On March 22, 2017, the U.S. Supreme Court decided the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. regarding the scope of copyright protection for “pictorial, graphic or sculptural features” that have been added to useful articles—in this case, cheerleading uniforms. The case has mostly gained attention because its facts crystalize the tension between allowing copyright to subsist in designs applied to useful articles, while at the same time preventing copyright law from controlling the useful article’s functional aspects—which are not copyrightable. Most observers thought the central issue would be how to define a useful article’s function: Is a cheerleading uniform’s function to clothe the body and absorb perspiration (in which case the design at issue has no real coverage on functionality), or to identify the wearer as a cheerleader (in which case the design has quite a lot to do with the uniform’s functionality)? Many, including these authors, expected the Court to sift through the ten different functionality tests that had been developed by the circuit courts and to either adopt one of the ten or develop some synthesis combining elements from different tests. What we received instead was a Gordian knot-slicing opinion by Justice Thomas that either will have little impact on what is currently considered copyrightable—or potentially will allow all manner of copyright “creep” over a useful article’s functionality.

We assume you are familiar with the facts and the issues. If not, here are our posts on the underlying district court opinion, on the Supreme Court’s decision to accept certification, and on an 11th Circuit opinion issued at around the same time as the 6th Circuit opinion. In those posts, we discussed our expectation that the Court might 1) clarify how to assess a useful article’s “functions”; 2) clarify what public policy decisions should be considered in assessing the protectability of useful article designs; 3) engage in the kind of clear line-drawing that it did in Dastar and that it refrained from doing in Mazer; and 4) clarify what constitutes “separability.” Somewhat surprisingly, the Court’s opinion addressed only the fourth concern, and even then (consistent with Justice Thomas’s “Scalian view” of statutory interpretation) the analysis was limited to generalized statements drawn from the actual words of the statute.

The Court stated that courts “need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” The Court did not address concerns over functionality, impact on the market, or any other public policy concerns. Rather, under the Court’s construction, separability is the beginning and end of the analysis—“In sum, a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The Court did not seem to care at all whether protection of the copyrightable feature would in turn impact, and thus extend protection to, the functionality of the article itself—“[t]he focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction. The statute does not require the decision-maker to imagine a fully functioning useful article without the artistic feature.” At the same time, the Court cautioned that the extension of copyright protection to artistic elements incorporated in useful products does not incorporate purely functional elements: “To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work or art” and therefore, “Respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut and dimensions to the one on which the decorations in this case appear.”

In short, the formulation adopted by the Court creates uncertainty because it suggests that copyright protection over non-functional elements of a useful article may extend even beyond the scope of protection offered by design patents. Design patent law, although permitting some functionality to be implicated by the design, protect against converting an ornamental feature into a utilitarian one that monopolizes a function. See, e.g., Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999) (Design patent statute requires “that the design must not be governed solely by function, i.e., that this is not the only possible form of the article that could perform its function.”). Under the Supreme Court’s new standard, there appears to be no limitation on the extent to which a useful article’s “functional capabilities” could become subject to copyright protection, so long as the copyrighted “pictorial, graphic or sculptural features” are found by the court to be non-functional.

This doctrine could have an enormous impact on industrial design. Take, for example, the fin of a 1959 Cadillac. Can the fins be imagined as standalone sculptures apart from the car? And even if they can, is the separability requirement satisfied if the sculpture is merely understood to be a detached fin of a 1959 Cadillac as opposed to an independent artistic expression? Or consider the recent example of a sculptural element added to a USB drive but designed in a way to promote ease of use in plugging into a computer. Or of a software screen display that promotes intuitive use. Even within the fashion industry, the impact of the Varsity Brand decision remains uncertain. This was underscored by the Court’s two dissenters—Justices Breyer and Kennedy—who purportedly applied the Court’s test to reach the opposite result.

Under the Varsity Brand decision, considerations about the impact of subjective design decisions on functionality, or the impact on the market, or the impact on the underlying article itself, are now all irrelevant. If the copyrighted matter can stand alone conceptually as a work of art, its application to a useful article is subject to copyright protection.