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Cheerleader Uniforms Are Protectable As Copyrightable Designs of Useful Articles

Cheerleader uniforms made from fabric that features a pattern of lines, chevrons, and colorful shapes and that is registered at the Copyright Office are copyrightable as a design of a useful article with graphical features that are separable and independently identifiable, according to a 6-2 Supreme Court decision.  Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., 15-866, 3/22/2017.

The opinion by Justice Thomas sets out the correct analysis for determining whether copyrightable pictorial, graphical, or sculptural features incorporated into the design of a useful article are sufficiently separable and can be imagined to exist independent of the useful article to be protectable. Commenting on the capacity of the copyrightable feature to exist apart from the useful aspects of the article, Justice Thomas wrote “the feature must be able to exist as its own pictorial, graphic or scultural work … once it is imagined apart from the useful article.”

Background

Varsity Brands is a major producer of cheerleader uniforms and holds more than 200 copyright registrations for two-dimensional designs appearing on the surface of their uniforms and other garments. It sued Star Athletica, its competitor in the cheerleader uniform market, alleging infringement of its copyrighted designs.

The district court issued a summary judgment for Star Athletica, finding that the designs were not physically or conceptually separable “from the utilitarian function” of the uniform because the designs served the useful function of identifying the garments as cheerleading uniforms. The Sixth Circuit reversed, finding the designs separately identifiable from the uniform and designs capable of existing independently.

Star Athletica sought Supreme Court review.  AIPLA filed an amicus brief supporting the Sixth Circuit decision, but urging the Court to accept the case to resolve circuit conflicts in analyzing the availability of protection for copyrighted works incorporated into useful articles.

Statutory Provisions

Under 17 U.S.C. 102(a)(5), copyright protections is available for “pictorial, graphic, and sculptural works,” which Section 101 defines as two- and three-dimensional works. The statute does not protect useful articles as such, but the Section 101 definition of “useful articles” states when the design of a useful article may be considered a pictorial, graphic, and sculptural work. It may be so considered “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.”

Separately Identified and Independely Existing Features

The Court affirmed by a 6-2 vote the Sixth Circuit decision that copyright protects the cheerleader uniforms in this case. Justice Ginsburg concurred with the judgment but not with Justice Thomas's elaboration of the statutory test for protecting useful articles. Justice Breyer wrote a dissenting opinion joined by Justice Kennedy.

According to the Court, a feature incorporated into the design of a useful article is eligible for copyright protection only if

  1. the feature 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.

Elaborating on various aspects of this test, Justice Thomas offered the following:

  • The decisionmaker need not imagine a fully functioning useful article without the artistic feature, but only that the separated feature qualifies as a non-useful pictorial, graphic, or sculptural work on its own.
  • An artistic feature, 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.
  • However, this test does not render the shape, cut, and physical dimensions of the cheerleading uniforms eligible for copyright protection.
  • Because a useful article need not remain after the artistic feature has been imaginatively separated from the article, the distinction between “physical” and “conceptual” separability does not apply.
  • It is unnecessary to consider whether the artist judgment was exercised independent of functional influence, and whether the artistic features would be marketable without the functionality of the useful article.
  • The legislative history does not demonstrate an intent of Congress to channel intellectual property claims for industrial design into design patents or support a presumption against copyrightability.

In his dissenting opinion, Justice Breyer observed that the design features here are not separable from the cheerleader uniform because after they are removed in the imagination, there still remains a picture of a cheerleader uniform. Justice Thomas offered the following response:

This is not a bar to copyright. Just 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 applied. 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. Or consider, for example, a design etched or painted on the surface of a guitar. If that entire design is imaginatively removed from the guitar’s surface and placed on an album cover, it would still resemble the shape of a guitar. But the image on the cover does not “replicate” the guitar as a useful article. Rather, the design is a two-dimensional work of art that corresponds to the shape of the useful article to which it was applied. The statute protects that work of art whether it is first drawn on the album cover and then applied to the guitar’s surface, or vice versa. Failing to protect that art would create an anomaly: It would extend protection to two-dimensional designs that cover a part of a useful article but would not protect the same design if it covered the entire article.
The statute does not support that distinction, nor can it be reconciled with the dissent’s recognition that “artwork printed on a t-shirt” could be protected. Post, at 4 (internal quotation marks omitted). To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. Even if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, 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. They may prohibit only the reproduction of the surface designs in any tangible medium of expression–a uniform or otherwise.

To read the opinions in this case, click here.