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In dispute between sellers of cheerleader uniforms, U.S. Supreme Court establishes two-part test to determine whether features incorporated into design of useful article are copyrightable.

In a 6-2 decision, the U.S. Supreme Court majority sided with Varsity Brands, the country’s largest cheerleader uniform supplier, in its copyright infringement suit against Star Athletica. The high court established a two-part test to determine whether a feature incorporated into the design of a useful article – in this case, the copyrighted stripes, chevrons and other graphical elements Varsity Brands applies to its uniform designs – is eligible for copyright protection under the Copyright Act. The ruling resolved a split among circuit courts.

Varsity Brands sued Star Athletica in 2010, claiming its rival had copied stripes, chevrons and other graphical uniform elements that Varsity Brands had registered with the Copyright Office. The district court granted Star Athletica summary judgment, holding that the designs could not be conceptually or physically separated from the uniforms because the designs identified the garments as cheerleading uniforms and were therefore ineligible for copyright protection. The Sixth Circuit reversed, concluding that the graphics could be “identified separately” and were “capable of existing independently” of the uniforms under Section 101 of the Copyright Act.

Section 101 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Over the years, federal courts have established at least nine distinct approaches to the “separability” question, leading to confusion on how judges should decide whether expressive elements integrated with useful items are eligible for copyright protection.

On appeal to the Supreme Court, Star Athletica argued that Varsity Brands’ cheerleading uniforms’ combination of chevrons, zigzags and stripes did not warrant copyright protection because the designs make the cheerleading uniforms what they are, and therefore could not be conceptually separated from the uniform. Varsity Brands countered that a two-dimensional design does not lose its copyright protection when it is applied to a three-dimensional useful article, and that two-dimensional designs are separable from a three-dimensional article’s utilitarian function.

Justice Clarence Thomas authored the majority opinion (joined by Chief Justice John G. Roberts Jr. and Justices Samuel A. Alito Jr., Sonia Sotomayor and Elena Kagan). Acknowledging the “widespread disagreement over the proper test for implementing Section 101’s separate-identification and independent-existence requirements,” the opinion establishes a nationwide standard to determine whether expressive elements integrated with useful items can be conceptually separable such that they are eligible for copyright protection. Examining the Copyright Act as a whole, the majority pointed out that Section 101(1), which protects art fixed in a useful article, is essentially the “mirror image of Section 113(a),” which protects art first fixed in a medium that is not a useful article but is subsequently applied to a useful article. The majority explained “the two provisions make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as free-standing art or as features of useful articles.” Hewing closely to the statute’s language, the majority abandoned the distinction between “physical” and “conceptual” separability, concluding that the separability analysis “is a conceptual undertaking” because separability does not require the underlying useful article to remain.

The majority established a two-part test to determine whether a feature incorporated into the design of a useful article is eligible for copyright protection under the Copyright Act: “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.” It then applied that test to Varsity Brands’ decorative designs. It first determined that the decorations were features that had pictorial, graphic or sculptural qualities, because, if the colors, stripes and chevrons were removed from the garments themselves and applied in another medium, they would qualify as two-dimensional works of art. Second, the majority concluded that if one imaginatively removed the surface decorations from the uniforms and applied them to another medium, the decorations would not replicate the uniform itself. The majority limited its ruling by adding: “To be clear, 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.” Varsity Brands 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,” it added.

Justice Ruth Bader Ginsburg, in a concurring opinion, explained that there was no need to apply the separability test, because the designs were two-dimensional pieces of art, which Varsity Brands registered with the Copyright Office and applied to Varsity cheerleading uniforms. Thus, according to Justice Ginsberg, anyone who reproduced Varsity’s pictorial, graphic or sculptural works on garments would be infringing the copyright in the artwork.

In a dissenting opinion, Justice Stephen G. Breyer, joined by Justice Anthony M. Kennedy, argued that the designs “cannot be perceived as two- or three-dimensional works of art separate from the useful article” because the artistic elements “exist only as part of the uniform designs.” By way of example, the dissent explained that “one could copyright the floral design on a soupspoon but one could not copyright the shape of the spoon itself, no matter how beautiful, artistic, or esthetically pleasing that shape might be: A picture of the shape of the spoon is also a picture of a spoon; the picture of a floral design is not.” Similarly, in the dissent’s view, Varsity’s graphic designs could not be separated from the cheerleader uniforms themselves because the designs were coextensive with the design and cut of the uniforms.