While federal copyright laws unquestionably allow protection for original works of art, copyright eligibility has been less clear in situations where artistic designs are incorporated in articles having utilitarian features. In a decision issued yesterday, the Supreme Court clarified the test for determining whether artistic elements incorporated into a useful article are eligible for copyright protection.
Per 17 U.S.C. §§ 101 and 102, copyright protection is available for the design of a useful article if and only if the design “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. Thus, the test for copyright eligibility for artistic features of useful articles includes a separate identification or “separability” requirement and an independent existence requirement.
Here, Varsity Brands, Inc. accused Star Athletica, L.L.C. of infringing its copyrighted designs that appear on cheerleading uniforms. The district court found that the designs were not protectable because they could not be separated from the utilitarian purpose of identifying the garments as cheerleading uniforms. In a 2-1 decision, the Sixth Circuit reversed the district court, finding that the designs could be separated from the cheerleading uniform and were thus eligible for copyright protection.
Justice Thomas, writing for a five-member majority of the Court, affirmed the judgment of the Sixth Circuit. Focusing heavily on the statute as a whole, the Court identified two key requirements. Namely, the features must be identified separately from the useful article and be capable of existing independent of the utilitarian aspects of the article. The majority concluded that these requirements are met if the features of the design “(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.”
Turning to the facts of the case, the Court found the application of this test “straightforward” and concluded that the designs on the cheerleading uniforms were eligible for copyright protection. The Court reasoned that 1) the decorations on the uniforms can be identified as features having pictorial, graphic, or sculptural qualities, and 2) if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium, they would qualify as two-dimensional works of art. The Court also reasoned that removing the surface decorations from the uniforms in the abstract and applying them in another medium would not replicate the uniform itself.
The Court made clear though that the only feature eligible for copyright in Star Athletica “is the two-dimensional work of art fixed in the tangible medium of the uniform fabric.” If Varsity Brands is ultimately successful in establishing a valid copyright in this case, it would have no right to prohibit anyone from manufacturing a cheerleading uniform of shape, cut, and dimensions identical to those on which the decorations in this case appear.
Justice Ginsburg concurred with the majority, but would have found the designs to be copyrightable pictorial or graphics works that happened to be reproduced on useful articles - negating the need to parse the language of 17 U.S.C. § 101. In his dissent joined by Justice Kennedy, Justice Breyer argued that the relevant design features can neither be separated from the underlying useful articles, the uniforms themselves, nor be capable of existing independently of the useful articles as required by 17 U.S.C. § 101, thus rendering them ineligible for copyright protection.