While much of the legal press may be speculating about the future of the Supreme Court’s Chevron test, yesterday the Court considered a very different kind of “chevron”—a design on a cheerleader uniform. In Star Athletica LLC v. Varsity Brands Inc., the Supreme Court formulated a two-part test to determine when the design of a “useful article,” such as the design of an article of clothing, qualifies as a “pictorial, graphic, [or] sculptural work” eligible for protection under the Copyright Act. The Court held that a feature incorporated into the design of a useful article is eligible for protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, (2) would qualify as a protectable pictorial, graphic, or sculptural work “if it were imagined separately from the useful article.” Applying the test, the Court held that designs on cheerleader uniforms consisting of lines, chevrons, and colorful shapes could be perceived as separate works of art and would qualify as independent graphic works if they were imagined separately from the uniform itself. Introducing uncertainty around basic uses of colors, stripes, and other shapes that historically have been viewed as unprotectable aspects of garments, the decision has major implications for the fashion and apparel industry and beyond.

Fashion and the Bounds of Copyright Eligibility

The Copyright Act does not protect “useful articles” (like clothing) as such, but it may protect an original design of a useful article where that design is also a “pictorial, graphic [or] sculptural work.” To be eligible for copyright protection, the design of a useful article must incorporate 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. Courts have taken a narrow view of this rule, and historically the fashion industry has had virtually no copyright protection.

The Varsity Brands Lawsuit

Varsity Brands sued Star Athletica for copying elements of five of its cheerleader uniform designs. The trial court found the utilitarian nature of the clothing inseparable from those design elements, and therefore granted summary judgment that Varsity Brands had no protectable pictorial, graphic, or sculptural work under 17 U.S.C. § 101. The Sixth Circuit reversed, holding that the designs could be identified separately from and exist independently of the utilitarian aspects of cheerleading uniforms. In particular, the Sixth Circuit noted that the designs and a blank uniform could appear side-by-side, and the designs could even be hung on the wall and framed as art.

The Statute Frames the Separability Analysis

Justice Thomas, writing for a 6-2 majority, wrote that a court must apply the “exists independently” assessment based on Section 101 of the Copyright Act, not a “free-ranging search for the best copyright policy.” Star Athletica LLC v. Varsity Brands Inc., No. 15-866, Slip Op. at 6 (March 22, 2017), 580 U.S. ___ (2017). The Court applied a two-part test. First, a court “need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 7 (italics added). Second, a court “must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.” Id. (italics added).

The Court held the statute expressly embraces conceptual separability as the test, and therefore physical separability of the artistic aspects of an article is not required or relevant. Id. at 15. The Court held that the cheerleader uniform designs satisfied both parts of the test.

The decision does not mean that Varsity Brands will ultimately prevail. The high court expressed no opinion on whether the works were sufficiently original to qualify for copyright protection.

In his dissent, Justice Breyer agreed with much of the majority’s approach, but he reached a different conclusion. When he imagined or viewed the designs by themselves, they formed a picture of a cheerleading uniform—and thus were inseparable from the useful article itself. He emphasized that Varsity Brands claimed a copyright in chevrons and lines as they appear on a uniform, not as they appear on a piece of paper. He posited that “if extracting the claimed features would necessarily bring along the underlying useful article, the design is not separable from the useful article.” Star Athletica, dissent at 5.

Justice Breyer also faulted Varsity Brands for seeking copyright protection for the arrangement of designs on a useful article that would not be protected by copyright were they not on a useful article, as “simple stripes are plainly unoriginal.” Id. at 11. Thus, Justice Breyer considered this Varsity’s attempt to “prevent its competitors from making useful…uniforms by submitting plainly unoriginal chevrons and stripes…on a useful article.” Id. The dissent further noted that the majority’s decision lays the groundwork for “a century or more” of copyright protection, instead of 15 years of design patent protection. Id. at 7.

When is the Separability Analysis Necessary?

