U.S. Supreme Court Issues Decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., et al
On March 22, 2017, the United States Supreme Court issued its long-awaited opinion in Star Athletica, L.L.C. v. Varsity Brands, Inc., which resolved “widespread disagreement” among competing lower court tests for determining whether there is copyright protection for designs on “useful articles” such as clothing. The Court found that the chevrons and stripes design elements found on Varsity Brands’ specific cheerleader uniforms, shown below, can be separated from the useful article itself and therefore such designs are protectable under copyright law, subject to other considerations which the Court expressly left to be decided by lower courts.
Prior to the Supreme Court’s decision, lower courts in different parts of the United States employed different tests to determine whether designs on “useful articles” could be copyrighted. Several circuits used a “conceptual” separability test, while others used a “physical” separability test, and some even considered both or different variations of the two. Under the Supreme Court’s ruling yesterday, only “conceptual” separability matters now.
Justice Thomas delivered the Court’s 6-2 majority opinion. It began with an overview of “copyrightable subject matter,” including its “originality” component, and quickly turned to the “useful article doctrine.” Under that doctrine, “useful articles,” which are those having “intrinsic utilitarian functions,” such as clothing, furniture, and machinery, are not copyrightable in and of themselves, although any “pictorial, graphic, or sculptural” works of authorship depicted on them that can be “separately identified,” might be. For instance, the design on an ornamental protective cover of some kind might qualify to copyright protection, but the design of the protective cover itself would not. Courts and practitioners have commonly referred to this as the “separability” test.
The separability test was derived from the Supreme Court’s 1954 decision in Mazer v. Stein, which involved an ornamental statuette that served as the base of a table lamp. In that case, the defendant argued that copyright protection should not extend to articles that were intended for utilitarian purposes. In rejecting that argument, the Supreme Court held: (1) that copyright protection can extend to works of art that might also serve “useful” purposes, and (2) it is irrelevant, for copyright purposes, whether an article is intended primarily as a work of art or for some other purpose. In 1960, the U.S. Copyright Office enacted regulatory language implementing Mazer’s holdings, and in 1976, Congress adopted it directly into § 101 of the Copyright Act, which remains in force today.
Relying on § 101 and Mazer, the Court held that the appropriate standard for conducting the separability test “depends solely on statutory interpretation,” and the statute only contemplates conceptual separability. Under the statute, conceptual separability has two elements: (1) the work of authorship “can be identified separately from,” and (2) is “capable of existing independently of, the utilitarian aspects of the article.” The first element is easy to satisfy and only requires the decision maker to “spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” The second element is more difficult to meet, but is satisfied if the feature “identified and imagined apart from the useful article … would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.”
Applying this test to the designs on Varsity Brands’ cheerleader uniforms, the Court held that they met both elements of the conceptual separability test, and could therefore qualify for copyright protection if the designs constitute “copyrightable subject matter.” In reaching this decision, the majority refuted the dissent’s argument that designs cannot be separable if they resemble the shapes of their mediums, such as those on a cheerleading uniform or a painting on a canvas, retorting that because the designs do not “replicate” their mediums, they are capable of existing independently and separately without being considered useful articles themselves.
While holding that the designs on Varsity Brands’ cheerleading uniforms are separable from the useful articles themselves, and therefore could qualify for copyright protection despite their appearance on clothing, the Court made very clear in a footnote that it expressed no opinion on whether the plaintiff’s designs were sufficiently “original” as to warrant copyright protection—to the dismay of many legal practitioners and brand owners closely watching this case. The case will now be litigated back in the lower district court to determine whether the designs are “minimally creative” to constitute copyrightable subject matter and if so whether Star Athletica’s own designs infringe upon Varsity Brands’ copyrights.
The Court also reiterated that useful articles alone, such as clothing, are not protectable under copyright law, but instead could still be protected under design patents. As the Court stated, “To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art. … Respondents 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.”
Some apparel design companies are likely cheering the Court’s ruling. That said, we should expect to see a rise in both the number of copyright registrations sought and infringement suits filed over arguably relatively simple apparel designs. Moreover, as the Court declined to provide more objective guidance on precisely how to apply separability analysis, lower district courts will have to do this themselves.