In Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. _____ (2017), the Supreme Court determined that two-dimensional designs appearing on the surface of cheerleading uniforms, such as chevrons, lines, curves, stripes, colorings, and shapes, constituted protectable pictorial, graphic, or sculptural works.

In doing so, the Court clarified the proper test for determining whether designs on useful items are protectable, settling widespread disagreement as to the appropriate test. According to the Court “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 . . . if it were imagined separately from the useful article . . . .”

Section 102(a)(5) of the Copyright Act provides for protection of “pictorial, graphic, and sculptural works.” When pictorial, graphic, or sculptural works are incorporated into “useful articles” (i.e., articles with utilitarian function) a question arises as to whether they are protectable. The Copyright Act answers this question by providing protection for useful articles if the pictorial, graphical, or sculptural features can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the articles.

This is the exact requirement the Court had to analyze in order to determine if the design of the cheerleading uniform was protectable—could the design (1) be identified separately from and (2) exist independently of the utilitarian aspects of the cheerleading uniform. The Court started its analysis focusing on the language of the Copyright Act. The Court explained that the first requirement is “not onerous.” A feature can be identified separately if one can look at the useful article and spot a two-or three-dimensional element that appears to have pictorial, graphic, and sculptural qualities. The second requirement, independent existence, however, is typically more difficult to satisfy. Independent existence requires that the feature be able to exist as its own pictorial, graphic, or sculptural work, apart from the useful article. Thus, a feature meets the independent existence requirement if the feature “would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article . . . .”

Applying the above-espoused test, the Court found the surface designs on the cheerleading uniforms were protectable, as: (1) the designs were easily identifiable as features having pictorial, graphic or sculptural qualities and (2) the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and if applied to another medium, like a canvas, they would qualify as two-dimensional works of art. The Court rejected the contention that a feature may only exist independently if, when the feature was imaginatively removed, the useful article would remain equally useful (i.e., copyright extends only to the solely artistic features of useful articles). The Court explained this requirement had no basis in the Copyright Act and conflicted with its earlier Mazer v. Stein decision. Accordingly, the Court held the decorations were separable from the uniforms and could be protected.