Fashion, furniture, and other design-oriented companies will take note of the Supreme Court’s recent decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 WL 1066261 (March 22, 2017), which resolved a division among the federal circuits on the issue of the separability of designs of useful articles under the Copyright Act. Writing for the majority, Justice Thomas clarified that the design of a useful article need not be physically separable from the article itself in order to be protectable under the Copyright Act. Instead, the design can be protectable if one could conceptually imagine the design as a work of art apart from the useful article.
At issue in Star Athletica was the protectability of sketches of cheerleader uniform designs by Varsity Brands, Inc. and related companies. Varsity had obtained or acquired more than 200 U.S. copyright registrations for two-dimensional designs of various cheerleader uniforms. Varsity sued Star Athletica, another uniform manufacturer, for infringing Varsity’s copyrights in five of these designs.
For businesses whose livelihood is tied to the unique, aesthetic qualities of the products they offer, the decision opens the door to enforcement options that either were not available or were unlikely to be successful in the past.
Background of ‘Separability’ Under the Copyright Act
Under the Copyright Act, the issue of “separability” arises when an owner claims copyright for a feature of a design of a so-called “useful article,” also known as applied art. The Copyright Act defines “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. §101. An oft-cited example comes from the. Supreme Court decision in Mazer v. Stein, 347 U.S. 201 (1954). At issue in Mazer was a copyrighted statuette depicting a dancer used as a lamp base, with the lamp components hidden inside the base. Mazer held that the respondents owned a copyright in the statuette (the “design”) even though it was used as a lamp base (the “useful article”). The Court also found that “[i]f a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable [even] if [it was] created first as part of a useful article.” Star Athletica, at 9.
Although the Court decided Mazer under the 1909 Copyright Act, Congress later adopted the Mazer holding in Section 101 of the 1976 Act, which limits the definition of “pictorial, graphic, and sculptural works” to those where the “design incorporates … features 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 circuit split that prompted the Supreme Court to hear Star Athletica developed after courts struggled with the appropriate test to apply in determining when a design can be “identified separately from” and is “capable of existing independently of” the useful article to which it is applied. Some courts and commentators believed that the Copyright Act required art to be literally, physically separable from the useful articles in order to be protectable.
Varsity filed suit for copyright infringement in the U.S. District Court for the Western District of Tennessee in 2010. The district court awarded summary judgment to Star Athletica, likening the court’s review of separability to the philosopher Plato’s search for “the essence of a physical object as separate from their ideal.” The district court found that “the colors-and-designs component of a cheerleading uniform [could not] be conceptually separated from the utilitarian object itself.” No. 10-2508, 2014 WL 819422, at 1 (W.D. Tenn. Mar. 1, 2014).
On appeal, the Sixth Circuit reversed and remanded. The appellate court refused to apply the so-called physical-separability test, noting that it was “less effective … when the article at issue is two-dimensional because it is nearly impossible physically to detach the article from the object on which it appears.” 799 F.3d 468, 482 (6th Cir. 2015). The Sixth Circuit conducted an extensive audit of the various approaches to conceptual separability adopted by the Copyright Office, other courts, and commentators, and ultimately adopted a “hybrid” approach, asking a series of questions about the utilitarian aspects of the useful article and considering whether the viewer could identify the art separately from, and if the design could exist independently of, those utilitarian aspects. Id. at 487-88 (citations omitted). This framework led the Sixth Circuit to conclude that the graphic features of Varsity’s cheerleading uniform designs were more like fabric designs than dress designs, meaning that they were protectable subject matter under the Copyright Act. Id. at 493. Star Athletica appealed.
The Supreme Court’s Opinions
By a 6-2 ruling, the Supreme Court affirmed the Sixth Circuit’s conclusion, but did not adopt the Sixth Circuit’s arguably convoluted analysis. Instead, Justice Thomas’s majority opinion, written on behalf of five Justices, focused on the plain language of the Copyright Act, commenting that the Court was not on a “free-ranging search for the best copyright policy,” but must “depend solely on statutory interpretation.” No. 15-866, 2017 WL 1066261, at 7.
First, the Court dispensed with Varsity’s argument that separability did not apply because the uniform designs were two-dimensional graphic designs that appeared on uniforms, but were not themselves the designs of the uniforms (an argument akin to Justice Ginsburg’s concurrence). The Court found this argument inconsistent with the text of §101, which requires a separability analysis for any “pictorial, graphic, or sculptural feature” incorporated into the design of a useful article, undercutting the view that two-dimensional artistic features on the surface of useful articles are inherently separable. Id. at 6.
The Court then adopted a new separability test: “whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.” Id. at 8. The Court reviewed the Mazer opinion and Congress’s decision to incorporate Mazer into the 1976 Copyright Act, concluding that the new test best adhered to Congress’s view of the types of applied art that should be protectable. Id. at 8-9.
Applying this test to the cheerleader uniform designs at issue, the Court found that the decorations: a) were features “having pictorial, graphic, or sculptural qualities”; and b) the arrangement of colors, shapes, stripes, and chevrons that made up the designs could easily be applied in another medium (such as a painter’s canvas) making them separable from the uniforms themselves and eligible for copyright protection. Id. at 9. The Court expressed no opinion on whether the designs were sufficiently original to be protectable. Id. at 9 n.1.
Justice Thomas also took care to address Justice Breyer’s dissent, which argued that the designs were not separable because placing them in some other imagined medium would still show only pictures of cheerleader uniforms. The majority analogized the uniform designs to an intricate painting on the surface of a guitar — the painting would still be eligible for protection even if, when imaginatively removed from the guitar’s surface, the painting resembled the guitar’s shape. Id. at 10.
Finally, the Court addressed several alternative theories of separability, finding each meritless. The most important among these arguments was the Court’s express abrogation of the distinction between physical and conceptual separability. Id. at 12.
Justice Ginsburg concurred with a short opinion arguing that consideration of the separability test was unwarranted in this case, because the uniform designs at issue were not designs of useful articles, but were themselves copyrightable pictorial or graphic works reproduced on useful articles. Id. at 14. It was important for Ginsburg that Varsity sought copyright protection of the designs sketched on paper, and not for the cheerleading uniforms themselves.
Alone in his dissent, Justice Breyer was unable to come to terms with the idea that the uniform designs could be anything other than just that, making it impossible for him to separate the designs from the useful articles themselves. Justice Breyer analogized to a soup spoon, arguing that “one could not copyright the shape of the spoon itself,” but “could copyright the floral design” on the spoon. Id. at 18. Further, because Congress chose not to extend broad copyright protection for fashion design protection, the Court should not grant Varsity, at its core a clothing designer, protection where Congress would not. Id. at 19-20.
Although the Court’s new separability test appears straightforward on its face, it will now be the task of the lower courts to define and apply the fine line between applied art and industrial design in future cases. Copyright owners in design-oriented industries, and particularly in the apparel context, may begin to rethink copyright protection for high-value designs because the Supreme Court has recognized a set of facts in which such designs are conceptually separable from the apparel to which they are applied or in which they are embodied. Litigation may also increase as a result, as copyright owners may seek to enforce their rights more aggressively, armed with a new Supreme Court decision that arguably supports their infringement claims.
Samantha Barber is an associate in the Charlotte office of Kilpatrick Townsend & Stockton LLP. She focuses her practice on trademark, copyright, and domain name matters, with an emphasis on portfolio management, clearance, and international disputes.
The views expressed in the article are those of the authors and not necessarily the views of their clients or other attorneys in their firm.