Philippines)," "'Man I Like Fragging (Counter Strike gaming clan)," and "'Mother I'd Like to Find" (polite form; from the movie American Pie)." 38 In a subsequent office action, the PTO maintained and made final its refusal, stating that "a substantial composite of the general public would associate the term 'MILF' with the offensive phrase 'mom [or mother] I'd like to fuck,' rather than one of the possible alternative meanings offered by the applicant." 39 The PTO asserted that this was particularly true in light of the type of adult entertainment services offered by MILF.XXX, which was precisely the same type of services offered in connection with the mark MILF NEXT DOOR, which was registered two years later. After the PTO's final refusal, the applicant for MILF.XXX abandoned its application. These dubious allowances and conflicting refusals are not isolated instances. Appendix 6 sets forth, by filing year, all 140 word-mark applications filed from 2003 through 2015 that were refused registration on the basis that the applied-for mark was immoral or scandalous but that overcame that refusal-a subset of which then proceeded to registration. Appendix 6 reports numerous examples of published and registered word marks that should not have merited publication or registration if the PTO were applying its immoral or scandalous review in a non-arbitrary and consistent manner. Highly Similar Marks on Identical or Highly Similar Goods Differently, Approving Some for Publication and Refusing Others as Immoral or Scandalous. For applications filed from 2003 through 2015, the PTO failed to issue an immoral-or-scandalous refusal to and approved for publication a significant number of applications that sought to register a word mark that, based on the PTO's own § 1052(a) refusal practices, was immoral or scandalous regardless of context. For example, in 2011 the PTO issued an immoralor-scandalous refusal to an application for the mark HUNG LIKE A MULE .COM YOU HAVE A VOID AND WE CAN FILL IT 7+ in connection with dating services (Class 45), owing to the subpart HUNG LIKE A MULE. 40 The applicant subsequently abandoned its application. Yet in 2015, the PTO registered the mark HUNG LIKE A M.U.L.E. for apparel (Class 25) without any immoral-orscandalous objection. 41 Taking another example, in 2007 the PTO issued an immoral-or-scandalous refusal to an application for the mark STFU for apparel (Class 25),foot_24 stating that "STFU is an acronym for the expletive 'shut the fuck up.'" 43 The applicant then abandoned its application. By contrast, in 2016 the PTO registered the mark STFU for noise suppressors for firearms (Class 13) without any immoral-or-scandalous objection. 44 Other examples emerge from applications for marks containing non-English words. In 2008, the PTO issued an immoral-or-scandalous refusal to an application for the mark CAJONES for dietary supplements (Class 5). 45 It cited evidence from urbandictionary.com, among other sources, in support of the conclusion that: the proposed mark "CAJONES" means "TESTICLES" or "BALLS" and is thus scandalous because it is a commonly used vulgar slang term for a part of the male genitalia. In addition, while the proper spelling of the term is "COJONES" the attached evidence demonstrates that "CAJONES" is a common and often intentional misspelling of the word "COJONES" and has the same overall commercial impression. 46 The applicant subsequently abandoned the application. Yet in 2008 the PTO registered the mark CAJONES for party games (Class 28) without any immoral-or-scandalous objection, 47 even though, with authorization from the applicant's attorney, it amended the application record to include the following translation statement: "The foreign wording in the mark translates into English as drawers, and as a slang term for testicles." Similarly, in 2005 the PTO issued no immoral-or-scandalous refusal to the mark CAJONES for beer (Class 32) 48 and published the mark. In an office action, the PTO had asked the applicant for a translation of the mark, stating: "The following translation statement is suggested: 'The English translation of CAJONES is drawers.'" (The application subsequently failed to proceed to registration because the applicant failed to submit evidence of actual use of the mark). As a final example, the PTO has been inconsistent in its treatment of "obscenicons" (defined as "strings of symbols, like %$*$##@, used in comic books to represent obscenities" 49 ), approving some for publication, while refusing to register other very similar obscenicons on the basis that they are immoral or scandalous. For example, in 2009 the PTO issued no immoral-or-scandalous refusal to the mark $#!+ for use in connection with novelty gift items (Class 20) and apparel (Class 25). 50 By contrast, the PTO issued immoral-or-scandalous refusals to the 48 See Trademark Application Serial No. 78/452,365 (filed July 17, 2004). 49 Patricia T. O'Conner & Stewart Kellerman, What Do You Call a %$*$##@?, Grammarphobia Blog (Mar. 1, 2011), https://www.grammarphobia.com/blog/2011/03/grawlix.html. 50 See Trademark Application Serial No. 77/668,860 (filed Feb. 12, 2009). The mark was published on January 5, 2010 (but failed to register because the applicant filed no evidence of use in commerce). marks NO $#!+ 51 and APE $#!+, 52 both filed only a few years after the application for the mark $#!+. Again, these are not isolated examples. Appendix 7 sets forth all word-mark applications for words longer than one letter filed from 2003 through 2015 that received no immoral-or-scandalous refusal and proceeded to publication (and often to registration) even though the applications were for word marks that identically matched terms which had elsewhere triggered an immoral-or-scandalous refusal. Perhaps context could explain some of the rejections, i.e., the PTO might have thought some of the word marks listed in Appendix 7 were immoral or scandalous with respect to some goods or services, but not 51 See Trademark Application Serial No. 85/855,449 (filed Feb. 20, 2013), for NO $#!+ for website (Class 41). In an office action dated May 15, 2013, the PTO explained: "The attached evidence from The Merriam-Webster On-line Dictionary, Dictionary.com, and the Urban Dictionary show[s] that this wording is an expression of incredulity and is considered to be vulgar. The substitution of the symbols $ # ! + for the letters S H I T is a chat room designation used to circumvent language filters." Office Action, May 15, 2013, http://tsdr.uspto.gov/documentview er?caseId=sn85855449&docId=OOA20130515082926#docIndex= 8&page=1. 52 See Trademark Application Serial No. 85/611,740 (filed Apr. 30, 2012), for APE $#!+ for apparel (Class 25). In an office action dated May 22, 2013, the PTO explained: "The attached evidence from the web-based Urban Dictionary shows that the lettering $#!+ is a common substitution for the word 'shit.'" Office Action, May 22, 2013, http://tsdr.uspto.gov/documentviewer?caseId=sn8 5611740&docId=OOA20130522162859#docIndex=6&page=1. others. 53 But context cannot explain them all. And in any event, the need for the PTO to engage in such difficult contextual judgments helps show the essential arbitrariness of the process of determining that certain uses of a word mark are immoral or scandalous while certain other uses of the same mark are not. 53 For example, the PTO has refused registration of numerous applications for marks consisting in whole or part of the term BALLS. See, e.g., Trademark Application Serial No. 77/587,730 (filed Oct. 7, 2008), for GOT BALLS… in connection with apparel (Class 25); Trademark Application Serial No. 85/051,113 (filed May 31, 2010), for FEEL YOUR BALLS in connection with apparel (Class 25). However, the PTO issued no immoral-or-scandalous refusal to Trademark Application Serial No. 85/071,112 (filed on June 24, 2010), which sought to register the mark BALLS for use in connection with services relating to the organizing of rocketry conventions (Class 41). In response to a PTO request for clarification of the meaning of the mark, the applicant stated: "The term 'Balls' does not have a particular meaning or significance in the relevant industry, nor is it a term of art within the industry. The term is being used solely in a suggestive sense." Response to Office Action, Apr. 4, 2011, http://tsdr.uspto.gov/documentviewer?caseId=sn85071112&docI d=ROA20110405173926#docIndex=8&page=1. Apparently satisfied with this explanation, the PTO published the mark on June 7, 2011, and it was subsequently registered on August 23, 2011. Yet the "suggestive sense" of BALLS presumably is the same sense in which the earlier applicants wanted to use it on apparel-yet the PTO refused those applications. Refusals, the PTO Has Discriminated Between Registrable and Unregistrable Marks Based on Those Marks' Viewpoint. From 2003 through 2015, the PTO issued immoralor-scandalous refusals to at least 50 applied-for marks for being drug-related (including TIGHT BLUNTS for apparel, 54 WHITE POWDER for apparel, 55 COCAINE for soft drinks and energy drinks, 56 and YOU CAN'T SPELL HEALTHCARE WITHOUT THC for pain-relief medication 57 ). In its immoral-or-scandalous refusals, the PTO frequently cites the glorification of drug usage as the basis for the immorality or scandalousness of these marks. 