On March 22, 2017, the Supreme Court established a test for determining whether a design that is incorporated into a useful article is entitled to copyright protection. In its much-awaited opinion in Star Athletica, L.L.C. v. Varsity Brands, Inc., the Supreme Court affirmed the Sixth Circuit and held that the two-dimensional designs appearing on the surface of cheerleading uniforms were entitled to copyright protection because they were sufficiently separable from the utilitarian aspects of the uniform.
Clothing designs receive only limited protection under the Copyright Act, because clothing is considered to be a “useful article” with an “intrinsic utilitarian function.” As a practical matter, this means that the shape of a blouse generally cannot be copyrighted because, even if the shape somewhat creative, it has the utilitarian purpose of fitting the human body. However, as Section 101 of the Copyright Act indicates, a specific floral design depicted on the surface of a blouse can be copyrighted because it “can be identified separately from, and [is] capable of existing independently of, the utilitarian aspects of the article.”
Varsity Brands (“Varsity”) makes cheerleader uniforms, and has registered its designs for those uniforms with the Copyright Office as two-dimensional drawings. In 2010, Varsity sued Star Athletic (“Star”), a competing manufacturer, for allegedly using some of these copyrighted designs for its own cheerleader uniforms. Specifically, Varsity alleged that Star had copied Varsity’s two-dimensional stripes, colors and other ornamentation familiar to cheerleading uniforms.
The Western District of Tennessee held that Varsity’s designs were not severable from the garments’ utilitarian function as cheerleading uniforms, because the “colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular make the garment they appear on recognizable as a cheerleading uniform.” Because the utilitarian aspects of a design cannot be copyrighted, the Court dismissed Varsity’s claims.
The Sixth Circuit’s Five Part Test
The Sixth Circuit reversed, holding that the designs were separately identifiable because the wearer of a cheerleading uniform could jump, kick and perform all other functions necessary for cheerleading even if the uniform was plain and white, and devoid of Varsity’s designs. The Sixth Circuit also held that Varsity Brands’ designs could exist separately from the cheerleading uniforms because the designs could be added to the surface of garments other than cheerleading uniforms, and could be hung up on the wall as art.
In coming to its holding, the Sixth Circuit established a five-part inquiry for determining whether pictorial, graphic or sculptural features of a design are separable from the utilitarian aspects of the article:
(1) Is the design a pictorial, graphic or sculptural (“PGS”) work?
(2) Is it a design of a useful article—an article with an intrinsic utilitarian function?
(3) What are the utilitarian aspects of the useful article?
(4) Can the viewer identify the PGS features separately from the utilitarian aspects of the useful article?
(5) Can the PGS features of the useful article exist independently of its utilitarian aspects?
The Supreme Court’s Two Part Test
In a majority opinion authored by Justice Thomas, the Supreme Court affirmed the Sixth Circuit but set aside the five-factor test. In its place, the Supreme Court established a simpler two-factor separability test: a design incorporated into a useful article is eligible for copyright protection if the design “(1) can be perceived as a two-dimensional 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.”
Turning to the case as bar, the majority held that Varsity’s designs met this two-part separability test, and therefore were eligible for copyright protection, because the colors, shapes, stripes and chevrons on Varsity’s uniforms could be identified as “features having pictorial, graphic, or sculptural qualities,” which could be perceived as “two-dimensional” works of art if they were separated from the uniforms and placed in another medium, including for example, a painter’s canvas. In addition, adding the designs to a different medium – such as clothing other than the uniforms – would not replicate the uniforms themselves. The designs were therefore separable from uniforms and entitled to copyright protection.
Concurrence and Dissent
In concurrence, Justice Ginsberg observed that the actual copyrights at issue were not for three-dimensional articles of clothing, but for Varsity’s two dimensional drawings. Varsity could reproduce those two-dimensional drawings on a useful article, but the drawings themselves were not useful articles. Therefore, in Justice Ginsberg’s view, there was no need to reach the issue of separability, because the designs were already separate from the useful articles.
Justice Breyer, joined by Justice Kennedy, dissented. Justice Breyer urged the majority to “look at the designs . . . you will see only pictures of cheerleader uniforms.” Justice Breyer argued that, “even applying the majority’s test, the designs cannot be perceived . . . as works of art separate from the useful article” because the artistic arrangement of the two-dimensional design elements follows the pattern of a cheerleader uniform. Thus, according to Justice Breyer, the designs should not be protectable by copyright because you cannot “extract” the two-dimensional design features “without bringing along, via picture or design, the dresses of which they constitute a part.”
What the Supreme Court Decision Means
The majority cautioned that its decision was not meant to establish a new species of copyright protection for clothing design, but rather it meant that Varsity “may prohibit only the reproduction of the surface designs in any tangible medium of expression – a uniform or otherwise.” Varsity cannot, for instance, “prohibit any person from manufacturing a cheerleading uniform of identical shape, cut and dimension to the ones on which the decorations in this case appear.”
The decision provides useful clarity regarding the appropriate test for determining the copyrightability of the surface designs of useful articles. However, it does not provide much guidance for applying this new test, and the majority did not fully address Justice Breyer’s concern that the test may be especially difficult to apply where, as here, the arrangement of the two-dimensional design elements appears to track the shape of the utilitarian article. Nevertheless, the decision is an important one for clothing designers, because it construes the Copyright Act as offering potentially broad protection for the non-utilitarian design aspects of clothing, even when the designer has envisioned those elements as part of a utilitarian whole.