On March 22, 2017, the U.S. Supreme Court, in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. ____ (2017), articulated a two-part test to determine when design elements incorporated into a useful article (in this case, the lines, chevrons and colorful shapes appearing on cheerleading uniforms) may be eligible for copyright protection. The Court held “that a feature incorporated into the design of a useful article is eligible for copyright protection only 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 fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.” (Emphasis Added). In its decision, the Court did not decide (as the titles of some recent articles have suggested) that fashion patterns or motifs overall are eligible for protection (which they are not), nor did the Justices decide whether the specific design elements involved in the case were sufficiently original to qualify for protection.
Varsity Brands, Inc. (“Varsity”) owns over 200 copyright registrations for two-dimensional designs, such as lines, chevrons, and colorful shapes, appearing on their cheerleading uniforms. Star Athletica, L.L.C. (“Star”) also sells cheerleading uniforms featuring an array of two-dimensional designs. In 2010, Varsity brought suit against Star for copyright infringement of its 2-D designs on cheerleading uniforms. The trial held that Varsity’s 2-D designs were not protectable pictorial, graphic, or sculptural works because they “served the useful, or ‘utilitarian,’ function of identifying the garments as ‘cheerleading uniforms’ and therefore could not be ‘physically or conceptually’ separated under [the copyright act] ‘from the utilitarian function of the uniform.’” Slip Op. at 2.
Varsity appealed to the Sixth Circuit Court of Appeals, which reversed the trial court’s decision. The Sixth Circuit found that the 2-D designs were capable of being separated from the utilitarian uniforms because designs can function as both graphic design elements (and could be incorporated on a variety of different clothing items or hung on the wall as art) and as part of cheerleading uniforms.
The Court’s Decision and Reasoning
In a 6-2 decision authored by Justice Thomas, the Court affirmed the Sixth Circuit and articulated a two-part test to determine precisely when a pictorial, graphic, or sculptural feature may be separated from a useful article. Historically, the Court has noted that pictorial, graphic, and sculptural works can be protected even if they are features made a part of useful articles. In Mazer v. Stein, 347 U.S. 201 (1954), the Court extended copyright protection to works of art that may also serve a useful purpose. In Mazer, the Court held that a statuette used as a lamp base was capable of copyright protection even though it was intended for use as part of a useful article. This holding was later codified into Section 101 the 1976 Copyright Act, which provides for the copyright protection of a utilitarian article if the pictorial, graphic, or sculptural element could be “identified separately and [is] capable of existing independently as a work of art.” Id. at 9-10.
In the years since Mazer and codification of the 1976 Copyright Act, the question of separability of protectable artwork from non-protectable useful articles has been considered in numerous other cases. For instance, in Kieselstein-Cord v. Accessories By Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), the Second Circuit dissected separability into two types – physical and conceptual – and held that either was appropriate for separability analysis. In Pivot Point Int’l, Inc. v. Charlene Products, Inc., 372 F.3d 913 (7th Cir. 2004), the Seventh Circuit reviewed numerous tests from the Second and Fourth Circuits regarding conceptual separability and ultimately found that “[c]onceptual separability exists, therefore, when the artistic aspects of an article can be ‘conceptualized as existing independently of their utilitarian function.’…If the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists.” Id. at 932 (citing Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985) and Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1145-47 (2d Cir. 1987)
In Star Athletica, the Supreme Court sidesteps any discussion of conceptual versus physical separability, but still articulates a standard that reflects the prior decisions focusing on conceptual separability. The Court does not opine on whether Varsity’s designs warrant copyright protection; merely, that they are capable of being separated as pictorial, graphic, or sculptural features separate from the utilitarian cheerleading uniform.
Justice Ginsburg concurred in the Court’s judgment, but found that the separability analysis was “unwarranted because the designs at issue are not designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.” Slip Op., Ginsburg, J., concurring, at 1.
Justice Breyer, joined by Justice Kennedy, dissented from the majority opinion on whether Varsity’s designs were eligible for copyright protection. The dissent found that the “design features that Varsity seeks to protect are not ‘capable of existing independently o[f] the utilitarian aspects of the article.’” Id., Breyer, J., dissenting, at 1.
What Happens Now?
One of the many questions left specifically unanswered after Star Athletica is whether the Court’s decision expands copyright protection to clothing designs generally. It does not. There remains no copyright protection for useful articles such as clothing. What Star Athletica does do is reaffirm that the U.S. Copyright Act protects two- or three-dimensional artwork even though placed upon clothing. This recent decision merely provides a unified test for determining when that artwork is capable of receiving its own, separate copyright protection.