58 By contrast, during the same time period, the PTO has both not issued an immoral-or-scandalous refusal and has published marks that contain an anti-drug message (such as DOGS AGAINST DRUGS / DOGS AGAINST CRIME for charity services, 59 D.A.R.E. TO RESIST DRUGS AND VIOLENCE for apparel and other goods, 60 and SAY NO TO DRUGS -REALITY IS THE BEST TRIP IN LIFE for printed matter 61 ). This Court made clear in Matal v. Tam that the law's regulation of trademarks, specifically legal prohibitions on registration of certain categories of marks, implicates First Amendment interests. See Tam, 137 S. Ct. at 1751 ("We now hold that [ § 1052(a)'s disparagement] provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."). Viewed through the lens of the First Amendment, many of the marks subject to an immoral-orscandalous refusal are instances of high-value speech. Whichever level of scrutiny the Court chooses to apply to analyze the constitutionality of this provision, the PTO's inconsistent and arbitrary 59 See U.S. Registration No. 2,822,861, filed Sept. 25, 2006. 60 See U.S. Registration No. 2,975,163, filed May 5, 2003. 61 See U.S. Registration No. 2,966,019, filed Mar. 12, 2004. enforcement of the provision is problematic. It suggests a lack of fit between the purposes of the provision and the provision as enforced. The PTO's inconsistent and arbitrary enforcement also indicates unconstitutional vagueness. Immoral-or-Scandalous Refusal Are Instances of High-Value Speech. Although it might be tempting to dismiss many of the marks refused as immoral or scandalous as lowvalue speech at best, a good number of the mark applications in our study that received a § 1052(a) immoral-or-scandalous refusal contain political speech or "'speech concerning public affairs,'" Snyder v. Phelps, 562 U.S. 443, 452 (2011) (quoting Garrison v. Louisiana, 379 U.S. 64, 74-75 (1964)), which "'occupies the highest rung of the hierarchy of First Amendment values, and is entitled to special protection. '" Id. (quoting Connick v. Myers, 461 U.S. 138, 145 (1983)). For example, of the 1,091 wordmark applications in our sample that received an immoral-or-scandalous refusal, 22 of them are a variation of one kind or another on FUCK CANCER (listed in Appendix 8). 62 See generally Denise Restauri, When Cancer Gets Personal, a Daughter Gets Mad and Starts a Human Movement, Forbes, 62 Of these marks, only two were published, both for F CANCER, and only one of these registered. Trademark Application Serial No. 77,954,532, filed Mar. 9, 2010 (published only); Trademark Application Serial No. 77,983,618, filed Mar. 9, 2010 (registered). Dec. 17, 2013, https://www.forbes.com/sites/ deniserestauri/2013/12/17/when-cancer-getspersonal-a-daughter-gets-mad-and-starts-a-humanmovement ("That was the beginning of the charity Fuck Cancer-a story about a young women who really just wanted to help her mom and ended up starting a movement that targets Millennials to engage them in an open dialogue about early detection with a clear call to action to involve, engage and educate their parents-and put an end to late stage cancer."). Others contain political commentary, such as mark applications for OBAMA BIN LADEN for apparel, 63 KATRINA BLOWS BUSH SUCKS for bumper stickers,foot_31 CRAPITOL HILL for magnets, printed matter, and apparel, among other things,foot_32 REPUBLICANS ARE LIKE DIAPERS… TIGHT ON THE POOR MAN'S ASS AND ALWAYS FULL OF SHIT for bumper stickers,foot_33 and FUCK PARIS FUCK LONDON I LOVE NEW YORK for apparel. 67 Compare these marks with a jacket worn by an individual in public bearing the visible words "Fuck the Draft. " Cohen v. California, 403 U.S. 15 (1971). In that case, this Court held that criminalization of this individual's conduct was inconsistent with the First Amendment for forbidding core speech. Id. at 26. The Court reasoned that despite the distastefulness of the language used: Surely the State has no right to cleanse public debate to the point where it is grammatically palatable to the most squeamish among us. Yet no readily ascertainable general principle exists for stopping short of that result were we to affirm the judgment below. For, while the particular four-letter word being litigated here is perhaps more distasteful than most others of its genre, it is nevertheless often true that one man's vulgarity is another's lyric. Indeed, we think it is largely because governmental officials cannot make principled distinctions in this area that the Constitution leaves matters of taste and style so largely to the individual. Id. at 25. The Court also emphasized that: much linguistic expression serves a dual communicative function: it conveys not only ideas capable of relatively precise, detached explication, but otherwise inexpressible emotions as well. In fact, words are often chosen as much for their emotive as their cognitive force. We cannot sanction the view that the Constitution, while solicitous of the cognitive content of individual speech has little or no regard for that emotive function which practically speaking, may often be the more important element of the overall message sought to be communicated. Indeed, as Mr. Justice Frankfurter has said, "[o]ne of the prerogatives of American citizenship is the right to criticize public men and measures-and that means not only informed and responsible criticism but the freedom to speak foolishly and without moderation." . at 26 (quoting Baumgartner v. United States, 322 U.S. 665, 673-74 (1944)). 68 Many of the mark applications in our study are also sexual, a category of speech which this Court has treated as valuable and protected. See, e.g., United States v. Playboy Entm't Grp., Inc., 529 U.S. 803, 813-14 (2000) (subjecting restrictions of sexually-oriented programming on cable television to strict scrutiny); Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 55 (1988) (doubting that there is "a principled standard" to separate a parody advertisement about a minister's first time having sexual relations with his mother in an outhouse from "more traditional political cartoons"). 68 It is principally only in the narrow context of broadcast television, which appears "in the privacy of the home" and "is uniquely accessible to children, even those too young to read," that this Court has limited the First Amendment protection afforded to explicit speech. FCC v. Pacifica Found., 438 U.S. 726, 748-51 (1978). The PTO's inconsistency and arbitrariness in enforcing the immoral-or-scandalous-marks provision suggests that there is insufficient fit between the governmental purpose of the provision and the provision's inconsistent and arbitrary enforcement. The government has asserted three interests in the immoral-or-scandalous-marks provision: "protecting the sensibilities of the public," Gov't Br. 32, "the orderly flow of commerce," id. at 34, and "avoiding any appearance that the government approves of such marks," id. This fit is relevant for both stricter and more relaxed forms of scrutiny. To the extent that this provision must withstand strict scrutiny, the inconsistency and arbitrariness of the PTO's enforcement of the immoral-or-scandalousmarks provision bears on the provision's constitutionality. Specifically, the inconsistency and arbitrariness of the PTO's enforcement of the provision suggests that the provision is seriously underinclusive (by failing to refuse registration to all immoral or scandalous marks) and overinclusive (by refusing registration to marks that are not immoral or scandalous (and are not otherwise prohibited to be registered by trademark law)), thereby calling into question the provision's constitutionality. See Reed v. Town of Gilbert, Ariz., 135 S. Ct. 2218, 2231 (2015 Bar, 135 S. Ct. 1656, 1668-669 (2015) (observing that "a law's underinclusivity raises a red flag," especially when it is "riddled with exceptions"); City of Ladue v. Gilleo, 512 U.S. 43, 52-53 (1994) ("Exemptions from an otherwise legitimate regulation of a medium of speech * * * may diminish the credibility of the government's rationale for restricting speech in the first place."). The analysis is similar even if the immoral-orscandalous-marks provision is subject to a more relaxed form of constitutional scrutiny pursuant to Central Hudson Gas & Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980), as a regulation of commercial speech. The fourth prong of the Central Hudson inquiry requires a determination whether the law at issue "is not more extensive than necessary to serve [a substantial government] interest." Id. at 566. As the Federal Circuit held below in the instant case: [N]o matter the government's interest, it cannot meet the fourth prong of Central Hudson. The PTO's inconsistent application of the immoral or scandalous provision creates an "uncertainty [that] undermines the likelihood that the [provision] has been carefully tailored." See Reno v. Am. Civil Liberties