Supreme Court Cuts Through the Noise to Clarify Copyrightability of Designs in Useful Articles

On October 20, 2016, we published an article discussing the Supreme Court’s decision to grant review of the Sixth Circuit’s August 2011 ruling in Varsity Brands, Inc. v. Star Athletica, LLC. The Supreme Court heard oral arguments on October 31, 2016, and, on March 22, 2017, issued its highly anticipated decision. As discussed below, the Supreme Court has clarified the test to determine whether a design feature on a useful article is subject to protection under the Copyright Act of 1976.

The Conflict: Whether Design Features On Useful Articles Are Copyrightable

As discussed in our previous post, fashion designers have longed for clarity on whether their apparel designs were protected by copyright law. The Copyright Act protects, among other works of authorship, “pictorial, graphic, and sculptural works.”[1] “The design of a useful article,” such as clothing, is “considered a pictorial, graphical, or sculptural work only 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.”[2]

Various federal courts have used different approaches when applying this “separability” concept, creating a lack of clarity over the years.[3]

The Supreme Court’s decision this week in Star Athletica, LLC v. Varsity Brands, Inc. has resolved that inconsistency by creating a standard two-step test to determine whether a particular design element is eligible for copyright protection. The opinion, penned by Justice Thomas, focused squarely on the plain language of the Copyright Act and largely eschewed extraneous factors previously used by lower courts.

At issue in the case are specific designs of cheerleader uniforms, pictured below. Both respondent and petitioner sell cheerleading uniforms.[4] In the original infringement action, then-defendant Star asserted that then-plaintiff Varsity’s designs were useful articles not subject to copyright protection, and that Varsity’s designs were not severable from the underlying uniforms.[5] The district court granted summary judgment in Star’s favor, finding that the uniform designs were utilitarian.[6] The Sixth Circuit reversed, reviewing the multitude of tests on the issue and applying a five-factor test to conclude that the designs were indeed separable.[7] The Supreme Court then granted certiorari “to resolve widespread disagreement over the proper test for implementing § 101’s separate-identification and independent-existence requirements.”[8]

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The disputed uniform designs of Varsity (top) and Star (bottom).

The Supreme Court Provides A Two-Step Test

The Supreme Court’s majority opinion provides a two-step test to determine copyright protection of a design element on a useful article: Protection is afforded if the element “(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.”[9]

The Court explained that the first step of this test should not be difficult: “The decisionmaker need only to be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.”[10] Applying this to the cheerleading uniforms in the case, the Court summarily concluded that such qualities were present in the “arrangement of colors, shapes, stripes, and chevrons.”[11]

The second step, the Court allowed, is “ordinarily more difficult to satisfy.”[12] The question to ask is whether “the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article”; or, in other words, “the feature must be able to exist as its own pictorial, graphic, or sculptural work … once it is imagined apart from the useful article.”[13] Logically, this means that the separated feature “cannot itself be a useful article,” which are categorically precluded from copyright protection.[14] Again applying this rubric to the cheerleader uniforms at issue, the Court found that the colors, shapes, stripes, and chevrons, if applied to another medium of expression such as a painter’s canvas, would certainly qualify as two-dimensional works of art, independently protectable by copyright.[15] This imaginative removal “would not replicate the uniform itself” and therefore would not constitute an unprotectable useful article.[16]

The Supreme Court Provides Clarity On Factors Not Included In The Relevant Test

The test is appreciably straightforward at first glance—simply isolate the particular element and determine whether it alone would be subject to copyright protection—and one may wonder why the Court felt the need to clarify this test at all. Perhaps the most important impact of the ruling, however, is what factors the Court found the test not to include, and what previous approaches the Court abrogated.

