The US Supreme Court’s ruling in Star Athletica v Varsity Brands provides a path to copyrightability for pictorial or graphical elements of clothing designs and useful articles. Laura Ganoza and Julie McGinnis of Foley & Lardner explain.

The US Supreme Court issued its opinion in Star Athletica v Varsity Brands in March. In an effort to resolve inconsistency in the various circuits, the decision sets forth a test for determining when a feature of a useful article is protectable under US copyright law.

Varsity Brands, a manufacturer of cheerleading uniforms, originally sued rival manufacturer Star Athletica claiming it copied five copyrighted cheerleading uniform designs. The district court agreed with Star that Varsity did not have a valid copyright in the designs because the designs were for non-copyrightable useful articles, and the pictorial, graphic or sculptural elements of Varsity’s designs were not separable (physically or conceptually) from the utilitarian aspects of the uniforms, rendering them ineligible for copyright protection. Varsity took its appeal to the US Court of Appeals for the Sixth Circuit, which overturned the lower court and held that the designs were in fact eligible for copyright protection.

The Sixth Circuit lamented that the “[c]ourts have struggled mightily to formulate a test” for determining whether a feature is conceptually separable from the work as a whole. After reviewing the multitude of tests employed by the Copyright Office and the various circuit courts, the Sixth Circuit crafted its own test, and, applying it, found Varsity’s designs eligible for copyright protection.

Star took its appeal to the Supreme Court, asking it to clarify the appropriate test to determine separability.

After hearing oral argument by the parties and the assistant to the solicitor general on behalf the US government on 31 October 2016, and reviewing the parties’ briefs and the amicus briefs of several interested parties (including trade groups, law professors, and the US government), the Supreme Court ruled six to two in Varsity’s favour.

The Supreme Court rejected the multitude of tests from the districts, and adopted what appears to be a straightforward two-part test: “[An] artistic feature of the design of a useful article is eligible for copyright protection if the feature (i) can be perceived as a two- or three-dimensional work of art separate from the useful article and (ii) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.”

Applying this test, it found that Varsity designs, consisting of various stripes, chevrons, color blocks, and zig zags, were eligible for copyright protection.

Justice Clarence Thomas, writing for the majority, employed a common principle of statutory interpretation, which requires courts to give effect to the clear meaning of statutes as they are written. Giving effect to the meaning of Section 101 of the Copyright Act, as determined in the context of the Copyright Act as a whole, he wrote that “copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles”.

In the court’s view, the ultimate test for copyright eligibility is whether the feature would have been eligible for protection if it would have been fixed in a medium other than a useful article.

In her concurring opinion, Justice Ruth Ginsburg cited Varsity’s submissions to the Copyright Office to note that, in fact, its designs actually first appeared as pictorial and graphic works sketched on paper, not on the constructed uniforms themselves. The point the court drove home is that the medium in which the feature first appeared should not affect its eligibility for copyright protection.

The court made it clear that 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”.

Applying this test to the cheerleading uniforms at hand, the court first identified the decorations on the uniforms as features having pictorial, graphic, or sculptural qualities. Then, it found that if those decorations were applied in another medium (such as on a painter’s canvas), they would qualify as two dimensional works of art under Section 101 of the Copyright Act.

Finally, the court found that “imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.”

As a result, the decorations are separable and therefore eligible for copyright protection. The holding treats the colour blocks, chevrons, stripes, and zig-zags in the same manner that the courts routinely treat photographs or graphics applied to the surface of an article of clothing.

A key argument advanced by Star was that if the decorations were removed, all one would be left with is a plain white garment, which no longer serves a utilitarian purpose as a cheerleading uniform.

The court put this argument to bed, clarifying that the focus of the separability inquiry should be on the extracted features only and whether they qualify as a non-useful pictorial, graphic, or sculptural work, not what does or does not remain. In light of this, the court noted that it was “necessarily abandon[ing] the distinction between ‘physical’ and ‘conceptual’ separability”.