Union, 521 U.S. 844, 871 (1997). Nearly identical marks have been approved by one examining attorney and rejected as scandalous or immoral by another. * * * * Although the language in these marks is offensive, we cannot discern any pattern indicating when the incorporation of an offensive term into a mark will serve as a bar to registration and when it will not. Pet. App. 39a; cf. Tam, 137 S. Ct. at 1756-57 (acknowledging that that "the huge volume of [trademark] applications have produced a haphazard record of enforcement" of the disparagement provision, and that "today, the principal register is replete with marks that many would regard as disparaging to racial and ethnic groups"); id. at 1764-65 (plurality opinion) ("[T]he disparagement clause is not 'narrowly drawn' to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: 'Down with racists,' 'Down with sexists,' 'Down with homophobes.' It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.") (emphasis in original). The Court has made clear that when, as here, "[t]he operation of [a law] is so pierced by exemptions and inconsistencies * * * the Government cannot hope to exonerate it" under the fourth prong of Central Hudson. Greater New Orleans Broad. Ass'n v. United States, 527 U.S. 173, 190 (1999) Indeed, to the extent the Court thinks the PTO's inconsistency in enforcement of the provision means the provision suffers from a lack of fit between its purposes and its enforcement whatever the level of scrutiny, the Court need not resolve whether trademarks are commercial speech. Cf. Tam, 137 S. Ct. at 1764 (plurality opinion) ("We need not resolve this debate between the parties [over whether trademarks are commercial speech] because the disparagement clause cannot withstand even Central Hudson review."); id. at 1767 (Kennedy, J., concurring in part and concurring in the judgment, joined by Ginsburg, Sotomayor, and Kagan, JJ.) ("The parties dispute whether trademarks are commercial speech and whether trademark registration should be considered a federal subsidy. The former issue may turn on whether certain commercial concerns for the protection of trademarks might, as a general matter, be the basis for regulation. However that issue is resolved, the viewpoint based discrimination at issue here necessarily invokes heightened scrutiny."). of the PTO's Enforcement of the Immoral-or-Scandalous-Marks Provision Also Suggest That the Provision Is Unconstitutionally Vague. In addition to bearing on the fit between the government's purpose in the immoral-andscandalous-marks provision and its enforcement, the PTO's inconsistency and arbitrariness in enforcement suggests that § 1052(a) is unconstitutionally vague in the context of the First Amendment. This Court has consistently emphasized that a law that contains "no standard for determining" how to satisfy a requirement of the law is constitutionally problematic. Kolender v. Lawson, 461 U.S. 352, 358 (1983). That is because in such an instance, the law "vests virtually complete discretion in the hands of the [government] to determine whether the" legal requirement is met. Id. In the instant case, the inconsistent and arbitrary enforcement by the PTO of the immoral-orscandalous-marks provision suggests that the provision is unconstitutionally vague, in that the vagueness engenders trademark examiners' inconsistent applications of the provision. Cf. Tam, 137 S. Ct. at 1756 (acknowledging the "admitted vagueness of the disparagement test" in § 1052(a)); Winters v. New York, 333 U.S. 507, 509-10 (1948) (finding unconstitutionally vague a criminal law prohibiting the sale of obscene magazines, and reasoning that "[a] failure of a statute limiting freedom of expression to give fair notice of what acts will be punished and such a statute's inclusion of prohibitions against expressions, protected by the principles of the First Amendment violates a[ subject's] rights under * * * freedom of speech"). Our study shows that the PTO's enforcement of the immoral-or-scandalous-marks provision is systematically inconsistent and arbitrary. This inconsistency and arbitrariness suggest that the provision violates the First Amendment's Free Speech clause, because of a lack of fit between the provision's purposes and its enforcement as well as unconstitutional vagueness. Whether or not the Court agrees with our ultimate conclusion, however, our data may be useful to the Court's decision, and All parties have consented to the filing of this brief. No counsel for a party authored this brief in whole or in part, and no person other than amici and their counsel made a monetary contribution to its preparation or submission. Our institutional affiliation is given for identification purposes only. This dataset is discussed further in Beebe & Fromer, Are We Running Out of Trademarks?, at 973-74. Trademark Application Serial No. 77,818,033 was filed on September 1, 2009, in connection with FUK!T for apparel. In the same office action letter dated December 7, 2009, the PTO refused registration on the twin grounds of immoral-orscandalous content and confusing similarity with the mark in U.S. Registration No. 2,934,721, namely PHUKIT for apparel, as registered on March 22, 2005. Trademark Application Serial No. 86,533,866, filed on February 12, 2015, sought to register the mark F.U. in connection with apparel (Class 25). In an office action dated May 26, 2015, the PTO refused registration on the bases that the applied-for mark was immoral or scandalous and confusingly similar to the mark in U.S. Registration No. 4,254,831, namely F U 2 for apparel (Class 25), as registered on December 4, 2012. Trademark Application Serial No. 86,808,278, filed November 3, 2015, sought to register the mark FVCKD in connection with apparel (Class 25). In an office action dated August 26, 2016, the PTO refused registration on the bases that the applied-for mark was immoral or scandalous and confusingly similar to the mark in U.S. Registration 4,515,888, namely FVCK STREET WEAR for apparel (Class 25), as registered on April 15, 2014. See Office Action, Feb. 28, 2013, http://tsdr.uspto.gov/documentviewer?caseId=sn85762896&docI d=OOA20130228165144#docIndex=17&page=1. See Response to Office Action, June 10, 2013, http://tsdr.uspto.gov/documentviewer?caseId=sn85762896&docI d=ROA20130610185140#docIndex=16&page=1. See Trademark Application Serial No. 77,959,391, filed Mar. 15, 2010. See Office Action, June 9, 2010, http://tsdr.uspto.gov/documentviewer?caseId=sn77959391&docI d=OOA20100609155823#docIndex=5&page=1. See Response to Office Action, Nov. 7, 2010, http://tsdr.uspto.gov/documentviewer?caseId=sn77959391&docI d=OOA20100609#docIndex=3&page=1. See Office Action, Nov. 22, 2010, http://tsdr.uspto.gov/documentviewer?caseId=sn77959391&docI d=OOA20100609155823#docIndex=2&page=1. See Response to Office Action, Jan. 2, 2013, http://tsdr.uspto.gov/documentviewer?caseId=sn85310960&docI d=ROA20111221192649#docIndex=6&page=1. See Trademark Application Serial No. 77/064,757 (filed Dec. 14, 2006). See Office Action, Apr. 9, 2007, http://tsdr.uspto.gov/documentviewer?caseId=sn77064757&docI d=OOA20070409153925#docIndex=24&page=1. See Response to Office Action, Oct. 9, 2007, http://tsdr.uspto.gov/documentviewer?caseId=sn77064757&docI d=ROA20071010192525#docIndex=17&page=1. See Office Action, Nov. 1, 2007, http://tsdr.uspto.gov/documentviewer?caseId=sn77064757&docI d=OOA20071101124745#docIndex=15&page=1. See Notation to File, June 4, 2008, http://tsdr.uspto.gov/documentviewer?caseId=sn77064757&docI d=OOA20071101124745#docIndex=13&page=1. See Trademark Application Serial No. 78/643,772 (filed June 4, 2005). See Office Action, Dec. 28, 2005, http://tsdr.uspto.gov/documentviewer?caseId=sn78643772&docI d=OOA20051228022840#docIndex=7&page=1. See Response to Office Action, June 29, 2006, http://tsdr.uspto.gov/documentviewer?caseId=sn78643772&docI d=OOA20051228#docIndex=4&page=1. See Office Action, Aug. 10, 2006, http://tsdr.uspto.gov/documentviewer?caseId=sn78643772&docI d=OOA20051228022840#docIndex=3&page=1. See Trademark Application Serial No. 85/418,659 (filed Sept. 9, 2011). The PTO issued this refusal in an office action dated December 27, 2011. See Trademark Registration No. 4,796,702, registered Aug. 18, 2015. See Trademark Application Serial No. 77/090,708 (filed Jan. 25, 2007). Office Action, May 19, 2007, http://tsdr.uspto.gov/documentviewer?caseId=sn77090708&docI d=OOA20070519190640#docIndex=1&page=1. See Trademark Registration No. 4,932,276, registered on January 16, 2016. See Trademark Application Serial No. 77/291,198 (filed on Sept. 28, 2007). Office Action, Jan. 4, 2008, http://tsdr.uspto.gov/documentviewer?caseId=sn77291198&docI d=OOA20080104140332#docIndex=2&page=1. See Trademark Registration No. 3,444,976, registered June 10, 2008. Trademark Application Serial No. 77/086,418 (filed Jan. 19, 2007). Trademark Application Serial No. 78/706,886 (filed Sept. 5, 2005). Trademark Application Serial No. 85/503,117 (filed Dec. 23, 2011). Trademark Application Serial No. 85/506,065 (filed Dec. 29, 2011). Trademark Application Serial No. 86/727,750 (filed Aug. 17, 2015).

