Content, Media and Entertainment
Star Athletica, L.L.C. v. Varsity Brands, Inc. Addresses Copyrightable Aspects of Useful Articles
By: Gianni P. Servodidio and Raphael Holoszyc-Pimentel On March 22, 2017, the Supreme Court issued its decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., which concerned the copyrightability of two-dimensional designs appearing on the surface of cheerleading uniforms. The Court held that these surface decorations were eligible for copyright protection because they were "separable" from the useful articles on which they appeared. In doing so, the Court laid down a new, nationwide test for assessing the copyrightable aspects of useful articles, resolving much confusion in this area of law and affirming that two-dimensional fabric designs are protectable--an important win for the fashion and apparel industries. But the Court's test also raises difficult questions for some three-dimensional sculptural works in useful articles and may have limited the scope of their protection in certain circumstances.
The Copyright Act affords copyright protection to the "pictorial, graphic, or sculptural features" of the
The plaintiffs, Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., sued Star Athletica, L.L.C., for infringing their copyrights in two-dimensional designs, comprising lines, chevrons, and colorful shapes, that appeared on the surface of their cheerleading uniforms. The plaintiffs' designs at issue are depicted below:
The district court granted summary judgment for Star Athletica on the copyright claims on the grounds
The Supreme Court granted certiorari, presenting the opportunity to clarify this confusing area of law and unify the divergent approaches taken by courts.
In a decision by Justice Thomas that hewed closely to the statutory text, the Court established a two-part
The first prong of the test, which goes to the statute's requirement of "separate identification," is "not onerous," and requires only the ability "to look at the useful article and spot some two- or threedimensional element that appears to have pictorial, graphic, or sculptural qualities." Applying this The second prong, going to the statute's "independent-existence" requirement, is "ordinarily more difficult
In adopting this two-part test, the Court dispensed with several other tests that had been used by courts
The Court was careful to state what it did not hold. Although the two-dimensional surface decorations
Justice Ginsburg concurred in the judgment. According to Justice Ginsburg, there was "no need to
Justice Breyer, joined by Justice Kennedy, dissented. Justice Breyer believed that under the majority's
This case provides much-needed clarity in the law on useful articles. The Court set out a new, nationwide test for separability and rejected various other approaches that had been used inconsistently. Knowing that cases will be analyzed under one test, litigants will be better positioned to predict outcomes and ascertain the relevant evidence. For example, litigants need not adduce evidence on the creator's design process or the marketability of particular features in order to prove separability, and instead can focus their analyses on the "conceptual undertaking" prescribed by the Court. This may help streamline factual discovery as the conceptual analysis required by the Court appears to be a theoretical question focused on the nature of the artistic features of the useful article.
In addition, the Court affirmed that two-dimensional fabric designs or decorations on clothing are eligible for copyright protection. For example, assuming other requirements such as originality are met, decorative shapes on the surface of a sports team's jersey or a patterned design imprinted on a dress would be copyrightable because these features have "pictorial [or] graphic . . . qualities" and "would qualify as `two-dimensional . . . works of . . . art'" if "imaginatively remov[ed]" from the garment. This affirmation provides certainty to the fashion and apparel industries, which can rely on the validity of copyright registrations for such features. This principle would also extend to two-dimensional decorations imprinted on other types of merchandise, such as bags, mugs, or cell phone cases.
The Court's holding should be welcomed by advocates for the protection of clothing designs since it
There are still some open questions following the decision. For example, how the Court's test applies to three-dimensional sculptural works in useful articles remains to be seen and could curtail copyrightability in some instances. An important limit in the Court's holding is its instruction that the "imaginatively remov[ed]" pictorial, graphic, or sculptural feature "not replicate the [useful article] itself." "[B]ecause the removed feature may not be a useful article," the Court explained, "there necessarily would be some aspects of the original useful article `left behind' if the feature were conceptually removed." In other words, a removed sculptural feature cannot include the entirety of the useful article--there must be some utilitarian aspects "left behind."
This principle affirms the copyrightability of the dancer-shaped lamp base in Mazer v. Stein, since removing the sculptural base would "le[ave] behind" discrete utilitarian elements such as the electric wiring and socket. However, when sculptural works embody the essence of the useful article, the analysis become more difficult and potentially more restrictive than other tests for separability. For example, in Kieselstein-Cord v. Accessories by Pearl, Inc., the Second Circuit upheld the copyrightability of aesthetically pleasing belt buckles that featured ornamental surfaces and grooves.  The court held that the buckles' "sculptural elements" were separable because consumers had worn the buckles "as ornamentation for parts of the body other than the waist," indicating that the aesthetic, nonutilitarian aspects of the buckle were marketable. The belt buckles are depicted below:
However, the marketability test on which the Second Circuit relied is no longer good law. Would the
In sum, Star Athletica provides a pathway to copyrighting sculptural features of useful articles, but plaintiffs may need to "le[ave] behind" utilitarian components when arguing what is protectable. If they do not, the sculptural work may be too similar to and "replicate" the useful article, thereby squandering copyright protection. Asserting a copyright in the sculptural features of a useful article may depend on disclaiming any copyright in its utilitarian aspects.
