In Short

The Action: The United States Supreme Court held on March 22, 2017, that designs on the surface of a cheerleading uniform were eligible for copyright protection, clarifying the test used to determine when design features of useful articles can be protected by copyright.

The Effects: A design of a useful article will be 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 fixed in some other tangible medium of expression—if imagined separately from the useful article into which it is incorporated.

Looking Ahead: The ruling clarifies the scope of protection afforded to designs incorporated into useful articles, which could result in increased efforts to seek copyright protection for such designs, particularly in the apparel industry.

In a decision likely to affect the fashion and design industries, on March 22, 2017, the United States Supreme Court clarified the test for determining when a design feature incorporated into a "useful article" (such as apparel) is subject to copyright protection and held that designs on the surface of cheerleading uniforms were eligible for copyright protection.

Under the Copyright Act, the design of a useful article is entitled to protection only if the design "incorporates pictorial, graphic, or sculptural works that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101. The Supreme Court determined that designs on cheerleading uniforms had pictorial, graphic, or sculptural qualities, and that if these decorations were separated from the uniform and supplied in another medium, they would qualify as works of art under the statute.

Garments have long been considered utilitarian articles not subject to copyright protection, so the Court's ruling is a departure from past practice.

Case Background

In 2010, Varsity Brands accused competitor Star Athletica of infringing copyrights in its uniform designs by producing uniforms featuring those designs, photographing models wearing the uniforms, and publishing photographs of the uniforms in its catalog and on its website.

In order to assert a valid claim of copyright infringement, Varsity first had to establish that it held a protectable interest in its uniform designs. While Varsity held five copyright registrations for sketches and photographs of the cheerleading uniform designs with the U.S. Copyright Office, the district court determined that it was not possible to physically or conceptually sever the designs from the uniform's utilitarian function. Thus, copyright protection was not available. On appeal, the United States Court of Appeals for the Sixth Circuit panel majority vacated the district court's decision, concluding that Varsity's designs could be physically and conceptually severed from the uniform itself and were entitled to protection.

The Supreme Court granted certiorari to clarify "the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act."

Circuit Split

For the past century, courts and scholars have struggled to define a test for determining when a feature of a useful article can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article itself. Prior to the Supreme Court's ruling, courts and scholars had proposed at least 10 different tests for separability.

The separability of clothing designs, in particular, has generated considerable litigation, and the apparel industry has long lobbied for enhanced protections for fashion designs. While the shape and style of clothing designs are almost uniformly considered inseparable from their utilitarian aspects, some courts have found certain designs on clothing, including the stripes, chevron, and color blocks at issue in Star Athletica as well as fabric patterns and prints, to be entitled to copyright protection.

The Supreme Court's Holding

In a 6–2 decision by Justice Thomas, the Supreme Court held that a useful article is eligible for copyright protection under the Copyright Act only if it:

• Can be perceived as a two- or three-dimensional work of art separate from the useful article itself, and
• Would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article into which it is incorporated.

See Opinion, at 17. Because the uniform decorations would qualify as two-dimensional works of art if separated from the uniform and applied in another medium, they were protected by copyright.

"If the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter's canvas—they would qualify as 'two-dimensional … works of … art,'" the Supreme Court reasoned, affirming the Sixth Circuit's holding. "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." Id. at 10-12.

The Court rejected arguments that protection for design elements should hinge on "objective" elements such as: (i) whether the design elements reflect the designer's artistic judgment "exercised independently of functional influence" and (ii) whether the design features would still be "marketable to some significant segment of the community without its utilitarian function." See id. at 15. The Court held that copyright protection was limited to the surface designs, and there was "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." Id. at 12.

Justice Ginsburg concurred in the Opinion but determined that the Court need not address separability to decide the case, reasoning that the uniform decorations are not designs of useful articles but rather copyrightable works simply reproduced on useful articles.

Justice Breyer dissented in an Opinion joined by Justice Kennedy, reasoning that the designs were not separable because removing them from the uniforms would simply create "pictures of cheerleader uniforms," which are useful articles not entitled to protection. The dissent also warned that granting enhanced protection to garment designs would risk increased prices and "unforeseeable disruption" in the clothing industry.

Implications

The ruling provides much-needed clarity as to when design features of utilitarian articles may be protected by copyright. Because the decision clarifies when designs should be considered separable from utilitarian articles such as clothing, designers will likely seek broader protection for their design elements and increase enforcement efforts. While broader protections would be warmly welcomed by those who create and manufacture utilitarian articles, some, including Justices Breyer and Kennedy, worry that the Court's decision will provide too much exclusivity to designers, which will lead to increased costs of clothing and similar goods and create more potential for litigation.

Four Key Takeaways

1. Design features that cannot be perceived as separable works of art or that are not capable of existing as pictorial, graphic, or sculptural works when separated from a useful article are not protected by copyright.
2. The ruling expands protections for design elements of useful articles and may result in heightened efforts to protect and enforce separable designs features of utilitarian items (such as clothing and furniture).
3. Designers should think twice before incorporating design elements "inspired by" others, as the Court's decision could spur an uptick in copyright protection and enforcement efforts.
4. The Court's adoption of a single test should promote a more uniform application of the separability doctrine, although the conceptual difficulty of separating "design" from function for apparel and other useful articles still makes such questions far from easy.