As we previously blogged, the Sixth Circuit held in 2015, that the colors, stripes, chevrons, and similar graphic designs of the plaintiff’s cheerleading uniforms “are copyrightable pictorial, graphic, or sculptural works” and are “not uncopyrightable useful articles.” The Supreme Court, in Star Athletica, LLC v. Varsity Brands, Inc., Doc. No. 15-866, affirmed, 6-2, in an opinion by Justice Thomas on March 22, 2017. Justice Ginsburg filed an opinion concurring in the judgment. Justice Breyer filed a dissenting opinion, in which Justice Kennedy joined.

The Copyright Act of 1976 makes “pictorial, graphic, or sculptural fea­tures” of the “design of a useful article” eligible for copyright protec­tion as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian as­pects of the article.” 17 U. S. C. §101. The Court in Star Athletica held that a feature incorporated into the design of a useful article is eligi­ble for copyright protection only if the feature (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, that is, if it were imagined separately from the useful article into which it is incorporated.

First, the Court held that a separability analysis was required. It rejected the argument that two-dimensional surface decorations are always separable, even without resorting to a §101 analysis, because they are “on a use­ful article” rather than “designs of a useful article,” as inconsistent with the text of §101. By providing protection for “pictorial, graphical, and sculptural works” incorporated into the “design of a useful article,” §101 necessarily contemplates that such a design can include two-dimensional features.

The Court viewed the question of how to determine whether a feature incorporated into a useful article “can be identified separately from,” and is “capable of existing independently of,” the article’s “utilitarian aspects” as a matter of “statutory inter­pretation.” In the Court’s view, §101’s separate-identification requirement is met if the decision maker is able to look at the useful article and spot some two-or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. Further, in the view of the Court, to satisfy the independent-existence re­quirement, the feature must be able to exist as its own pictorial, graphic, or sculptural work once it is imagined apart from the useful article.

Applying that test, the Court held that the surface decorations on the cheerleading uniforms are separable and therefore eligible for copy­right protection.

• The decorations can be identified as features having pictorial, graphic, or sculptural qualities.
• If those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under §101. Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uni­form itself.

Justice Thomas rejected the dissent and Petitioner’s related arguments that the decorations are ineligible for copyright protection because, when imaginatively extracted, they form a pic­ture of a cheerleading uniform. Justice Thomas explained that this is not a bar to copyright because two-dimensional fine art correlates to the shape of the canvas on which it is painted, and similarly, two-dimensional applied art correlates to the contours of the article on which it is applied.

The Star Athletica Court rejected the other objections to copyrightability. As to the relative utility of the plain white uniform that would remain if the designs were physically removed from the uniform, the Court explained that separability analyzes the extracted feature and not on any aspects of the useful article remaining after the imaginary extraction.

The Court went on to reject the proposed incorporation of two “objective” components into the test – one requiring consideration of evidence of the creator’s design methods, purposes, and reasons, and one looking to the feature’s marketability as not grounded in the Copyright Act.

Finally, the Court dismissed the claim that protecting surface decora­tions is inconsistent with Congress’ intent to entirely exclude indus­trial design from copyright. In the Court’s view, Congress gave copyright protection to certain features of industrial design and presumptive hostility toward protection for industrial design would undermine that choice.

Justice Ginsburg, concurring, would not take up in this case the separability test appropriate under 17 U. S. C. §101, finding that consideration of that test is unwarranted because the designs at issue are not designs of useful articles, but rather the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.

Justice Breyer, dissenting, agreed with much in the Court’s opinion, but disagreed that the designs at issue are eligible for copyright pro­tection. In Justice Breyer’s view, the designs cannot “be perceived as . . . two-or three-dimensional work[s] of art separate from the useful article.” As Justice Breyer explained (citations omitted):

Look at the designs that Varsity submitted to the Copy­right Office. You will see only pictures of cheerleader uniforms. And cheerleader uniforms are useful articles. A picture of the relevant design features, whether separately “perceived” on paper or in the imagination, is a picture of, and thereby “replicate[s],” the underlying useful article of which they are a part. Hence the design features that Varsity seeks to protect are not “capable of existing inde­pendently o[f] the utilitarian aspects of the article.” 17 U. S. C. §101.

The opinion of the Court, as explicated by the concurrence and the dissent, provide valuable contour to the application of §101’s mandate that “pictorial, graphic, or sculptural fea­tures” of the “design of a useful article” are eligible for copyright protec­tion as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian as­pects of the article.”