ARGUMENT I. THE PTO'S ENFORCEMENT OF § 1052(a)'S IMMORAL-OR-SCANDALOUS-MARKS PROVISION IS SYSTEMATICALLY INCONSISTENT AND ARBITRARY.

• CAMEL TOES for apparel, immoral or scandalous and confusingly similar to the already-registered mark CAMEL TOES for apparel. 17

These twin refusals also occur with regard to marks containing non-English words. Consider the following examples, both in Spanish:

Arbitrary in Allowing Certain Applications to Overcome a § 1052(a) Immoral-or-Scandalous Refusal.

marks NO $#!+ 51 and APE $#!+, 52 both filed only a few years after the application for the mark $#!+.

Refusals, the PTO Has Discriminated Between Registrable and Unregistrable Marks Based on Those Marks' Viewpoint.

II. THIS SYSTEMATIC INCONSISTENCY AND ARBITRARINESS OF PTO ENFORCEMENT OF THE IMMORAL-OR-SCANDALOUS-MARKS PROVISION SUGGEST THAT THE PROVISION VIOLATES THE FIRST AMENDMENT'S FREE SPEECH CLAUSE.

Immoral-or-Scandalous Refusal Are Instances of High-Value Speech.

of the PTO's Enforcement of the Immoral-or-Scandalous-Marks Provision Also Suggest That the Provision Is Unconstitutionally Vague.

Our institutional affiliation is given for identification purposes only.

This dataset is discussed further in Beebe & Fromer, Are We Running Out of Trademarks?, at 973-74.

See Trademark Application Serial No. 77,959,391, filed Mar. 15, 2010.

See Office Action, June 9, 2010, http://tsdr.uspto.gov/documentviewer?caseId=sn77959391&docI d=OOA20100609155823#docIndex=5&page=1.

See Trademark Application Serial No. 77/064,757 (filed Dec. 14, 2006).

See Trademark Application Serial No. 78/643,772 (filed June 4, 2005).

See Office Action, Dec. 28, 2005, http://tsdr.uspto.gov/documentviewer?caseId=sn78643772&docI d=OOA20051228022840#docIndex=7&page=1.

See Office Action, Aug. 10, 2006, http://tsdr.uspto.gov/documentviewer?caseId=sn78643772&docI d=OOA20051228022840#docIndex=3&page=1.

See Trademark Registration No. 4,796,702, registered Aug. 18, 2015.

See Trademark Application Serial No. 77/090,708 (filed Jan. 25, 2007).

Office Action, May 19, 2007, http://tsdr.uspto.gov/documentviewer?caseId=sn77090708&docI d=OOA20070519190640#docIndex=1&page=1.

See Trademark Registration No. 4,932,276, registered on January 16, 2016.

See Trademark Application Serial No. 77/291,198 (filed on Sept. 28, 2007).

Office Action, Jan. 4, 2008, http://tsdr.uspto.gov/documentviewer?caseId=sn77291198&docI d=OOA20080104140332#docIndex=2&page=1.

See Trademark Registration No. 3,444,976, registered June 10, 2008.

Trademark Application Serial No. 77/086,418 (filed Jan. 19, 2007).

Trademark Application Serial No. 78/706,886 (filed Sept. 5, 2005).

Trademark Application Serial No. 85/503,117 (filed Dec. 23, 2011).

Trademark Application Serial No. 85/506,065 (filed Dec. 29, 2011).

Trademark Application Serial No. 86/727,750 (filed Aug. 17, 2015).


Brief of Professors Christopher Buccafusco and Jeanne C. Fromer as Amici Curiae, Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017) (No. 15-866)

Brandir Int', Inc. v. Cascade Pac. Lumber Co.

Sony Computer Entm', Inc. v. Connectix Corp.

Fashion Originators' Guild  Am., Inc. v. Fed. Trade Comm'n

Pivot Poin Int', Inc. v. Charlene Prods., Inc.

