On Wednesday, March 22nd, the Supreme Court of the United States gave its opinion in the copyright case, Star Athletica, L.L.C. v. Varsity Brands, Inc. In a 6-2 decision, the Supreme Court found that the design feature of a cheerleading uniform is separate from the uniform itself and is protectable under the Copyright Act.
This affirms the U.S. Court of Appeals for the Sixth Circuit’s reversal of a lower court’s decision. In an earlier decision, a U.S. District Court ruled on an infringement action filed by Varsity Brands Inc. (“Varsity”) against Star Athletica, L.L.C. (“Star”). Varsity designs and manufactures athletic clothing and cheerleading uniforms. They received a copyright registration for the two-dimensional artwork of the designs at issue in this case. In the suit, Varsity alleged Star was marketing and selling cheerleading uniforms that were substantially similar to designs for which Varsity claimed copyright. Star asserted that Varsity’s copyrights were invalid. The District Court ruled that the designs were not eligible for copyright protection because they could not be conceptually or physically separated from the uniforms. In a previous article, we discussed the Sixth Circuit’s reversal of the District Court ruling, whereby the Sixth Circuit concluded that the graphics of the Varsity uniforms could be “identified separately” and were “capable of existing independently” from the uniforms themselves.
In January of 2016, Star Athletica, L.L.C. petitioned the Supreme Court for a writ of certiorari to appeal the case. The Supreme Court granted Star’s petition to determine the appropriate test for copyright eligibility in cases involving design elements or features of a useful article. The case was argued in the Supreme Court on October 31, 2016 and decided on March 22, 2017. Justice Clarence Thomas authored the majority opinion. Justice Thomas cited Mazer v. Stein, a case where the Supreme Court held the respondents owned a copyright in a statuette created for use as a lamp base despite the lamp being a utilitarian item. The Supreme Court found that Varsity’s subject matter satisfied a two-step eligibility test.
We hold that an artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article. Because the designs on the surface of respondents’ cheerleading uniforms in this case satisfy these requirements, the judgment of the Court of Appeals is affirmed. It is so ordered.
The opinion did clarify that “our test does not render the shape, cut, and physical dimensions of the cheerleading uniforms eligible for copyright protection.”
Justice Stephen Breyer issued a dissenting opinion in which Justice Anthony Kennedy joined. Justice Breyer wrote that he agreed with much of the Court’s decision, but disagreed regarding copyright eligibility of the Varsity designs. He stated “the designs cannot “be perceived as . . . two- or three-dimensional work[s] of art separate from the useful article.” He reasoned the designs Varsity submitted to the Copyright Office are only pictures of cheerleader uniforms which are useful items.
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. Ante, at 1, 10. 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.
Many experts believe this ruling will have major implications for the fashion, apparel and product design industries. Some feel it provides needed clarity and sets forth a proper test for copyright eligibility of design features. Others feel it adds uncertainty by calling conventional wisdom into question and may have negative implications in the furniture and appliance industries. Some expect to see an uptick in the number of copyright registration applications filed by clothing and product designers.
Click here to read the full opinion.
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