Justice Ginsburg concurred with the result, but concluded that the separability analysis was unnecessary because Varsity Brands submitted separate graphic designs for copyright protection apart from any implementation in a uniform. In her view the designs were simply graphic designs “on” the clothing, not designs “of” the clothing. The majority did not address the substance of this argument, holding instead that the parties had not preserved this issue for appeal. But in the apparel industry, we would expect designers to focus first on the Ginsberg concurrence where—as is the case with fabric design—they can argue that the graphic design exists separately from the garment design in the first place.

Implications for the Apparel Industry and Beyond

This decision has major implications for the fashion and apparel industry. New apparel trends often involve no more than basic uses of colors, stripes, and other shapes that practitioners have historically viewed as unprotectable aspects of the garments themselves. This decision calls that conventional wisdom into question. It injects uncertainty into the apparel industry, and will allow large apparel companies to leverage that uncertainty against low-cost alternative providers, which often lack the resources to fight these cases.

It’s not hard to imagine claims for “separable” designs in aspects of common articles of clothing. Consider, for example, a classic rugby shirt: long sleeves, white collar, broad horizontal stripes. Can someone now claim that the creative choice of colors in their rugby stripes gives them a statutory monopoly—and a right to recover statutory damages and attorney fees—against anyone who makes a “substantially similar” shirt? Of course, the defendant in such a case could challenge originality. But smaller companies often lack the resources to fight these cases, and many companies will not. This expansion of copyright law in the apparel industry threatens to decrease competition and increase the costs of basic garments that every family needs.

The case also has implications far beyond the fashion and apparel markets, reaching any industry that involves industrial or graphic design. For example, a furniture maker could claim original designs in the arm rest shapes or seam locations on a sofa, arguing that those designs can “exist independently of” the useful aspects of the sofa. While such claims may ultimately fail for lack of originality, the requisite level of creativity for originality is extremely low; “even a slight amount will suffice.” Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 345 (1991). Accordingly, it would not be surprising to see a significant increase in copyright litigation over the limits of protection for useful items that consumers use every day.

While much of the legal press may be speculating about the future of the Supreme Court’s Chevron test, yesterday the Court considered a very different kind of “chevron”—a design on a cheerleader uniform. In Star Athletica LLC v. Varsity Brands Inc., the Supreme Court formulated a two-part test to determine when the design of a “useful article,” such as the design of an article of clothing, qualifies as a “pictorial, graphic, [or] sculptural work” eligible for protection under the Copyright Act. The Court held that a feature incorporated into the design of a useful article is eligible for protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, (2) would qualify as a protectable pictorial, graphic, or sculptural work “if it were imagined separately from the useful article.” Applying the test, the Court held that designs on cheerleader uniforms consisting of lines, chevrons, and colorful shapes could be perceived as separate works of art and would qualify as independent graphic works if they were imagined separately from the uniform itself. Introducing uncertainty around basic uses of colors, stripes, and other shapes that historically have been viewed as unprotectable aspects of garments, the decision has major implications for the fashion and apparel industry and beyond.

Fashion and the Bounds of Copyright Eligibility

The Copyright Act does not protect “useful articles” (like clothing) as such, but it may protect an original design of a useful article where that design is also a “pictorial, graphic [or] sculptural work.” To be eligible for copyright protection, the design of a useful article must incorporate 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. Courts have taken a narrow view of this rule, and historically the fashion industry has had virtually no copyright protection.

The Varsity Brands Lawsuit

Varsity Brands sued Star Athletica for copying elements of five of its cheerleader uniform designs. The trial court found the utilitarian nature of the clothing inseparable from those design elements, and therefore granted summary judgment that Varsity Brands had no protectable pictorial, graphic, or sculptural work under 17 U.S.C. § 101. The Sixth Circuit reversed, holding that the designs could be identified separately from and exist independently of the utilitarian aspects of cheerleading uniforms. In particular, the Sixth Circuit noted that the designs and a blank uniform could appear side-by-side, and the designs could even be hung on the wall and framed as art.

