What impact is the Supreme Court’s recent decision in Star Athletica v. Varsity Brands, the cheerleader costume case, likely to have on the protectability of the creative elements of clothing and other useful articles? Doug Hallward-Driemeier, who leads Ropes & Gray’s Appellate & Supreme Court practice, along with Evan Gourvitz from the firm’s Intellectual Property Litigation practice, offer their perspectives on the case and what it may mean for the future copyright protection of fashion and industrial design.

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Hello, I’m Doug Hallward-Driemeier a partner in the Washington, D.C. office of Ropes & Gray and chair of the firm’s Appellate and Supreme Court practice. Today I’m joined by IP litigation counsel Evan Gourvitz from Ropes & Gray’s New York office.

In today’s Supreme Court podcast we are going to talk about the Supreme Court’s recent copyright decision Star Athletica v. Varsity Brands, better known as the cheerleader uniform case which was decided by the Court on March 22. The decision found that certain decorative elements of cheerleader uniforms were potentially protected by copyright law and more generally provided guidelines for assessing the copyrightability of the design elements of useful articles. Evan can you summarize for our audience what the impact is at the high level of this decision.

Evan: I’ll lay out one technical result of the decision and the practical result of the decision. Technically, for copyright folks the interesting thing here is that the decision rejects the long-standing distinction between physical and conceptual separability. I’m sure we’ll go into that in greater detail. As far as the practical implications, because this decision laid out new and arguably more lenient guidelines for assessing the copyrightability of the design elements of useful articles this might end up leading to expanded attempts to protect clothing designs and industrial designs more generally through copyright law so it might lead to the fashion industry and consumer products companies more generally trying to get more expansive copyright protection for their products.

Doug: So Evan this is an odd case in that it’s not very often that we have pictures, the Supreme Court usually issues its opinions just in words, but here we have pictures of the copyrighted uniforms, and I have to confess when I look at the designs here, what I see are cheerleader uniforms, so maybe you could unpack this a little bit for us when you are talking about these doctrines of separability, how do they apply to the question presented in this case as applied to cheerleader uniforms?

Evan: This is the tricky part of the decision really. How do you separate conceptually, physically or however you might do it, the copyrightable and protectable aspects of any given cheerleader uniform from cheerleader uniforms more generally. As you said, the decision does include pictures and if you look at the pictures (and we can’t really do that on a podcast), you see that the designs that are protected are essentially geometric design elements, chevrons and other aspects of sort of a conventional looking cheerleader costume that, considered in their entirety, make up the whole thing. They make up the whole costume. It’s not like a picture of Mickey Mouse on a t-shirt where you can say well yes there’s a t-shirt and it has this completely separable illustration of Mickey Mouse on it; rather, all of the elements or essentially all of the elements of the cheerleader uniform are encompassed by this design, and this is exactly why in copyright law, the doctrine of separability came about.

Doug: I was taken by the fact that this was an opinion that was written by Justice Thomas and Justice Thomas is famous for being I suppose a quintessential originalist. He doesn’t really care much for legislative history or what courts have said legislation means over the years. He goes back to the original text as written and asks what does this mean. So in this case, he seems to have gone back to the language of Section 101, which says that the design, if it incorporates pictoral graphic and sculptural features that can be identified separately from and are capable of existing independently of the utilitarian aspects of the article, they would be eligible for copyright protection. But I’m focused on this language “capable of existing independently of.” I suppose that’s where the physical separability test comes from. How does the Court’s analysis square with that?

Evan: I think that there is sort of a reasonable roadmap here. Traditionally, the separability of the pictorial graphic or sculptural elements of a useful article were sort of broken down into two categories: physical separability and conceptual separability. Physical separability simply meant, can you cut the darn thing off. So for example, could the hood ornament of a car be protectable even though its part of a car? Yes, because it’s physically separable. Conceptual separability was slightly different and was figured basically by the argument can you sort of conceive of the protectable elements sort of existing in and of themselves as an illustration or a sculpture. Generally, the way that courts and for that matter the legislative history understood that was basically to say, can you remove the copyrightable elements so at the end you have two different things. You have the copyrightable elements as a sculpture or illustration and you nevertheless still have a completely functional item without the illustration or sculpture on the other end. What this decision did was abolish it and as you pointed out, it’s a little tricky when you take a look at the language of the Copyright Act itself because it does say that to be protectable, the design elements have to be identified separately from and are capable of existing independently of the utilitarian aspects of the article. Traditionally, that was understood as meaning you have to have copyrightable elements here on one side, you have to have the useful article on the other side. They both have to exist in and of themselves, but what Justice Thomas’ decision does is that it points out that this doesn’t have to work both ways. That is, if you look at the actual language it says that the pictorial graphic or sculptural features must be identified separately from and must be capable of existing independently of the utilitarian aspects, but the statute itself does not say it has to go vice versa. It doesn’t say that the utilitarian aspects have to exist independently themselves. So basically what this test says and the way that Justice Thomas interpreted it was by saying you know look at that cheerleader uniform, look at that t-shirt, look at that hood ornament, can you basically take the graphic or sculptural elements, rip them off and kind of slap them on a blank wall. And if so, can you identify look, that would be a protectable work in and of itself. If so, it’s protectable and if there is nothing left over in terms of the utilitarian work afterwards, well it doesn’t matter, the test doesn’t go both ways. It just goes one way.

Doug: So if there is nothing left over, does that mean that in effect the item itself is susceptible to copyright protection?

Evan: Well that’s really the trickiest issue here. And that’s the most problematic one. The dissent to this decision basically says, yeah that’s kind of what happens at the end. If you basically say that an entire item is protectable in and of itself, what’s left? Can you basically copyright a shovel. Can you basically say that every sort of physical aspect of the shovel should be protectable by copyright because a picture of the shovel would be protectable. The dissent says no that can’t be right that’s just sort of an absurd result so we can’t accept it. And I think this is something that really is going to have to kind of work its way through the Copyright Office as they try to sort of interpret the extent and sort of scope of where this will lead us.

Doug: As a practical matter, what do you think this means in terms of the interest of those I guess top-end manufacturers who have the designs and their relationships with their knockoff competitors?

Evan: I think what this means is that going forward, apparel companies, clothing companies for that matter, even industrial design companies are going to go to the Copyright Office and they are going to try to register their works, whether that is a particular dress design or for that matter a particular shovel design and basically say we want to register the sculptural or ornamental aspects of this product. We are not trying to register the useful article itself, rather we are just trying to register the pictorial graphic or sculptural features of this useful article which just happened to encompass the entirety of the useful article. And then the Copyright Office will then have to consider that given this decision and really sort of have to work out for themselves where it is they can draw the line, especially now that there is no real split between physical separability and conceptual separability.

Doug: How searching of an inquiry does the Copyright Office apply in deciding whether to register an application?

Evan: As a general matter they don’t do a very searching inquiry at all. Honestly, I don't actually prosecute copyright applications, but I have dealt with a couple of appeals where the Copyright Office has rejected a given work as being insufficiently original. So generally they just take a look at a work to determine whether it constitutes copyrightable subject material and if it does, they register it. On rare occasions, they basically say here’s some guidance you can only claim this part of a work but not that part. I think they are going to have a harder time doing that going forward and basically saying no you can only copyright this part and not that part. But I guess we are going to have to see. Once companies do get registrations, assuming they do, we will also have to see how the courts actually deal with the litigation of infringement cases involving these potentially expanded works and where they draw the line between granting a company copyright protection in its original work of authorship and basically just utilitarian articles as utilitarian articles.

Doug: So I can see that we can expect the applicants to be more aggressive in what they are seeking copyright protection of, but even if they are successful, there are defenses available for entities that might be subject to suit for copyright infringement?

Evan: Sure, I mean even in this case, Justice Thomas basically says while we consider this cheerleader uniform design to be potentially protectable, we are not opining on whether it is in fact in and of itself copyrightable. There might be other reasons why it might not be. For example, this design might not be sufficiently original to qualify for a copyright. There may have been many other cheerleader uniforms created by third-parties before this, making this work a derivative work based on those other works. Defendants in cases are also going to have all sorts of arguments, including fair use. They might be able to claim that the original owners might not have obtained all the necessary rights from the author of the original work. There are still plenty of defenses that people should be able to bring up.

Doug: So it seems that this may open a whole new chapter in kinds of litigation that we’ll have on a new playing field in terms of these design copyrights. So stay tuned for further developments, but that’s all the time we have today. Thank you Evan for joining me in this interesting conversation and hopefully we will be able to have another Supreme Court podcast soon. In the meantime, thank you all for listening and please visit our Capital Insights page at www.ropesgray.com for more news and analysis on noteworthy issues arising out of Washington D.C.