On Wednesday, March 22, 2017, the U.S. Supreme Court, in a 6 to 2 decision, affirmed a decision of the United States Court of Appeals for the Sixth Circuit in favor of Varsity Brands, Inc., et al. (Varsity). The Supreme Court held that “a feature incorporated into the design of a useful article are 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.’”

Varsity and Star Athletica, LLC (Star) are in the apparel industry. Both make cheerleader uniforms. Varsity filed a copyright infringement suit alleging that Star infringed on Varsity’s registered copyrights related to certain uniforms. The uniforms in question include two-piece garments having a sleeveless top (or shell) and a skirt-style bottom. The top and bottom include 2-D artwork of stripes, chevrons, zigzags, and color-blocks as design elements.

In the initial case, Varsity Brands, Inc. et al v. Star Athletica, LLC, 2014 WL 819422 (W.D. Tenn. 2014), the District Court of Tennessee awarded summary judgment in favor of Star, ruling that the design elements of Varsity’s uniforms could not be physically or conceptually separated from their utilitarian aspects. According to the district court, the design elements defined the garment as a cheerleader uniform, and thus embodied a utilitarian function that was inseparable from any aesthetic aspects they expressed. This ruling was based on the premise that current U.S. copyright law does not extend copyright protection to useful articles. 17 U.S.C. § 101. In the context of garments, protection applies to fabric designs but does not extend to aspects that are inseparable from the purpose of the outfit. For example, aspects of a sleeve intended to fulfill the purpose of covering the arm may be seen as a useful article, and thus would not be copyrightable.

The Sixth Circuit later reversed the decision, holding that while useful articles are not copyrightable, their components can be, provided they are separable. Varsity Brands, Inc. v. Star Athletica, LLC, 115 U.S.P.Q.2d 1773 (6th Cir. 2015). The Court used the following two-part inquiry: 1) is the design a design of a useful article and, if so, 2) does the design of the useful article incorporate pictorial, graphic or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the useful article. Id. at 1783. On the point of separability, the Court focused on both physical separability and conceptual separability. Id. at 1784.

In Star Athletica v. Varsity Brands, 2017 BL 89682 (U.S. Mar. 22, 2017), the U.S. Supreme Court affirmed the Sixth Circuit decision, ruling that the surface decorations (e.g., design elements) on the uniforms are separable from the functional elements of the garment, and are therefore eligible for copyright protection. Of particular importance, the Court abandoned the distinction between physical and conceptual separability. Id. at 11. Physical separability is satisfied when an element can be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact. Before this U.S. Supreme Court ruling, conceptual separability applied when the feature physically could not be removed from the useful article by ordinary means. The tests for conceptual separability varied across federal circuit courts. The Court held that separability is a “conceptual undertaking,” and thus the “physical-conceptual distinction is unnecessary.” Id. at 11.

Regarding design elements applied to useful articles, the U.S. Supreme Court held:

We hold that a feature incorporated into the design of a useful article is eligible for copyright protection only 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 fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. Id. at 4.

The Court held that the separability analysis applies to the design element, regardless of whether the design element appears on the useful article or is of the useful article. Id. at 6. The separability test includes:

  1. Identifying a 2-D or 3-D element that appears to have pictorial, graphic, or sculptural qualities
  2. Determining if the identified element has the capacity to exist apart from the utilitarian aspects of the useful article
  3. The identified element itself cannot be a useful article (i.e., imaginatively removing the element and applying it to another medium would replicate the useful article – see Id. at 10)Id. at 7.

The Court further affirmed that § 101 protects art that is fixed in a medium, regardless of whether the fixation first occurred in a medium of a useful article or some other medium. Id. at 6-9. The Court noted the shape of the uniform is not protectable, but the 2-D artwork of the design elements is. The fact that applying the elements to another medium would create pictures of the cheerleader outfit (the design elements of the cheerleader uniforms retain the outline of the uniform) has no bearing on the analysis. Id. at 9-10.

The Court further held that the act of performing a separability test (e.g., imaginatively removing the design elements) may result in a remaining useful article that is less useful or even non-functional. Id. at 10. Such a result would have no bearing on the analysis, because the copyright act also protects 2-D and 3-D applied art (art employed in the decoration or design of a useful object). Id. at 11. In other words, the art can embody some functional characteristics and still be eligible for copyright protection.

This outcome should encourage apparel manufacturers and other creators of arguably functional items with ornamental aspects to register and enforce copyrights in their designs. Prospective applicants should be prepared to identify non-useful design elements that have pictorial, graphic or sculptural qualities, and should be prepared to demonstrate that the element is able to exist apart from the useful article. Because the decision did not affect the originality requirement for copyright, applicants should still be prepared to argue that their design is original. Of course, applicants should continue to pursue other protection when available, including design patent protection and, in certain cases, trademark or trade dress protection.

Copyists, whether innocent or intentional, should choose subject matter carefully, keeping in mind that copyright for new works attaches automatically upon creation of the work. Although registration is required for a copyright owner to bring suit, in some cases this registration may be applied for after infringement, yet still support an action for attorney’s fees and enhanced damages. However, simply because a work was not registered at the time of infringement will not excuse an infringement. Furthermore, because copyright notice is permissive rather than mandatory, the absence of a notice should not be seen as any sort of safe harbor.