Amici are law professors at schools in the United States. They have no personal interest in the outcome of this case. Rather, they have a professional interest in seeing copyright law interpreted with fidelity both to the statute and to the law's Constitutional goal of encouraging, rather than impeding, creativity and innovation. Amici are currently drafting a law review article articulating and expanding upon the arguments raised in this brief. The article will be submitted for publication in August 2016. Congress and this Court have long expressed concern about the misuse of copyright law to protect functional objects from market competition. See Baker v. Selden, 101 U.S. 99, 101-06 (1879); Mazer v. Stein, 347 U.S. 201, 217-18 (1954); H.R. Rep. No. 94-1476, at 54-55 (1976), as reprinted in 1976 U.S.C.C.A. N. 5659, 5667-68;J.H. Reichman, Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948to the Copyright Act of 1976, 1983 Duke L.J. 1143 (discussing history of American legal protection for design). The fashion industry, in particular, has proven a consistent source of consternation. See Fashion Originators' Guild of Am., Inc. v. Fed. Trade Comm'n, 312 U.S. 457 (1941) (deeming efforts to stop garment design piracy a violation of the Sherman Act, and emphasizing that copyright law, as it then existed, did not provide a basis for preventing such piracy). Thus, for more than a century, courts have explained that "a manufacturer of unpatented articles cannot practically monopolize their sale by copyrighting a catalogue containing illustrations of them." Nat 'l Cloak & Suit Co. v. Std. Mail Order Co., 191 F. 528, 528 (C.C.S.D.N.Y. 1911). Consistent with these concerns, the Copyright Act establishes a general rule against copyright protection for useful articles, subject to a narrow exception for expressive features of a useful article that are separable from its functional aspects. See 17 U.S.C. § 101. Specifically, the Act provides that "[p]ictorial, graphic, and sculptural works" include "works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned." Id. (emphasis added). Further, "the design of a useful article" is protectable "only 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." Id. In short, to be protectable a design must exhibit expressive "pictorial, graphic, or sculptural features" (we refer to these as "expressive" features throughout) that are separable from its "utilitarian aspects." Id. If a useful article has no expressive features or if the expressive features are inseparable from its utilitarian aspects, it will not receive copyright protection. Congress was aware that this rule meant many useful works that are visually appealing would be unprotected by copyright, but it considered this appropriate in light of the risks to competition posed by more expansive copyright protection and the availability of design patents for industrial designs. H.R. Rep. No. 94-1476, at 49-50, 54-55, 1976 U.S.C.C.A.N. at 5662-63, 5667-68. Congress concluded that leaving some works with expressive features unprotected by copyright was preferable to allowing functional objects to gain lengthy legal protection while avoiding the high inventive threshold and careful examination of the patent system. Id.; cf. Baker, 101 U.S. at 102 ("The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained . . . ."). Congress has repeatedly rejected efforts to extend to garment designs precisely the sort of copyright protection that the decision below would provide. See Innovative Design Protection Act (IDPA) of 2012, S. 3523, 112th Cong. (2012)); Innovative Design Protection and Piracy Prevention Act (IDPPA), H. R. 2511R. , 112th Cong. (2011)); Reichman, supra. To preserve this congressional scheme, it is critical that courts assessing functional works with expressive features recognize the full scope of what is utilitarian. This is particularly true in the context of clothing, where a central purpose of the article is not just to "look good," but to "look good on the wearer," that is, to affect how the wearer is perceived. The Sixth Circuit approached this issue incorrectly, by taking a narrow mechanical view of the utility of clothing and thereby failing to recognize that the expressive features of clothing designs can simultaneously serve the functional end of affecting how the wearer is perceived. The Copyright Act treats components of garment designs, including twodimensional shapes, colors, and patterns, that affect the appearance of the wearer's body as utilitarian aspects of the design of a useful article. Where, as here, the exact same design components serve both expressive and utilitarian ends, the expressive and utilitarian aspects of the designs are inherently inseparable and thus unprotectable as a matter of law. The Court should reverse the Sixth Circuit's decision, and clarify the standard for assessing protectability of clothing design features that are both expressive and utilitarian. The Sixth Circuit correctly recognized that, to determine whether a design for a useful article like clothing is a copyrightable "pictorial, graphic, and sculptural work[]," 17 U.S.C. § 102(a)(5), it is necessary to (1) identify both the work's "pictorial, graphic, or sculptural" (i.e., expressive) features and its "utilitarian aspects," and (2) determine whether the expressive features "can be identified separately from, and are capable of existing independently of" the utilitarian aspects. 17 U.S.C. § 101. The court committed a significant error, however, in failing to recognize that the arrangement of stripes, chevrons, zigzags, and color-blocking in the garment designs at issue here-like many components of clothing designs-had both expressive and utilitarian aspects. At the most basic level, the court below erred by treating the specific features of Varsity's designs as either strictly expressive or strictly utilitarian. In doing so, the court failed to recognize that the Copyright Act unambiguously provides that components of the design of a useful article may play both expressive and functional roles simultaneously, and it took far too narrow a view of the utilitarian features of clothing. In order to determine whether a useful article possesses separable expressive design features, a court must first examine the nature of the design components involved. The Copyright Act specifically contemplates that a particular design component can be (1) only "pictorial, graphic, or sculptural," (2) only "utilitarian," or (3) both expressive and utilitarian. On its face, 17 U.S.C. § 101 recognizes this by acknowledging that there are "pictorial, graphic, or sculptural features" that cannot "be identified separately from" the "utilitarian aspects of the article." This language indicates that a component of a design, such as the leg of a chair, may be simultaneously beautiful and functional. The back of an Eames chair is both a brilliant work of visual design and a terrific example of functional ergonomic engineering. Indeed, the fundamental justification for the useful articles doctrine is to exclude from copyright protection aspects of works that exhibit both expression and function. There would be little need for separability analysis if all components of a design could be designated as either expressive or functional, because copyright law could simply indicate that only the expressive features are protectable. Separability analysis exists precisely because design aspects that are expressive can-and in the case of clothing often will-serve utilitarian purposes. that Expressive Features Affecting the Way the Wearer Is Perceived Are Also Utilitarian. The Sixth Circuit's principal error in this case arose in its identification of the utilitarian aspects of the uniforms' designs (question three in its analysis). In particular, the court's error derived from its unduly narrow-and exclusively mechanical-view of the utilitarian aspects of clothing. The court designated as the uniform designs' "utilitarian aspects" only the uniforms' ability to "cover the body, wick away moisture, and withstand the rigors of athletic movements"-that is, the mechanically or technologically useful aspects of the garments. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 490 (6th Cir. 2015); cf. MARIAN L. DAVIS, VISUAL DESIGN IN DRESS 17 (3d ed. 1996) ("All garments must provide for movement and changes in body measurements that come from reaching, stretching, and bending."). Because the patterns of stripes, chevrons, zigzags, and color-blocking did not affect the garment's ability to accomplish cheerleading tasks, the court treated them as solely expressive, non-utilitarian features of Varsity's designs. One could still cheer, flip, and kick with different stripes and chevrons or no stripes and chevrons at all. 799 F.3d at 491 (holding that "[a] plain white cheerleading top and plain white skirt still cover the body and permit the wearer to cheer, jump, kick, and flip"). This was erroneous because the Copyright Act requires treating certain aspects of garment design as serving functional "utilitarian aspects" even if they are also expressive "pictorial, graphic, or sculptural features" of the design. Designs can have function beyond standard mechanical or technological utility. In particular, the design of a garment is intended to make the wearer look attractive. A designer's choices about hemline, neckline, darting, and, often, fabric prints influence people's perceptions of the wearer. As one design expert puts it, garment design is a unique form of visual art because of the "pervading sense of the human qualities present." MARILYN REVELL DELONG, THE WAY WE LOOK: DRESS AND AESTHETICS 134 (2d ed. 1998). A shopper does not simply ask of a garment, "Does it look good?" In addition, and more importantly, he or she asks, "Does it look good on?" and "Does it make me look good?" See, e.g., J. Fan, Perception of Body Appearance and Its Relation to Clothing, in J. FAN, W. YU & L. HUNTER, CLOTHING APPEARANCE AND FIT: SCIENCE AND TECHNOLOGY 1 (2004) ("Few people have a perfect body. Most people would like to improve their appearance with appropriate clothing, by camouflaging their less desirable attributes and highlighting the most attractive aspects of their bodies."). In this way, the garment's design is valued for what it can do. Many features of garment design-line, shape, texture, color, and print-exploit features of human visual perception and optical illusions to influence the way in which the wearer's body is perceived. See DAVIS, supra, at 21-23, 33;REVELL DELONG, supra, at 42, 106-07, 132-33, 166;MARILYN J. HORN & LOIS M. GUREL, THE SECOND SKIN 314 (3d ed. 1981). Importantly, these visual effects can be created with both three-dimensional design techniques such as garment shape and cut as well as with twodimensional design techniques such as patterns, stripes, and color. Thus, the frequent assertion that fabric design is non-functional, see, e.g., Galiano v. Harrah's Operating Co., 416 F.3d 411, 419 (5th Cir. 2005), is, in many cases, wrong when the design affects how the wearer is perceived.foot_2 Cf. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527(Fed. Cir. 1994) (holding that the black color of an outboard engine served the utilitarian purpose of making the engine look smaller, and as a result, was undeserving of trademark protection). Below, we illustrate a number of these techniques, and we show in the next two sections how Varsity's designs incorporate many of them. Before we do, we explain more thoroughly why the Copyright Act explicitly requires this approach. The Copyright Act treats aspects of garment design that influence the perception of the wearer's body as "utilitarian features" of a useful article, although they may also be expressive "pictorial, graphic, or sculptural aspects" of the article. The statute defines a useful article as one having "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. § 101 (emphasis added). Thus, the Act distinguishes between articles, or article features, that "merely portray the appearance of the article or … convey information" and articles, or article features, that have additional utility. By this distinction, aspects of a work that "merely… portray [its] appearance … or… convey information" are not considered utilitarian features. They are purely expressions of authorship. 3 799 F.3d at 489. By contrast, aspects of a work that do not merely portray its appearance or convey information are utilitarian features. The Sixth Circuit ignored this important distinction. In the context of the useful articles doctrine, the Copyright Act establishes a distinction between 3 The Sixth Circuit treated portraying the appearance of an article and conveying information as utilitarian functions but ones that were not "permitted" to be included in the separability analysis. See 799 F.3d at 490. In fact, the Copyright Act establishes that these features of a work are not utilitarian, but expressive "pictorial, graphic, or sculptural features." Conveying information and portraying appearances are characteristic aspects of copyrightable authorship. Christopher J. Buccafusco, A Theory of Copyright Authorship, 102 Va. L. Rev. (forthcoming 2016), available at http://papers.ssrn.com/sol3/papers.cfm?abstr act_id=2664891; Jeanne C. Fromer, An Information Theory of Copyright Law, 64 Emory L.J. 71 (2014). designs or aspects of designs that are valued inherently and those whose value is dependent on their effect on other objects. The former it treats as expressive "pictorial, graphic, or sculptural features," and the latter it treats as "utilitarian aspects." Inherently valuable design elements alone may be treated as expressive features of a work. Elements that are dependently valuable for their ability to affect the perception of another object are functional, because they do not exist merely to portray their own appearance. For garments, this dependent visual utility represents an additional way in which aspects of garment design can be utilitarian. In addition to the mechanical utility related to use, warmth, and modesty, garments have additional utility when they entail design features that influence the wearer's appearance. See Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App'x 42, 44-45 (2d Cir. 2012) (observing that a prom dress can function as such only when it can "cover the body in an attractive way for a special occasion"); Elastic Wonder, Inc. v. Posey, ---F. Supp. 3d ----, 2016 WL 1451545, at *8 (S.D.N.Y. Apr. 12, 2016) ("It is the functional purpose of covering the body in an attractive and comfortable way that motivates the designs of fittings of certain shapes, and the utilitarian function of the leggings as clothing is primary over the ornamental aspect."); Fan, supra, at 1. We can imagine a spectrum of visual designs that vary as a matter of inherent versus dependent value. At one end are the designs that are inherently valuable. They are produced and consumed as such. 4 Fine art paintings and sculptures typically fall at this end of the spectrum, because they are largely produced and consumed for the visual depictions that they provide. 5 At the other end are designs that are primarily dependently valuable. They produce value when brought into appropriate relationships with other objects, and in terms of their effects on those objects: making them look bigger, smaller, different, or better. Camouflage offers an ideal example of designs at this end of the spectrum. The design of a 4 To be sure, whether a garment design feature is expressive, functional, or both can sometimes turn on which audience is surveyed-be it garment designers, consumers of particular garment designs, or fashion critics. See HORN, supra, at 311 ("[D]esigners impart their individual imprints to the products of their craft and in doing so reveal a part of their nature, their ideals, values, thoughts, and emotions. The product in turn evokes a similar or perhaps a widely different range of feelings and emotions in the observer."); cf. Jeanne C. Fromer & Mark A. Lemley, The Audience in Intellectual Property Infringement, 112 Mich. L. Rev. 1251 (2014) (maintaining that who decides whether a defendant's product is too similar to a plaintiff's can affect the answer, and that in intellectual property infringement cases, both experts and consumers are the right audiences to be evaluating that similarity). 5 This is not to say that these are the only reasons why paintings and sculptures are valued. They may also cover holes in walls, match other furniture, or display their owners' taste and wealth. But these are typically secondary considerations for their producers and consumers. Cf. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249 (1903) ("[P]ainting and engraving unless for a mechanical end are not among the useful arts, the progress of which Congress is empowered by the Constitution to promote."). camouflage pattern achieves its value when it is placed in an appropriate environment. When it is, the pattern works; it functions to cloak the person or object that it covers. 6 See, e.g., Isla Forsythe, Subversive Patterning: The Surficial Qualities of Camouflage, 45 ENV'T & PLANNING 1037 (2013). When a design element alters the way another object appears, that is, when it works in relation to some other object, that design element is utilitarian as a matter of copyright law. Only if a design or an aspect of design exists merely to portray its own appearance should it be treated as purely expressive. See 17 U.S.C. § 101 ("A 'useful article' is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a 'useful article.'"). One such example would be an image of a character, such as Mickey Mouse, printed on a t-shirt. The character exists merely to portray its own appearance. Seen in this light, the Sixth Circuit's concern that recognizing the utility of Varsity's designs would deny protection to a Mondrian painting is misplaced. 799 F.3d at 490. First, unlike the design of a cheerleading uniform, a painting is a "pictorial, graphic, [or] sculptural work," but is not a "useful article," so its copyrightability would never turn on 6 As with the painting, this is not the only value of camouflage. Camouflage is regularly incorporated into items with no intention of masking their appearance. Yet this does not undermine the fact that camouflage is in many cases produced and consumed for the effect it has on objects. statutory separability analysis. Even if it were subjected to a separability analysis, however, a Mondrian painting merely portrays its own appearance. It was designed and is consumed for its inherent value as a picture. As such it has little, if any, utilitarian function within the meaning of the statute. Consider, however, trompe l'oeil design techniques, which can be used to make a room look bigger. As depicted in Figure 1, the components of a design that trick the eye into thinking that the ceilings are higher than they are should not be treated like the Mondrian painting because they are not valuable in their own right. Aspects of the design that produced such a visual effect, such as the use of foreshortening and a vanishing point, are properly treated as utilitarian. As this Court long ago recognized in Baker v. Selden, "A treatise on…the mode of drawing lines to produce the effect of perspective…would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein." 101 U.S. at 102. Components of garment design that influence the wearer's appearance do not "merely… portray the appearance" of the garment. They also affect the appearance of the person wearing the garment. To the extent that aspects of garment design affect the way in which the wearer is perceived, they are utilitarian. This can include the cut, fit, and drape of a garment, as well as two-or three-dimensional aspects of the design that direct attention toward or away from parts of the wearer's body or that otherwise influence how he or she is viewed. For example, a camouflage-patterned garment will both display camouflage as a "pictorial" or "graphic" matter and cloak its wearer from observation by others when worn against a background with which the camouflage blends or coordinates. See Forsythe, supra; Gye, supra. The Copyright Act requires that these components of the design be treated as "utilitarian aspects" of the work for purposes of separability, even if they may also be categorized as "pictorial, graphic, or sculptural features." This is, we think, the point that courts in the Second Circuit have made in a line of casesdisagreed with by the Sixth Circuit-identifying a utilitarian "decorative function" in garment design. For example, in Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452 (2d Cir. 1989), a case concerning the copyrightability of various costume designs, the Second Circuit explained that while conceptually separable features of garment designs could, in theory, receive copyright protection, most aspects of garment design would not meet this standard because "the very decorative elements that stand out [are] intrinsic to the decorative function of the clothing." Id. at 455. That is, the particular features of the garment for which the designer claims protection are likely also to be ones that affect how the wearer is perceived. Similarly, in Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d 542 (S.D.N.Y. 2011), the Southern District of New York explained that the sequins and crystals on the bodice of the prom dress at issue, the horizontally ruched-satin fabric on the waistband, and the layers of tulle in the skirt were "plainly fashioned to fit the specific needs of a prom dress." Id. at 550. These aspects of the prom dress, while attractive on their own, also contributed to the dress's "utilitarian function of enhancing the wearer's attractiveness." Id. The Second Circuit, upholding the judgment, agreed, emphasizing that these garment features are not separable "pictorial, graphic, or sculptural features" because "the [physical or conceptual] removal of these items would certainly adversely affect the garment's ability to function as a prom dress, a garment specifically meant to cover the body in an attractive way for a special occasion." Jovani Fashion, 500 F. App'x at 44-45; cf. Elastic Wonder, 2016 WL 1451545, at *8 ("It is the functional purpose of covering the body in an attractive and comfortable way that motivates the designs of fittings of certain shapes, and the utilitarian function of the leggings as clothing is primary over the ornamental aspect."); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980) (recognizing