In its ruling, the court also expressly rejected Star Athletica’s arguments that certain objective factors should be considered, including whether the design elements reflect the designer’s artistic judgement exercised independently of functional influences, and whether the feature would still be marketable without its utilitarian feature.

Justice Thomas wrote that the text of the Copyright Act does not provide grounds for consideration of the creator’s design methods, purposes, and reasons, nor does not condition copyrightability on marketability. The court expressed concern that a marketability analysis would threaten to “prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act”.

Justice Stephen Breyer authored a dissenting opinion, joined by Justice Anthony Kennedy. In his dissent, Justice Breyer indicated that he agreed with much of the court’s opinion. However, he disagreed that the designs at issue were eligible for copyright protection. To illustrate his conclusion, he used the very test developed by the majority. After imaginatively removing the design elements “as they are arranged on the neckline, waistline, sleeves, and skirt of each uniform”, and then applying them to a hypothetical painter’s canvas, he concluded that the “painting would be of a cheerleader’s dress”, and so, cannot be separated from the useful article and “cannot be copyrighted”. Even though the same two-part test was used, the conclusion was different.

This does not bode well for having concrete guidance on interpreting the new separability test and highlights that even when using the same test, there can still be a difference of opinion.

While there is now a defined test to apply to the problem of copyright eligibility, there is not yet guidance as to how that test will apply to useful articles other than design elements applied to cheerleading uniforms.

Despite the Supreme Court’s ruling in Varsity’s favour, this case is not over. The case will be remanded back to the district court for further proceedings.

Importantly, though the designs at issue have been determined to be eligible for copyright protection, the court expressly clarified in a footnote that its decision did not hold that the surface decorations were copyrightable, and should not be read to express an opinion on whether the designs were sufficiently original to qualify for copyright protection, or on whether any other prerequisite of a valid copyright has been satisfied.

The bar for originality is extremely low—a work must only be “independently created by the author (as opposed to copied from other works), and … possess at least some minimal degree of creativity” (Feist Publications v Rural Telephone Service Company, 1991).

That said, a number of judicial doctrines, including public domain, merger, and scènes à faire, can and likely will be employed to determine whether certain elements should be considered merely common elements and so not original, copyrightable aspects of Varsity’s designs.

The court also made it abundantly clear that even if Varsity was ultimately successful in establishing a valid copyright in its designs, such copyright could only be used to prohibit the reproduction of the surface designs in a tangible medium of expression.

Such a copyright could not, however, be used to “prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in [the] case appear”. Copyright owners should not interpret the ruling to apply to elements of the design of an article of clothing other than surface decorations.

The Supreme Court’s announcement of a test, and subsequent finding that Varsity’s designs are eligible for copyright protection, is a victory for the apparel industry and other industries that often blur the lines between industrial design and art.

But it is clear that the issue of separability will likely continue to be one the courts wrestle with.

This is highlighted by the dissenting opinion’s application of the test and arrival at an opposite result.

Copyright owners, their counsel, and other interested parties should continue to monitor the decisions of the lower courts for additional guidance on the application of the Supreme Court’s test.

While there is much to be clarified, the court’s ruling provides a path to copyrightability for pictorial or graphical elements of clothing designs and pictorial or graphic elements of useful articles, and will likely result in an increase in enforcement activities in these fields.

Designers should also evaluate their existing copyright portfolios and consider proactively filing applications for their original designs which may qualify for protection in light of the Court’s ruling.

Both the court’s opinion and the dissent reference that there are other ways for clothing designers to protect their designs, such as design patents, trademarks and trade dress rights, and copyright in textile designs and patterns.

Though the court’s decision doesn’t give the industry the clarity it was hoping for with respect to copyrightability of clothing designs, it does leave copyright protection as a weapon in the clothing designer’s arsenal.

This article originally ran in IP Pro and was republished with permission by the editors. Read the published version here.