Supreme Court Establishes National Test to Determine When an Artistic Element of a Useful Item Is Protectable Under the Copyright Act

March 31, 2017

On March 22, 2017, the Supreme Court issued its decision in Star Athletica v. Varsity Brands, holding that design features incorporated into clothing and other useful articles are copyright eligible under Section 101 of the Copyright Act, 17 U.S.C. § 101.  Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. ___, *1 (2017) (“Op.”).  Below, we provide a brief review the Star Athletica case and possible effects of the Supreme Court’s decision.  Gibson Dunn’s intellectual property, transactional, and appellate attorneys are available to discuss in more detail at your convenience.

I.    Background

Varsity Brands, Inc. and related entities (“Varsity”) design, make, and sell cheerleading uniforms.  Many of these uniforms are emblazoned with two-dimensional designs, such as chevrons, stripes, or zigzags, which give the uniforms their distinctive cheerleading look.  Varsity holds copyrights for many of these two-dimensional designs.  The company brought a lawsuit for copyright infringement against Star Athletica, L.L.C.–another seller of cheerleading uniforms–alleging that Star Athletica was infringing several of its copyrights by selling cheerleading uniforms with similar two-dimensional designs.

Star Athletica defended the suit on the ground that the uniform designs were not “separable” from the uniform itself, and were thus not copyrightable.  The Copyright Act does not protect “useful article[s],” like garments, which have “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101.  But the Act does protect design features of useful articles that are “separable” from the useful article.  A design feature is separable “if, and only to the extent that, such 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.”  Id.

Star Athletica argued that Varsity’s uniform designs were not “separable” from the uniforms themselves–and were therefore not copyrightable–because the designs served the utilitarian function of identifying the garments as cheerleading uniforms.  The district court agreed with Star Athletica, but the Sixth Circuit reversed, holding that the designs were separable.

Star Athletica then sought a writ of certiorari from the Supreme Court, supported by amici who noted that courts had enumerated no fewer than nine distinct tests for conceptual separability and urged the Supreme Court to create a uniform test.

II.    The Majority Opinion Affirming The Sixth Circuit

In a thoroughly textualist opinion written by Justice Thomas, the Supreme Court affirmed the Sixth Circuit.  The Court declined to engage in a “free-ranging search for the best copyright policy,”  Op. 6, and held that Varsity’s two-dimensional cheerleading-uniform designs are “separable features . . . of those cheerleading uniforms.”  Id. at 4.

Hewing closely to the text of Section 101 of the Copyright Act, the Court held that two requirements must be satisfied for a design to be separable from a useful article:

  • First, under the “separate-identification” requirement, a useful article must be capable of being “perceived as a two- or three-dimensional work of art separate from the useful article.”  Op. 1, 17.
  • Second, under the “independent-existence” requirement, “the separately identified feature . . . must be able to exist as its own pictorial, graphic, or sculptural work . . . once it is imagined apart from the useful article.”  Id. at 7.

Thus, the separately identified feature “cannot itself be a useful article or ‘an article that is normally a part of a useful article’ (which is itself considered a useful article).”  Id. at 7 (quoting 17 U.S.C. § 101).  “Nor could someone claim a copyright in a useful article merely by creating a replica of that article in some other medium . . . . Although the replica could itself be copyrightable, it would not give rise to any rights in the useful article that inspired it.”  Id. at 7-8.

Summarizing the test, the Court characterized the “ultimate separability question” as “whether the feature for which copyright protection is claimed would have been eligible for copyright protection . . . had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.”  Op. 8.  That separability inquiry, the Court concluded, comports with the Act’s structure and the Court’s precedent by ensuring that “copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles.”  Id.

The Court rejected Star Athletica’s argument that only “solely artistic”–as opposed to utilitarian–features of useful articles can be separable.  It was thus irrelevant whether the cheerleading uniforms remain “equally useful,” or even “‘similarly useful,'” once the designs are imaginatively removed.  Op. 13 (citation omitted).  That is so, the Court concluded, because the “focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.”  Id.  In addition, limiting copyright protection to “solely artistic” features of useful articles would make an otherwise copyright-eligible design “lose that protection simply because it was first created as a feature of the design of a useful article”–a result inconsistent with the Copyright Act and the Court’s precedent.  Id. at 14.

In rejecting this argument, the Court “necessarily abandon[ed] the distinction between ‘physical’ and ‘conceptual’ separability, which some courts and commentators h[ad] adopted based on the Copyright Act’s legislative history.”  Op. 15.  The Court determined that “separability is a conceptual undertaking,” and does not depend on whether the design can be “‘physically separated from the article.'”  Id. (citation omitted).

Applying its separability test to Varsity’s uniform designs was “straightforward.”  Op. 10.  The chevrons, stripes, and shapes, if “separated from the uniform and applied to . . . a painter’s canvas,” would “qualify as ‘two-dimensional . . . works of . . . art,'” eligible for copyright.  Id. (quoting 17 U.S.C. § 101).  The fact that this hypothetical painter’s canvas would “retain the outline of a cheerleading uniform” is “not a bar to copyright,” the Court said.  Id. at 11.  The imaginary painter’s canvas still “would not replicate the uniform itself” as a useful article, just as “a design etched or painted on the surface of a guitar,” when placed on an album cover, “does not ‘replicate’ the guitar as a useful article,” even though the design “would still resemble the shape of a guitar.”  Id. at 10-11.  Varsity’s uniform designs were thus separable from the uniforms themselves and copyrightable.

