The United States Supreme Court, in the case Star Athletica, LLC v. Varsity Brands, Inc., et al., Case No. 15-866, ruled in a 6-2 opinion that two-dimensional designs applied to three-dimensional useful articles, in this case cheerleading uniforms, are entitled to copyright protection. The majority opinion by Justice Clarence Thomas held that a feature of the design of a useful article is eligible for copyright 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 Section 101 of the Copyright Act, a “useful article” is an item or object “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Such utilitarian objects, including the three-dimensional designs of cheerleading uniforms, are not protected under U.S. Copyright Law.
Justice Thomas wrote for the Court that its test for separability starts with Section 101, in which “‘pictorial, graphic, or sculptural features’ of 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.'” The Court explained that its decision is “not a free-ranging search [f]or the best copyright policy, but rather ‘depends solely on statutory interpretation,'” citing the last Supreme Court opinion to address the issue of separability – the 1952 case of Mazer v. Stein.
The Court described its task in the Varsity case as “to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of [Varsity’s] cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms.” The Court, applying this test, held that “one can identify the [designs] as features having pictorial, graphic, or sculptural qualities” and can separate the designs from the cheerleading uniforms on which the designs appear. The majority opinion and the concurrence of Justice Ginsburg gave substantial credence to the fact that Varsity had “applied the designs in this case to other media of expression – different types of clothing – without replicating the uniform.”
By affirming the Sixth Circuit’s reversal of the district court, the Supreme Court rejected two of Star’s arguments: (1) Varsity’s designs are not protectable because they are “necessary to two of the uniforms’ ‘inherent, essential, or natural functions’ – identifying the wearer as a cheerleader and enhancing the wearer’s physical appearance;” and (2) that the separability analysis should include objective components asking whether the design elements reflect the designer’s artistic judgment exercised independently of functional influence or are marketable to a “significant segment of the community” if separated from the underlying useful article.
The Court opined that “asking whether some segment of the market would be interested in a given work threatens to prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”
PRO TIP: The Varsity ruling will impact the fashion industry and its approach to copyright protection, but the ruling also supports other businesses that apply artistic elements on useful articles and may want to consider seeking copyright protection by registering copyright protectable designs at the U.S. Copyright Office.
Baker Donelson represented Varsity from the filing of the complaint through oral argument before the Sixth Circuit and briefing of the case before the Supreme Court. Goodwin Procter and Cowan Liebowitz were also involved with the Supreme Court briefing, while Goodwin Procter handled oral argument before the Supreme Court.