First, the Court criticized the doctrine of “inherent separability,” which held that “two-dimensional artistic features on the surface of useful articles” are exempt from the separability analysis.[17] As Section 101 requires, the Court explained, any pictorial, graphic, or sculptural work incorporated into the design of a useful article must be subjected to the test.[18] In practice, this is likely of little implication to, for example, T-shirts with printed graphics—although they can no longer be considered inherently separable, such graphics would in most instances easily satisfy the test in this case.

Second, the Court explained that, even if the designs when separated retain some aspects of the original utilitarian object, that alone is not a bar to copyright protection. [19] That is to say, even though the particular designs of these uniforms, when conceptually removed, still resemble a cheerleader’s uniform, it is of no consequence because “[j]ust as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is painted.”[20] However, it is important to note that the shape, or cut, of the garment itself is still clearly outside the realm of copyright protection.[21]

Third, the Court abrogated the “solely artistic” factor, which required that the useful article at issue remain useful once the separate design is extracted.[22] The Court, referring back to the text of the Copyright Act, emphasized that the separability test must look only at the extracted feature, “and not on any aspects of the useful article that remain after the imaginary extraction.”[23] Any other approach would be in conflict with the Copyright Act’s protection of “applied art,” which includes protectable expression that itself has a useful function.[24] “An artistic feature that would be eligible for copyright protection on its own cannot lose that protection simply because it was first created as a feature of the design of a useful article, even if it makes that article more useful.”[25] Accordingly, the Court mooted the usefulness of the “physical and conceptual severability” distinction, previously applied by some courts to determine whether a particular design could be actually physically separated from the useful article or only conceptually.[26]

Finally, the Court rejected the use of two objective factors that do not strictly relate to the perception of the work at issue. It is now irrelevant to ask “how and why” the article and feature were designed, or “whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influence.”[27] Nor should a court consider whether the independent “pictorial, graphic, or sculptural feature would still be marketable to some significant segment of the community” once divorced from the useful article.[28] According to the Court, neither of these considerations find support in the Copyright Act, and risk imposing “judicial aesthetic preferences” on copyright law.[29]

Impact Of The Supreme Court’s Decision

Star Athletica represents a clean-up of the myriad, and sometimes inconsistent, approaches undertaken by courts in determining the copyrightability of design elements embodied in useful articles. Although the test Justice Thomas puts forth seems mercifully simple on its face, in reality, it does little more than mirror the language of the statute while repealing some of the techniques used by lower courts to assist their own analyses. It remains to be seen how the test will be applied to other useful articles, such as shoes, furniture, and more industrial products. Further, in future apparel matters, it may be more difficult to easily separate the design element claiming copyright protection from the rest of the garment than it was in this case. What is clear is that the Supreme Court has upheld that the Copyright Act does protect pictorial, graphic, and sculptural designs embodied in apparel and other useful articles.


 

[1] 17 U.S.C. § 102(a)(5).
[2] 17 U.S.C. § 101.
[3] Brief of Petitioner at 11-12, Star Athletica, LLC v. Varsity Brands, Inc., (No. 15-866), 2016 WL 3923923, at *11-12.
[4] Star Athletica, LLC v. Varsity Brands, Inc., 560 U.S. ___, (No. 15-866) at 2 (2017).
[5] Id. at 2.
[6] Id. at 2.
[7] Id. at 2-3; Varsity Brands, Inc. v. Star Athletica, Inc., 799 F.3d 468, 474-75 (6th Cir. 2015).
[8] Id. at 1.
[9] Id. at 1-2.
[10] Id. at 7.
[11] Id. at 10.
[12] Id. at 7.
[13] Id. at 7.
[14] Id. at 7.
[15] Id. at 10.
[16] Id. at 10.
[17] Id. at 5.
[18] Id. at 5.
[19] Id. at 11.
[20] Id. at 11.
[21] Id. at 12.
[22] Id. at 12-13.
[23] Id. at 13.
[24] Id. at 14.
[25] Id. at 14.
[26] Id. at 15.
[27] Id. at 15-16.
[28] Id. at 15.
[29] Id. at 16.

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Justin Thiele

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