In a 6-2 decision authored by Justice Thomas, the US Supreme Court has now provided guidance as to whether aesthetic designs, such as stripes, chevrons, zigzags and color blocks of a cheerleading uniform are eligible for copyright protection.
In a 6-2 decision authored by Justice Thomas, the US Supreme Court has now provided guidance as to whether aesthetic designs, such as stripes, chevrons, zigzags and color blocks of a cheerleading uniform are eligible for copyright protection. In doing so, the Supreme Court affirmed the decision of the US Court of Appeals for the Sixth Circuit that aesthetic designs of a cheerleading uniform are “separable” from the purpose of the uniform. Star Athletica, L.L.C. v. Varsity Brands, Inc., Case No. 15-866 (Supr. Ct., Mar. 22, 2017) (Thomas, Justice) (Ginsberg, Justice, concurring) (Breyer, Justice, joined by Kennedy, Justice, dissenting).
Under the Copyright Act of 1976, “useful articles” (i.e., articles having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information) is copyrightable “only if, and only to the extent that, such design incorporates … graphic … 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, 102.) Indeed, Congress provides copyright protection for original works of art, but not for industrial or utilitarian designs. But, what counts as art and what counts as industrial design can be difficult to distinguish.
The case involved cheerleader uniforms designed by Varsity Brands and later copied by Star Athletica. After Varsity sued Star for infringing Varsity’s registered copyrights on its cheerleading uniform designs, the district court dismissed the case on summary judgment, concluding that the aesthetic features of the uniform had merged with the functional or utilitarian purpose of the uniform, which is to identify the wearer as a cheerleader. In other words, the aesthetic features could not be “physically or conceptually” separated under § 101.
However, the 6th Circuit reversed, holding that while the uniforms did have an “intrinsic utilitarian function” namely to “cover the body, wick away moisture, and withstand the rigors of athletic movements,” the aesthetic graphics (e.g., zigzags and chevrons) did not enhance the functionality of the uniform since the wearer can still cheer, jump, kick and flip without those aesthetic features. Rather, the aesthetic features were “separately identifiable” and could exist independently since the graphics could be transferred onto other types of garments. Varsity Brands et al. v. Star Athletica, Case No. 14-5237 (6th Cir., Aug. 19, 2015) (IP Update, Vol. 18 No. 9).
The 6th Circuit panel was split, the dissent arguing that the case should turn on how “function” is defined (i.e., in terms of the decorations in issue), which would determine whether the designs were copyrightable.
Petition For Writ of Certiorari
The Supreme Court granted certiorari to consider the question: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act? (IP Update, Vol. 19 No. 5).
The Supreme Court Decision
As Justice Thomas explained, the Court was “task[ed] to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of respondents’ cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms.”
As an initial matter, the Court rejected Varsity’s argument that a “separability analysis” was even necessary in this case because the aesthetic features or “surface decorations” are “two dimensional graphic designs that appear on useful articles” but are not themselves designs of useful articles. Varsity argued that they are, therefore, protected two-dimensional works of graphic art without regard to any separability analysis under § 101 because the two-dimensional features on the surface of the useful article (i.e., clothing) are “inherently separable.” The United States, in its amicus brief, argued that a separability analysis was unnecessary in light of the fact that Varsity had valid copyrights in the features and “simply reproduced those copyright works on the surface” of the cheerleading uniform—which Varsity had the exclusive right to do under the Copyright Act. But the Court found this argument inconsistent with the Copyright Act, which requires “separability analysis for any ‘pictorial, graphic, or sculptural features’ incorporated into the ‘design of a useful article.’”
In terms of separability, the Court made clear that the “controlling principle in this case” depends “solely on statutory interpretation” and therefore considered the text of § 101, not in isolation, but in terms of “the provisions of the whole law” which gives instruction as to its meaning. The statute (§ 101) provides a two-prong test to determine eligibility of a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article”: if the aesthetic feature (1) “can be identified separately from” and (2) is “capable of existing independently of the utilitarian aspects of the article.” As explained by the Court, the first requirement (“separate identification”) is not onerous: the useful article meets the first prong if one is able to look at the useful article and spot some two- or three-dimensional elements that appear to have pictorial, graphic or sculptural qualities. The second requirement (“independent-existence requirement”) is more difficult: “The decision maker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.” If the feature is not capable of existing as a pictorial, graphic or sculptural work once separated from the useful article, then it was not an aesthetic feature but rather a utilitarian feature of the article.
The Court found support for its interpretation in its precedent (Mazer) as well as §§ 106(a) and 113(a) of the Copyright Act, as both provisions make clear that copyright protection extends to articles “regardless of whether they were created as free-standing art or as features of useful articles.” The “ultimate separability question,” the Court states, “is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.”
Applying this test to cheerleading uniforms, the Court held that the stripes, chevrons, zigzags and color blocks are separable from the uniform and eligible for copyright protection because: (1) they are features with pictorial, graphic or sculptural qualities, and (2) they would qualify as “two-dimensional” works of art under § 101 if they were separated from the uniform and applied to another medium. As the court noted, removing the decorations to another medium would not “replicate the uniform itself.” Having satisfied these requirements, the Court affirmed the judgment of the Court of Appeals.
Concurrence and Dissent
Justice Ginsburg filed a concurrence, agreeing with the result but stating that engaging in a separability test was unwarranted because the designs are not designs of useful articles but are copyrightable standalone pictorial and graphic works that Varsity reproduced on useful articles (i.e., on cheerleading uniforms). Moreover, having gained copyright protection on its designs, Varsity had the exclusive right to reproduce the designs on such useful articles.
Justice Breyer filed a dissent which Justice Kennedy joined, challenging the second prong of the test. Justice Breyer’s main argument was: even if the decorations from the uniform were removed from the uniform and placed on another medium (e.g., a canvas), they would still “create ‘pictures of cheerleader uniforms.’” One example Justice Breyer used was that objects that begin as three-dimensional designs—such as measuring spoons shaped like heart-tipped arrows, or candleholders shaped like sailboats—did not qualify for copyright protection because the designs are inseparable from the functional aspects of the object itself. For instance, the heart-tipped arrow shape or sailboat designs “cannot be physically separated because they themselves make up the shape of the spoon, candleholders….which they are a part.” Such designs “necessarily bring along the underlying utilitarian object” and thus “each design is not conceptually separable from the physical useful object.” In other words, the design features that Varsity seeks to protect are not “capable of existing independently o[f] the utilitarian aspects of the article.”
The majority responded to Justice Breyer’s concern that removing the stripes, chevrons, zigzags and color blocks from the cheerleading uniform would still “replicate” the cheerleader uniform. Justice Thomas appealed to the practical reality of two-dimensional fine art: it must often conform or correspond to the shape, contours and dimensions of the medium upon which it is fixated, noting that “[a] fresco painted on a wall, ceiling panel, or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted.” A further applicable example is that of a design etched or painted on the surface of a guitar that retains or resembles the shape of the guitar when removed from the guitar’s surface and placed on another medium, like an album cover. That these designs resemble or retained the shape of the guitar or uniform is not a bar to copyright protection.
Although the Supreme Court’s decision focuses on the ubiquitous and well-known designs on cheerleading uniforms, the impact of the Court’s decision will be exciting to watch as it trickles down to the designer knock-off economy and catches up to the world of 3D printing.