that the belt buckles at issue "include decorative features that serve an aesthetic as well as a utilitarian purpose"). These opinions correctly recognize that garments do not typically exist merely to look attractive in their own right but also to make those who wear them look attractive. This "decorative function" is one we think is better referred to as having "dependent value," by which we mean value dependent on use in relation to another object, or more colloquially, "looking good on." Moreover, these opinions treat aspects of garment design that affect how the wearer looks as appropriately placed on the "utilitarian aspects" side of the expressive/functional ledger when determining conceptual separability, even if they may also fall on the other side as "pictorial, graphic, or sculptural features." Indeed, many features of garment design will have a dual nature. They will be both expressive features and simultaneously utilitarian aspects of the garment. This is consistent with the definition of "useful articles" in section 101, which recognizes that design features may perform both expressive and functional roles. As all shoppers know, a certain style or cut of a garment may look good on one person but not on another. And different sorts of designs may affect how people's bodies look. This is not accidental. Design choices create visual effects that can vary the size of the wearer's body or body parts. In this section, we illustrate a number of these techniques before we demonstrate in the next section how these techniques were used in Varsity's uniform designs. To begin, it is important to note that these techniques include both three-dimensional design choices involving the shape and cut of garments as well as two-dimensional design choices involving shapes, colors, and patterns. This is essential because courts and scholars have often reflexively treated two-dimensional fabric designs as non-functional. Galiano, 416 F.3d at 419; 1 Nimmer on Copyright § 2.08[B][3]; 2 Patry on Copyright § 3:151. Yet both two-and three-dimensional design features will often be utilitarian in nature. As discussed above, camouflage offers an obvious example of a functional two-dimensional pattern. Cf. Fulmer v. United States, 103 F. Supp. 1021 (Ct. Cl. 1952) (finding no copyright infringement when the U.S. government produced camouflage parachutes from the plaintiff's design showing top and side views of a similar parachute because finding otherwise would be akin to conferring unwarranted patent protection) (cited in Mazer, 347 U.S. at 217 n.39). The techniques discussed below work in similar ways, by altering how the viewer sees the clothed person. Further, the Copyright Act clearly anticipates that two-dimensional designs can be functional when it refers to "pictorial, graphic, or sculptural features" that are inseparable from utilitarian aspects of the design. 17 U.S.C. § 101. The first two objects in this list, pictorial and graphic features, are, in fact, twodimensional design techniques. The statutory scheme thus makes clear that two-dimensional works and features, and not only three-dimensional works and features, can be utilitarian. By stating that "pictorial, graphic, or sculptural work[s]" can be "useful articles," rather than limiting the statutory text to "sculptural works," id., it is apparent that Congress recognized that both two-and three-dimensional works can be utilitarian. Similarly, by indicating that "pictorial, graphic, or sculptural features" might be inseparable from "utilitarian aspects" of the design, rather than just referring to "sculptural features," id., the copyright statute signifies that both two-and threedimensional features can be utilitarian. As even casual shoppers know, the placement of horizontal lines on a garment can make the wearer look shorter and broader, while vertical lines have the opposite effect of lengthening the wearer's body. See DAVIS, supra, at 36-41; Fan, Perception of Body Appearance, supra, at 11; J. Fan, Psychological Comfort of Fabrics and Garments, in J. FAN & L. HUNTER, ENGINEERING APPAREL FABRICS AND GARMENTS 251, 257 tbl. 9.1 (2009). Garment design can visually minimize the size of body parts judged to be too large by either appearing to subdivide those body parts or by counterbalancing them to increase the size of surrounding parts. See Fan, Perception of Body Appearance, supra, at 11. A V-shaped neckline can make the neck look longer and narrower while also making shoulder width narrower. DAVIS, supra, at 339. A bodice can be smocked, pleated, draped, or gathered at the bust to make the bust appear larger. Id. at 340. Designers can also affect the perception of the shape of body parts through design choices. Importantly for our purposes, the combination of colors, shapes, and lines can have enormous influence on how the wearer's body is perceived. This is known as color-blocking, and it was recently made famous by Stella McCartney's line of dresses, garment designs employing a color-blocked hourglass appearance that made wearers' bodies look both curvier and slimmer. Two examples of these dresses, as worn by actress Kate Winslet, are shown in Figure 2. The black color along the sides, which changes in width at various points, produces a particularly striking hourglass shape. And, in the dress on the right, the brighter color on the top of the dress produces a larger and more defined bust. See Saliha Aĝaç & Menekşe Sakarya, Optical Illusions and Effects on Clothing Design, 3 Int'l J. Sci. Culture & Sport 137, 154-55 (2015). Similarly, as one design textbook indicates, "A line continuing around the body, diagonal stripes that are not too dominant, or a reflecting surface smoothly contouring the body call our attention to the rounded contours." REVELL DELONG, supra, at 117. The stripes, chevrons, and color-blocking in Varsity's claimed designs, as shown in Figures 5 and6, serve a purpose similar to those documented above. They are simultaneously both expressive and functional, serving to accentuate and elongate the cheerleader's body and make it appear curvier in particular areas. Herein, we detail some of these dual-nature features in light of the discussion above. In Design 078, the white patches in the colorblocked pattern help create the visual effect of curviness by creating an hourglass shape with contrast, as in Stella McCartney's dresses. The Vshaped neckline together with the inverted-V-shaped slit on the skirt elongates the body by exploiting the Müller-Lyer illusion. The V-shaped neckline also serves to point to the bust and elongate the neck. The color-blocking, using contrasting colors, creates contrast and draws attention to the wearer's body. The repeating stripe pattern at the neckline, bust, waist, and skirt hem draws viewers' attention from the top of the wearer's neckline all the way to the bottom of the wearer's skirt to see that part of the wearer's body as unified. See REVELL DELONG, supra, at 229 ("Direction can be aided by repetition of similar parts, often called rhythm. Rhythm is defined as the ordered recurrence of parts that leads the eye."). Again in Design 0815, Varsity employs colorblocking, this time a darker blue color, along the side of the uniform to make the wearer look both more slender in certain places and curvier in others, just as in the Stella McCartney dresses. In addition, the Vshaped striping on the front center of the uniform design serves to further accentuate the bust. The Vshaped neckline both points to the bust and elongates the neck. Designs 299A and 299B have some of the same features associated with the previous two designs, plus there is a diagonal striping, which calls attention to the body's rounded contours. Additionally, the chevron at the bottom of the uniform top is cut to display some of the belly and draw attention to it. Design 074 serves to accentuate the curves and elongate the body for many of the reasons discussed with regard to the previous designs. In addition, the color-blocking serves to highlight the bust by coloring it in white in contrast to the green above it and navy blue below it. The stripes, chevrons, and color-blocking that form the heart of Varsity's uniform designs do not merely portray their own appearance. They also influence the appearance of the uniform's wearer. These features are the reason that the designs work as appropriate designs for garments meant to emphasize the fitness, athleticism, and attractiveness of those who don them. 7 It is no accident that Varsity has chosen to design its uniforms in this fashion, and it is no accident that many cheerleading uniforms share similar design features. 8 Granting copyright protection for these designs would enable Varsity to monopolize functional aspects of garments without satisfying the exacting demands of patent law. Although other designers might be free to produce cheerleading uniforms incorporating features that flatten the bust, widen the waist, and shorten the legs, we suspect that they are unlikely to find a vibrant market for such products. This is not the sort of competitive advantage that copyright law is intended to foster. See Sega Enter. Ltd. v. Accolade, 7 This is a different claim from the one made by Judge McKeague in his dissenting opinion below. We are not claiming that the design features perform a signifying function to identify the wearers as cheerleaders. We argue that these design features are functional because they were designed to influence how the wearers' bodies were perceived. 8 It is also no accident that Varsity's designs for male cheerleaders often have different design elements from those for female cheerleaders, because the physical aspects of male and female bodies that are emphasized differ. ., 977 F.2d 1510., 977 F.2d , 1523., 977 F.2d -24 (9th Cir. 1992) ) ("[A]n attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression …."); Sony Computer Entm't, Inc. v. Connectix Corp., 203 F.3d 596, 607 (9th Cir. 2000) ("Sony understandably seeks control over the market for devices that play games Sony produces or licenses. The copyright law, however, does not confer such a monopoly."). The stripes, chevrons, and color-blocking on Varsity's uniform designs are visually appealing graphic features of the uniforms' designs. In addition, these same features are also utilitarian aspects of the designs that enhance the perception of the wearer's body. Because the Sixth Circuit failed to recognize this duality in its analysis, the decision below should be reversed. Importantly, this is true regardless of the test for separability that applies to the garments. The stripes, chevrons, and color-blocking cannot be treated as physically or conceptually separable under any recognized test for separability, because the same design aspects play both expressive and functional roles simultaneously. As we discussed above, as a general rule the design of a useful article is not protectable under copyright law. Rather, the Copyright Act carves out a limited class of pictorial, graphic, and sculptural features of useful articles that may obtain protection "only if and only to the extent" that they "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101. This exception to the rule allows for certain purely expressive features to receive protection