Yesterday, the United States Supreme Court clarified the appropriate test for determining when an artistic feature of a "useful article" may be eligible for copyright protection. The much-anticipated decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U. S. ____ (2017) – which concerns the copyrightability of various stripes, shapes, colors and chevrons applied to cheerleading uniforms – will have far-reaching applications, not only for fashion designers, but also for manufacturers of everyday products, from household furnishings to textiles, electronics, and even automobiles. The Supreme Court's holding sets forth a two part test for assessing when certain design features incorporated into an otherwise functional or utilitarian article, like the decorative flourishes on a cheerleading uniform, are eligible for protection. Such features may be copyrightable if: (1) they "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."
Cheerleading uniform manufacturer, Varsity Brands, sued its competitor, Star Athletica, for copyright infringement, alleging that the stylistic elements comprising Star Athletica's uniform designs were substantially similar to Varsity Brands" registered copyrights in its two-dimensional cheerleader uniform drawings and photographs. The District Court held that Varsity Brands" uniform designs were functional and not protectable because they serve only to identify the wearer as a cheerleader, and could not be physically or conceptually separated from the uniforms themselves. The Sixth Circuit reversed, ruling that Varsity Brands" colors, shapes and stripes were not "inextricably intertwined" but "conceptually separable" from the utilitarian aspects of the uniforms and may therefore qualify for copyright protection. The Supreme Court affirmed.
In finding that the surface designs of Varsity Brands" uniforms are eligible for protection, the Supreme Court paid particular attention to the plain language of the Copyright Act. Under Section 101 of the Copyright Act, "the design of a useful article" may enjoy protection as a "pictorial, graphic, or sculptural work," provided such design incorporates "features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Tracking this language, the ultimate question, according to Justice Thomas, is "whether the feature for which copyright protection is claimed 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 before being applied to a useful article."
By setting forth such a test, the Supreme Court disposed of the oftcited distinction between "physical" and "conceptual" separability, as well as a multitude of divergent tests developed by courts and scholars across the country, which have not only caused "widespread disagreement," but have also led to inconsistent results. The majority, however, took special care to limit the reach of its decision, making clear that Varsity Brands "has no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimension, to the ones on which the decorations in this case appear." Thus, while a garment's stylistic surface ornamentation may qualify for copyright protection, the shape or cut of the garment, by itself, does not. Notably, the Supreme Court's decision does not address whether the designs meet the minimum threshold of "originality" sufficient to qualify for protection or whether Star Athletica's designs actually constitute copyright infringement. Rather, those questions are reserved for the District Court on remand.
The Supreme Court's decision serves as a clear affirmation that artistic designs are no less protectable under copyright law simply because they are affixed to or incorporated in everyday, useful articles. Yesterday's decision should come as a relief to designers in the fashion industry and beyond, who historically have had limited avenues for protection under the Copyright Act. The decision also provides courts and designers alike with what will hopefully prove to be a more workable framework for analyzing whether a graphic, pictorial or sculptural work that is incorporated into the design of a useful article is eligible for copyright protection.