By Morgan E. Pietz, Esq. and Trevor Maxim Legal Perspectives April 01, 2017
In a recent Supreme Court case, the world’s largest manufacturer and distributor of cheerleading uniforms obtained a ruling that its product designs can be protected under copyright law. Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 WL 1066261 (S. Ct. Mar. 22, 2017).
Varsity Brands sued Star Athletica, a new competitor, shortly after Star’s founding in 2010. Varsity claimed that Star infringed on five of Varsity’s copyrighted designs for cheerleading uniforms, made up of varying arrangements of stripes, chevrons, and color blocks.
At the district court, Varsity’s claims were dismissed on summary judgment due to the “useful articles” doctrine. Under the Copyright Act, only certain categories of works fall within the subject matter of copyright. Among them is “pictorial, graphic, and sculptural works,” 17 U.S.C. § 102, the category in which Varsity sought to protect its uniform designs. However, the statute’s definition of “pictorial, graphic, and sculptural works” specifically excludes “the design of a useful article,” unless 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.
The district court found that Varsity’s graphic designs were not protectable because they could not be separated from the functional aspects of a cheerleading uniform—the stripes, chevrons, and color blocks were intrinsic to “cheerleading-uniform-ness.” Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *1 (W.D. Tenn. Mar. 1, 2014). On appeal, the Sixth Circuit reversed, finding that Varsity’s designs were a proper subject for copyright protection by classifying them as “fabric designs” fitting within the “pictorial, graphic, or sculptural works” category. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).
Supreme Court Decision
The Supreme Court found in favor of the industry leader Varsity, affirming the Sixth Circuit, in a decision authored by Justice Thomas.
The Court first clarified the proper separability test governing features of useful articles, given that various formulations have surfaced in appellate cases: “[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.”
Under this approach, two-dimensional features are not “inherently separable,” as Varsity claimed, and must still face the test if they are part of a useful article. The Court described the separability test as “a conceptual undertaking,” rejecting a common view that artistic features must be physically separable from a useful article as well as conceptually.
The Court declined Star’s invitation to analyze a copyright claimant’s design process and its products’ marketability, which here might have cut against protection, as neither component is mentioned in the Copyright Act.
According to the majority, the surface decorations of the cheerleading uniforms could be perceived as two-dimensional works “on a painter’s canvas” rather than the uniforms. The opinion stressed that the analysis should not consider what is left behind “after the imaginary extraction”—here, a blank white dress that is arguably no longer a cheerleading uniform—and instead should focus only on the creative aspects of the separated features.
Justice Breyer’s dissent, joined by Justice Kennedy, accepted the separability test articulated by the majority, but concluded that the cheerleading designs should not be protectable. The designs cannot be perceived as separate copyrightable works, Breyer contended, because even after removing them from the uniforms they simply “look like pictures of cheerleading uniforms,” rather than works of art that had been attached to uniforms. Breyer also noted Congress’ deliberate failure to protect fashion designs despite repeated requests to do so, allowing the industry to “thrive” by promoting “artistic and personal self-expression through clothing.”
A concurrence by Justice Ginsburg argued that the cheerleading designs “are standalone [pictorial, graphic, or sculptural] works” that are reproduced on uniforms, rendering the separability test unnecessary.
While the wording of the Court’s separability test is not groundbreaking, its analysis will likely broaden copyright protection for features of useful articles and encourage more plaintiffs in the fashion industry and others to sue imitators. The majority seemed unconcerned with the economic impacts of expanding the monopoly power of companies like Varsity Brands, which controls at least 80 percent of the cheerleading market.
Can the stripes, chevrons, and color blocks really exist independently of the utilitarian aspects of cheerleading uniforms, given that the design identifies the wearer as a cheerleader? Star pressed this question in its briefs, citing Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005), where the stripes, color blocks, and star-shaped buttons in casino uniforms were unprotectable because they functioned to identify the wearers as casino employees.
Neither the majority, concurrence, nor dissent referenced Galiano; instead the majority asserted that artistic features might “make that article more useful” and still qualify as “applied art,” protectable under the Copyright Act. This generous interpretation suggests that many functional features could now meet the majority’s “ultimate separability question,” which is whether a design feature would be independently copyrightable “in some tangible medium other than a useful article.”
The opinion referred to the “decisionmaker” multiple times, but never specified whether separability is exclusively a judge or jury question. In this case the context was summary judgment, but conceivably in a future case there may be factual issues more appropriate for a jury.
Ultimately, the Supreme Court’s decision will impact more than just the cheerleading industry. The new separability test will determine copyright protection for anything that may be considered a “useful article,” including clothing, furniture, automobiles, or even the burgeoning industry of 3D printing, where companies are still grappling with the legal implications of printed objects.
Trevor Maxim is a 3L at USC Gould School of Law and a Law Clerk in Gerard Fox Law's LA Office