 No. 15-866 (U.S. Mar. 22, 2017), https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf. Jenner & Block LLP submitted an amicus brief to the Supreme Court in this case on behalf of Professors Jeannie Suk Gersen and C. Scott Hemphill. Brief of Professors Jeannie Suk Gersen & C. Scott Hemphill as Amici Curiae in Support of Respondents, Star Athletica, No. 15-866, http://www.scotusblog.com/wp-content/uploads/2016/09/15-866-amicus-respondent-Prof-JeannieSuk-Gersen.pdf.  Star Athletica, No. 15-866, slip op. at 1011.  Id. at 17 ("[A]n artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article.").  17 U.S.C. 101 (2012).  Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 48487 (6th Cir. 2015) ("Courts have struggled mightily to formulate a test [for separability]."), aff'd, No. 15-866 (U.S. Mar. 22, 2017).  Star Athletica, No. 15-866, slip op. at 2.  Id. app.  Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *8*9 (W.D. Tenn. Mar. 1, 2014), rev'd, 799 F.3d 468 (6th Cir. 2015), aff'd, No. 15-866 (U.S. Mar. 22, 2017).  Varsity Brands, 799 F.3d at 49192 (quoting U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES 924.2(B) (3d ed. 2014)).  Star Athletica, L.L.C. v. Varsity Brands, Inc., 136 S. Ct. 1823 (2016).
 Star Athletica, No. 15-866, slip op. at 17.
 Id. at 7.
 Id. at 10.
 Id. at 7.
 Id. at 7 (alteration in original) (quoting 17 U.S.C. 101 (2012)).
 Id. at 10.
 Id. at 1011 (quoting 101).
 Id. at 1416.
 Id. at 15.
 Id. at 12; see also 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT 2A.08[H] (2017) (distinguishing between "fabric designs," i.e. designs "imprinted on a fabric," which are protectable, and "dress designs," i.e. designs of "the shape, style, cut, and dimensions" of a garment, which are largely not protectable).
 Star Athletica, No. 15-866, slip op. at 1011 & n.1 (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 35859 (1991)).
 Id. at 23 (Ginsburg, J., concurring in judgment).
 Id. at 1 (Breyer, J., dissenting) (quoting Star Athletica, No. 15-866, slip op. at 10 (majority opinion)).
 Id. at 10.
 Id. at 11 (majority opinion).
 Id. at 1516 (rejecting tests based on the design process or marketability).
 See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358 (1991) ("Originality requires only that the author make the [work] independently (i.e., without copying . . . from another work), and that it display some minimal level of creativity.").
 Star Athletica, No. 15-866, slip op. at 10 (quoting 17 U.S.C. 101 (2012)).
 Brief for the Petitioner at 32, Star Athletica, No. 15-866, http://www.scotusblog.com/wp-content/uploads/2016/07/15866-Pet-Merits-Brief.pdf.
 See Brief of Professors Jeannie Suk Gersen & C. Scott Hemphill as Amici Curiae in Support of Respondents, supra note 1, at 1519 ("It would make a hash of the statute to define utilitarian so broadly that it swallows every feature of a work.").
 Star Athletica, No. 15-866, slip op. at 10.
 Id. at 13.
 347 U.S. 201 (1954).
 Star Athletica, No. 15-866, slip op. at 1314; see also id. at 810 ("Consistent with Mazer, the approach we outline today . . . would afford copyright protection to the statuette in Mazer . . . .").
 632 F.2d 989 (2d Cir. 1980).
 Id. at 990.
 Id. at 993.  1 NIMMER & NIMMER, supra note 20, 2A.08[B] (citing Kieselstein-Cord, 632 F.2d at 993).  Kieselstein-Cord, 632 F.2d at 995 (Weinstein, J., dissenting).  See Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, slip op. at 16 (U.S. Mar. 22, 2017) (rejecting the marketability test).  Id. at 10, 13.  Id. at 10.  Id. at 13.  Id. at 10. The sculptural work also should not replicate "`[a]n article that is normally a part of a useful article' (which is itself considered a useful article)." Id. at 7 (alteration in original) (quoting 17 U.S.C. 101 (2012)).
Gianni P. Servodidio
firstname.lastname@example.org | Download V-Card
email@example.com | Download V-Card
Unsubscribe | Manage Preferences Copyright 2017 Jenner & Block LLP, 353 North Clark Street, Chicago, IL 60654, 312 222-9350. Jenner & Block is an Illinois Limited Liability Partnership including professional corporations. Under professional rules, this communication may be considered advertising material. The material contained in this document has been authored or gathered by Jenner & Block for informational purposes only. It is not intended to be and is not considered to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel.