In a closely watched case, the Supreme Court decided that design features incorporated into apparel are protectable under copyright law. Specific to the case, the issue to be decided was whether designs that appear on the surface of cheerleading uniforms are eligible for copyright protection. Many may consider the decision a victory to designers everywhere, but protection for apparel remains limited. To qualify for protection, a design must (i) be perceived as (a work of art) separate from the apparel, and (ii) qualify as a pictorial, graphic, or sculptural work either independently or in some other medium (if imagined separately) from the apparel. So, while designers may be able to prohibit others from copying “separable” artistic choices that are incorporated into apparel, the Supreme Court was mindful to point out that “the shape, cut, and physical dimensions of” apparel are not eligible for copyright protection
The case originated when Varsity Brands (“Varsity”), a company that designs and produces cheerleading uniforms, sued Star Athletica for infringing Varsity’s copyrights in its designs on its uniforms. Previously, the District Court sided with Star Athletica, finding the designs utilitarian and ineligible for copyright protection, because they served to identify the garment as a cheerleading uniform. However, the Sixth Circuit reversed, holding the designs to be separately identifiable from the uniforms and eligible for copyright protection. The U.S. Supreme Court was then asked to decide the question of separability.
The concept of separability has been applied to everything from bike racks to lamp bases to furniture, proving that this issue transcends industries. The application to the fashion industry is most obvious given the litigants and design involved. Although designers cannot claim protection in the cut or shape of a garment, preventing others from using the designs that appear on the surface of a utilitarian item, such as clothing, shoes, and handbags, may now prove easier. However, because fashion and design is ever-changing it remains to be seen whether there will be a large scale, strategic change within the industry in response to this recent ruling. The decision may be more significant in the costume and uniform industry where designs endure for longer periods of time. However, the emerging 3D printing industry should also pay close attention as many companies are in the business of printing useful articles. Now, designs affixed to those articles may be separable, protectable, and perhaps consequently, more valuable. The decision further incentivizes designers and companies to register the copyrights in designs as registration is a prerequisite to a copyright infringement lawsuit and makes statutory damages and attorneys’ fees available under certain circumstances. Additionally, the decision could potentially turn Justice Sotomayor’s fear, the demise of the “knock-off” industry, into a reality. With this new attempted clarity of law, companies may be able to conform their designs to satisfy the separability test and secure protection in designs for 95 years. However, only time will tell whether lower courts will coalesce around a consistent way of applying this new separability standard, leading to predictable outcomes in similar cases.
Prior to the Court’s decision, courts had employed over ten different tests and grappled with the distinction between “physical” and “conceptual” separability for decades. In Star Athletica, the Court abandoned the “physical/conceptual” classification and distilled the test down to two elements. Specifically, a feature incorporated into a useful design is eligible for copyright protection when it: (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 on its own or fixed in some other tangible medium of expression. In short, the feature must be separately identifiable and capable as existing independently as a pictorial, graphic, or sculptural work. The test essentially mirrors the statutory text of Section 101 of the Copyright Act. Of course, an artistic feature must also meet all other requirements for copyright protection before obtaining a copyright registration (e.g., originality and fixation).
Here, the Court found that both elements of the test were satisfied because, (1) it is easy to identify the designs—the chevrons, zigzags, and stripes—as having pictorial and graphic qualities, and (2) if the designs were transferred to a different medium, a painter’s canvas, for example, they would qualify as a two-dimensional work of art.
In sum, the separability analysis focuses solely on the artistic feature. The effect of the separation on the remaining useful article is of no concern. fact, even if the article loses some aspect of its function when the artistic feature is extracted, the feature is still eligible for protection. Similarly, it is irrelevant that the artistic feature adds to the utility of the article. For example, the fact that Varsity’s designs enhance cheerleaders’ physical appearance, and uniforms without designs would not be as useful in enhancing physical appearance, does not disqualify the designs from copyright protection. Further, despite Star Athletica’s insistence, the Court found that an artistic feature is not beyond the scope of copyright just because it was originally intended for use on a utilitarian article or because it retained the outline of the useful article when removed. Ultimately, as long as the design is an independent pictorial, graphic, or sculptural work when separated, it passes the separability test.