Under US copyright law, articles with intrinsically utilitarian functions (‘useful articles’), such as clothing, are generally not subject to copyright protection. However, design features on useful articles can be protected by copyright if they incorporate a pictorial, graphic or sculptural feature that can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article. This is known as ‘the doctrine of separability’ which the US courts have struggled to interpret over the last few decades. In March this year, the US Supreme Court handed down guidance concerning the doctrine of separability in relation to the colours, shapes and stripes on cheerleading outfits.

What’s new?

In Star Athletica, LLC v Varsity Brands, Inc, 580 US (2017), the Supreme Court stated that the requirement that a design ‘can be identified separately from’ utilitarian aspects is ‘not onerous’ and that a ‘decision maker 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 properties’. When considering the requirement that a design be capable of existing independently, it stated that a design must be able to exist as its own ‘once it is imagined apart from the useful article’.

When applying that test to the Varsity Brands’ cheerleading uniforms, the Supreme Court concluded that the ‘arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms’ are separable from the uniforms and eligible for copyright protection.

The Supreme Court also emphasised that ‘the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric’, and that the plaintiff has ‘no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear’.

The Supreme Court did not consider whether the particular designs on the Varsity Brands’ cheerleading uniforms were sufficiently original to qualify for copyright protection. This will be decided by the lower court now the Supreme Court guidance has been handed down.

Who can use the new law?

The ‘useful articles’ at issue in Star Athletica were cheerleading outfits. However, the decision will likely have implications in a broad range of retail and consumer products industries in the US. Those involved with these industries should consider whether the decorative elements of their designs will now be protected by US copyright law and whether copyright applications should be filed in the US accordingly.

How different is this to English law?

This decision by the US Supreme Court brings US law in line with the existing position under English copyright law where artistic works, such as patterns, used on clothing and other products are protected by copyright. However, in the UK, there is no need to register copyright as it applies automatically.