The Statute Frames the Separability Analysis

Justice Thomas, writing for a 6-2 majority, wrote that a court must apply the “exists independently” assessment based on Section 101 of the Copyright Act, not a “free-ranging search for the best copyright policy.” Star Athletica LLC v. Varsity Brands Inc., No. 15-866, Slip Op. at 6 (March 22, 2017), 580 U.S. ___ (2017). The Court applied a two-part test. First, a court “need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 7 (italics added). Second, a court “must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.” Id. (italics added).

The Court held the statute expressly embraces conceptual separability as the test, and therefore physical separability of the artistic aspects of an article is not required or relevant. Id. at 15. The Court held that the cheerleader uniform designs satisfied both parts of the test.

The decision does not mean that Varsity Brands will ultimately prevail. The high court expressed no opinion on whether the works were sufficiently original to qualify for copyright protection.

In his dissent, Justice Breyer agreed with much of the majority’s approach, but he reached a different conclusion. When he imagined or viewed the designs by themselves, they formed a picture of a cheerleading uniform—and thus were inseparable from the useful article itself. He emphasized that Varsity Brands claimed a copyright in chevrons and lines as they appear on a uniform, not as they appear on a piece of paper. He posited that “if extracting the claimed features would necessarily bring along the underlying useful article, the design is not separable from the useful article.” Star Athletica, dissent at 5.

Justice Breyer also faulted Varsity Brands for seeking copyright protection for the arrangement of designs on a useful article that would not be protected by copyright were they not on a useful article, as “simple stripes are plainly unoriginal.” Id. at 11. Thus, Justice Breyer considered this Varsity’s attempt to “prevent its competitors from making useful…uniforms by submitting plainly unoriginal chevrons and stripes…on a useful article.” Id. The dissent further noted that the majority’s decision lays the groundwork for “a century or more” of copyright protection, instead of 15 years of design patent protection. Id. at 7.

When is the Separability Analysis Necessary?

Justice Ginsburg concurred with the result, but concluded that the separability analysis was unnecessary because Varsity Brands submitted separate graphic designs for copyright protection apart from any implementation in a uniform. In her view the designs were simply graphic designs “on” the clothing, not designs “of” the clothing. The majority did not address the substance of this argument, holding instead that the parties had not preserved this issue for appeal. But in the apparel industry, we would expect designers to focus first on the Ginsberg concurrence where—as is the case with fabric design—they can argue that the graphic design exists separately from the garment design in the first place.

Implications for the Apparel Industry and Beyond

This decision has major implications for the fashion and apparel industry. New apparel trends often involve no more than basic uses of colors, stripes, and other shapes that practitioners have historically viewed as unprotectable aspects of the garments themselves. This decision calls that conventional wisdom into question. It injects uncertainty into the apparel industry, and will allow large apparel companies to leverage that uncertainty against low-cost alternative providers, which often lack the resources to fight these cases.

It’s not hard to imagine claims for “separable” designs in aspects of common articles of clothing. Consider, for example, a classic rugby shirt: long sleeves, white collar, broad horizontal stripes. Can someone now claim that the creative choice of colors in their rugby stripes gives them a statutory monopoly—and a right to recover statutory damages and attorney fees—against anyone who makes a “substantially similar” shirt? Of course, the defendant in such a case could challenge originality. But smaller companies often lack the resources to fight these cases, and many companies will not. This expansion of copyright law in the apparel industry threatens to decrease competition and increase the costs of basic garments that every family needs.

The case also has implications far beyond the fashion and apparel markets, reaching any industry that involves industrial or graphic design. For example, a furniture maker could claim original designs in the arm rest shapes or seam locations on a sofa, arguing that those designs can “exist independently of” the useful aspects of the sofa. While such claims may ultimately fail for lack of originality, the requisite level of creativity for originality is extremely low; “even a slight amount will suffice.” Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 345 (1991). Accordingly, it would not be surprising to see a significant increase in copyright litigation over the limits of protection for useful items that consumers use every day.​​​​​​​