On March 22, 2017, in a 6-2 decision, the US Supreme Court (the "Court") ruled in Star Athletica, LLC v. Varsity Brands, Inc. (Dkt. No. 15-866) that the designs on a cheerleader uniform can be protected by copyright. The Court established a new test to determine whether features of a useful article can be copyrightable, resolving widespread disagreement among courts.

Background

Cheerleading uniform manufacturer Varsity Brands Inc. (Varsity) obtained over 200 US copyright registrations for "two-dimensional" designs featured on its cheerleading uniforms. Varsity sued Star Athletica (Star) for infringement of five of its registered designs. Under the US Copyright Act, useful or "utilitarian" articles, such as clothing and apparel, are entitled to copyright protection only if their pictorial, graphic or sculptural elements can be identified separately from utilitarian aspects of the article. The district court entered summary judgment for Star, holding that Varsity's designs did not quality for copyright protection as the designs themselves served the useful function of identifying the garments as "cheerleading uniforms" and could not be separated from this useful function. The US Court of Appeals for the Sixth Circuit reversed, finding that the designs were capable of existing independently because they could be applied to different articles of clothing, or even framed as art.

Supreme Court decision

The Court's decision sets forth a single, two-part test for determining copyright protection for useful articles: "An artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article." The Court affirmed the Court of Appeals' finding that Varsity's cheerleading uniform designs satisfy these requirements.

Under this new test, a design would be protectable so long as it would be copyrightable if it were not affixed to the useful article. Notably, under this test, the creator's intent, the design's marketability and the design's physical separability are no longer factors to be considered. In other words, the traditional criteria for copyrightability will be applied to such features—considerations such as originality, whether the work qualifies as a work of "authorship" and whether it is fixed in a tangible medium of expression, all as set forth in Section 102(a) of the Act. The opinion goes on to point out, though, that design features such as size, shape and cut would likely not qualify for copyright protection. Although not specifically articulated in the opinion, this kind of limitation is regularly found in copyright cases where creations showing minimal creativity or originality are denied copyright protection as lacking the elements necessary to be a "work of authorship."

Even though the Court established a new test, its application may lead to differing conclusions. Illustrative of this is Justice Breyer's dissent, which would apply the new test but reaches a different result, finding that the designs are not protectable.

Justice Ginsberg issued a concurring opinion agreeing that the designs are entitled to copyright protection but reaching her decision not by applying the separability test, but rather, by first looking at what was registered. She found in the case at bar that the designs were registered as two-dimensional works of art and therefore should be protectable when affixed to a useful article.

Takeaway

The Court's decision resolved the disagreement among the courts by establishing a "uniform" test to be applied when determining the copyrightability of useful articles such as clothing and other apparel. Its holding is important for the fashion industry as it supports the copyrightability of fashion and industrial designs. Fashion designers should continue to register their designs with the US Copyright Office, including their two-dimensional drawings and illustrations of such designs. In light of the holding, designers should be cautious when creating works inspired by prior-existing designs now that the law supports protection of such fashion designs.