even though they are incorporated into a useful article, such as a scrollwork design on a chair. This exception underlies the separability doctrine, which asks both whether the expressive features of the work can be identified separately from its functional aspects and whether the expressive features can exist independently of the functional aspects. Id.; 799 F.3d at 491-93. Where, however, the components of a design that are claimed as the expressive pictorial, graphic, or sculptural features also, simultaneously, function as utilitarian aspects of the article they could never maintain separable identification and existence. When a claimed aspect of a design is both visually appealing and at the same time utilitarian it makes no sense to say that the visually appealing nature of the aspect "can be identified separately from, and [be] capable of existing independently of" the functional nature of the aspect. The curve of the hood of a Corvette Stingray both makes the car look beautiful and affects its aerodynamics. See Steve Temple, 2014 Corvette C4 Stingray -Like a Knife, SUPER CHEVY, Oct. 2, 2013, http://www.superchevy.com/features/ 1309-2014-corvette-c7-stingray-like-a-knife. In drafting the useful articles doctrine, Congress rejected copyright protection for these sorts of dualnature designs. In the myriad of cases involving separability, we have not located any court decision-neither by this Court, nor by any other federal court-that has expressly found an element of a useful article to possess this dual nature and also to be separable and therefore copyrightable. See, e.g., Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038(9th Cir. 2014) (holding that the distinctive shape of a hookah water container is also functional and therefore not separable); Progressive Lighting, Inc. v. Lowe's Home Centers, Inc., 549 F. App'x 913, 921 (11th Cir. 2013) (per curiam) (finding all components of a light fixture to be uncopyrightable because "the expressive aspects of the light fixtures are also functional components of the utilitarian articles"); Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1147(2d Cir. 1987) (holding that "the form of the rack is influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements"); Zahourek Sys., Inc. v. Balanced Body Univ., LLC, No. 13-cv-01812-RM-CBS, 2016WL 1377165 (D. Colo. Apr. 7, 2016) (holding that a lifelike model of a human skeleton designed to teach anatomy is functional and that any expressive features are not separable). 9 As the Eleventh Circuit 9 There are, by contrast, many cases in which courts hold that a feature of a useful article is expressive, but not functional, and also separable (and therefore copyrightable). See, e.g., Mazer, 347 U.S. 201 (holding the expressive dancer statuette to be separable from the functional lamp); Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404(11th Cir. 2015) (holding that a decorative layer featuring two-dimensional artwork between a core board and a transparent overlay in laminate has explained, "functional components of useful articles, no matter how artistically designed, have generally been denied copyright protection" as inseparable. Norris Indus., Inc. v. Int'l Tel. & Tel. Corp., 696 F.2d 918, 924 (11th Cir. 1983) (listing physically separable elements, however, as an exception). If these dual-nature elements of useful articles receive protection, it must be through the design or utility patent regimes. The claimed features of Varsity's cheerleading uniform designs are perfect examples of dual-nature features. As explained in the previous section, the (continued…) wood flooring is expressive, separable, and copyrightable); Pivot Poin Int'l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004) (determining that specific facial features on a mannequin used as a hair stand and makeup model are expressive, and not functional, choices and are therefore separable and copyrightable); Kieselstein-Cord, 632 F.2d 989 (holding that the expressive, non-functional ornamentation on belt buckles is conceptually separable from the functional aspects of the belt buckle); DC Comics v. Towle, 989 F. Supp. 2d 948, 970 (C.D. Cal. 2013) ("[T]he design elements of the two Batmobiles at issue here are conceptually separable from their underlying car. In particular, the 1989 Batmobile's entire frame, consisting of the rear exaggerated, sculpted bat-fin and the mandibular front, is an artistic feature that can stand on its own without the underlying vehicle. The underlying vehicle would still be a car without the exaggerated bat features."); Lego A/S v. Best-Lock Const. Toys, Inc., 874 F. Supp. 2d 75, 99 (D. Conn. 2012) ("If the [Lego] minifigures' capacity to attach to other toys is functional, while their capacity to inspire imagination or play are not, then the drawings on the face and torso are clearly conceptually separable …."). arrangement of stripes, chevrons, zigzags, and colorblocking that make up the expressive features of Varsity's designs also serve a functional purpose: to influence how the wearer's body is perceived. The particular design features of Varsity's uniforms do not exist merely to portray their own appearance. They are not merely ornamental or arbitrarily determined in the way that a graphic of a cartoon character printed on a shirt is. They are placed where they are because of the nature of the human bodies that will wear them. The shapes, sizes, and colors of the design features look the way they do because these particular shapes, sizes, and colors will interact with wearers' bodies in particular ways. While they might be aesthetically pleasing or attractive in their own right, they also affect the actual perception of the wearers' bodies as aesthetically pleasing or attractive. One can appreciate the futility of Varsity's claim when one tries to imagine the aspects of their designs to which copyright might attach. As the Copyright Act explains, copyright protection for a useful article extends only "to the extent" of the separable expressive features of the design. 17 U.S.C. § 101. Thus, while the separable expressive features may receive protection, copyright will never cover the utilitarian aspects of the design. 10 Here, Varsity claims protection for the particular placement, size, color, and shape of the stripes, chevrons, and colorblocking of its uniforms. But it is just those features of the design that also simultaneously produce the uniforms' functional effects. As a matter of logic, the Copyright Act cannot both protect the expressive features of the uniforms and preserve from protection their functional aspects when those expressive features and functional aspects are one and the same. Thus, a proper analysis of the third question that the Sixth Circuit posed about identifying the expressive features and the utilitarian aspects of cheerleading uniforms will, in this case, determine the only appropriate answer to the final questions: whether the expressive features of the works are separable from and can exist independently of their utilitarian aspects. When the same aspects of the designs are simultaneously expressive and functional, neither the Sixth Circuit nor this Court need inquire further into their separability. The expressive and functional aspects are inherently inseparable, and thus the designs are unprotectable as a matter of law. The courts need not wade into the murky waters of the numerous and overlapping separability tests when confronted with design features that are both expressive and functional. 11 11 It is likely because many garment features are either fully functional or both simultaneously expressive and functional that the Fifth Circuit has observed both that "clothing designs rarely pass the 'separability' test" and that other courts "sometimes appear to implement a categorical approach" denying "copyright protection per se" to garment designs. Galiano, 416 F.3d at 419 n.17 Although we do not advocate a categorical rule, we believe that a presumption of utility is appropriately applied to garment design. Should this Court deem such an inquiry necessary, however, it is apparent that the case should still be remanded in light of the Sixth Circuit's incorrect analysis of the third question (as to which features are expressive and which are functional), as discussed above. The third question must be answered correctly before any inquiry into whether the features are separable. Courts and scholars have proposed numerous tests for determining whether the expressive features of a design are separable from its utilitarian aspects. See, e.g., Norris Indus., 696 F.2d 918 (holding that tire covers without "superfluous sculptural design" are not copyrightable); Brandir, Int'l, 834 F.2d 1142 (holding the copyrightability is limited by the extent to which the design process involved artistic expression uninhibited by functional considerations); Galiano, 416 F.3d at 420 (holding that the copyrightability of a useful article turns on the capacity of the item to "moonlight as a piece of marketable artwork"). All of these tests, however, require an accurate analysis of which are which. As we have shown, the Sixth Circuit's analysis of this point was mistaken. Thus, whether this Court adopts the Sixth Circuit's approach to determining separability or whether it chooses a different test, it must ensure that the different aspects of Varsity's designs are appropriately identified. Here, the stripes, chevrons, zigzags, and color-blocking should be treated as both expressive features and utilitarian aspects of the designs. CONCLUSION ......................................................... 36 Pursuant to Rule 37.6, amici affirm that no counsel for a party authored this brief in whole or in part and that no person other than amici, their members, and their counsel made a monetary contribution to its preparation or submission. Petitioner's and Respondents' consent to the filing of amicus briefs is filed with the Clerk. In commenting favorably on the Sixth Circuit's opinion, William Patry supports the notion that two-dimensional designs are non-functional. He asks, "How could it possibly matter whether the design is imprinted on a rug or on a uniform?" 2 Patry on Copyright § 3:151. As our examples illustrate, however, the placement of two-dimensional designs on a garment can substantially alter how the wearer is perceived. And we strongly suspect that soldiers on the battlefront care, as a protective matter, whether the particular camouflage they are wearing is well matched to their surroundings. Hugo Gye, How U.S. Army Spent $5 BILLION on 'Failed' Pixel Camouflage ... Because They 'Wanted To Look Cooler than Marines', MAIL ONLINE (June 26, 2012) ("Essentially, the Army designed a universal uniform that universally failed in every environment .…"), http://www.dailymail.co.uk/news/article-2164686/How-U-S-Army-spent-5BILLION-failed-pixel-camouflage--wanted-lookcooler-Marines.html. These will always remain free to copy unless protected by another intellectual property regime, such as patent law.

INTRODUCTION AND SUMMARY OF THE ARGUMENT

B. The Sixth Circuit Failed to Recognize

II. GARMENT DESIGN FEATURES THAT ARE SIMULTANEOUSLY EXPRESSIVE AND UTILITIARIAN, SUCH AS THOSE HERE, ARE INHERENTLY INSEPARABLE AND THEREFORE UNPROTECTABLE