At the same time, the Court emphasized the limits of its ruling.  Varsity Brands and its related entities “have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear.  They may prohibit only the reproduction of the surface designs in any tangible medium of expression–a uniform or otherwise.”  Op. 12.  And the Court expressed “no opinion on whether these works are sufficiently original to qualify for copyright protection, or on whether any other prerequisite of a valid copyright has been satisfied.”  Id. at 11 n.1 (citation omitted).[1]

III.    The Dissenting Opinion

Justice Breyer wrote a dissenting opinion, which Justice Kennedy joined.  The dissent, emphasizing the legislative history of the Copyright Act of 1976, primarily took issue with the majority’s conclusion that a design on a useful article can be copyrightable when the design, imagined apart from the useful article, simply “picture[s] the useful article.”  Dissent 6.  Under that approach, the dissent worried, “virtually any industrial design” could be “imaginatively reproduced on a painter’s canvas” and thus be eligible for copyright.  Id. at 6-7.  The dissent believed that such expansive copyright protection ignored Congress’s repeated decisions “not to grant full copyright protection to the fashion industry” and “risk[ed] increased prices and unforeseeable disruption in the clothing industry, which in the United States alone encompasses nearly $370 billion in annual spending and 1.8 million jobs.”  Id. at 9.

The dissent’s view appeared to be focused on a concern that by extending copyright protection to basic forms of surface designs, the majority would restrict competition for the underlying item.  Justice Breyer wrote that a copyright claim consisting of “a plain rectangular space depicting chevrons and stripes, like swaths from a bolt of fabric” would be ineligible for copyright because it would be “plainly unoriginal.”  Dissent 11.  But under the majority’s approach, the dissent argued, Varsity could “prevent its competitors from making useful three-dimensional cheerleader uniforms by submitting plainly unoriginal chevrons and stripes as cut and arranged on a useful article”–here, a cheerleading dress.  Id.  That result, the dissent continued, will improperly allow Varsity to “obtain copyright protection that would give them the power to prevent others from making those useful uniforms . . . .”  Id.  In reaching that result, the dissent believed the majority “lost sight of its own important limiting principle”–namely, that one may not “‘claim a copyright in a useful article merely by creating a replica of that article in some other medium.'”  Id. (quoting Op. 7).

IV.    Possible Effects of The Supreme Court’s Decision in Star Athletica

The Star Athletica decision has important implications for the fashion and industrial design industries.

In brief, the Star Athletica decision confirms that two-dimensional designs incorporated into useful articles, such as clothing, can be copyright eligible.  The Court characterized the first step of the separability analysis–the “separate-identification” step–as “not onerous.” Op. 7.  And while it labeled the “independent-existence requirement” as “ordinarily more difficult to satisfy,” id., the Court had no trouble determining that the uniform designs at issue in the case could stand alone as “pictorial” or “graphic” works when imagined apart from the uniforms themselves.  Id. at 10-11.  That low bar for the copyright eligibility of clothing designs may lead fashion designers to attempt to “kill[] knock-offs with copyright,” as Justice Sotomayor put it at oral argument.

The decision may, however, lead to additional litigation over three-dimensional artistic features that are incorporated into useful articles.  In dissent, Justice Breyer observed that courts have “denied copyright protection to objects that begin as three-dimensional designs, such as measuring spoons shaped like heart-tipped arrows, candleholders shaped like sailboats, and wire spokes on a wheel cover.”  Dissent 4-5 (citations omitted).  But the majority expressly refused to adopt a bright-line rule that would render unprotectable two- and three-dimensional designs that are incorporated into useful items.  Thus, to the extent that the design of a “heart-tipped arrows” (id.) could be “imaginatively remov[ed]” and “appl[ied] in another medium” without replicating the spoons “as a useful article” (Op. 10-11), the design of the heart-tipped arrow would be protectable if it were sufficiently original to qualify for protection as a pictorial, graphic, or sculptural work standing on its own.

On one hand, this could create new issues of fact for particular artistic elements of useful items.  On the other hand, it is generally in keeping with prior decisions that have found that elements like a decorative animal-theme hood on a children’s costume may be protectable to the extent it is separable from the more utilitarian function of covering the wearer’s body.  See, e.g., Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 329 (2d Cir. 2005).

The determining factor in these cases may be the factual question of how the court defines a given useful item’s “use.”  In this case, the majority appeared to view the use of the uniform in a narrow sense to clothe the wearer and not to represent a school or a make a particular impression, rendering it easier to separate the decorative elements of the cheerleader’s uniform.  In a future case, however, it may be more difficult to determine if the protected work is integral to or separate from the relevant item’s intended use.

   [1]   Justice Ginsburg concurred only in the judgment.  Concurrence 1-3.  In her view, the case could have been resolved on narrower grounds urged by the United States as amicus curiae.  The majority declined to consider the United States’ argument because it was “not raised below” and was “not advanced in this Court by any party.”  Op. 6.

Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding the issues discussed in this update.  Please contact the Gibson Dunn lawyer with whom you usually work, any member of the firm’s Intellectual Property, Appellate and Constitutional Law, Fashion, Retail and Consumer Products or Media, Entertainment & Technology practice groups, or the following practice leaders:

Intellectual Property Group:
Josh Krevitt – New York (+1 212-351-4000, [email protected])
Wayne Barsky – Los Angeles (+1 310-552-8500, [email protected])
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James C. Ho – Dallas (+1 214-698-3264, [email protected])
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Fashion, Retail and Consumer Products Group:
Lois F. Herzeca – New York (+1 212-351-2688, [email protected])
David M. Wilf  – New York (+1 212-351-4027, [email protected])
Howard S. Hogan – Washington, D.C. (+1 202-887-3640, [email protected])

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