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Supreme Court Outlines New Test for Copyrightability of Useful Articles

The Supreme Court’s ruling in Star Athletica, LLC v. Varsity Brands, Inc. significantly expands copyright protection for useful articles.

On March 22, 2017, the US Supreme Court set out a new standard for copyrightability of useful articles in Star Athletica, LLC v. Varsity Brands, Inc.[1] The Court held that Varsity Brands’ designs for cheerleading uniforms merited copyright protection because—under the new test—the uniform design “would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”[2] With this relatively simple test, Justice Clarence Thomas swept aside the many standards that had emerged from different circuits with a ruling that is likely to significantly expand the scope of copyrightability for useful articles. Justice Ruth Bader Ginsburg filed a concurring opinion, and Justice Stephen Breyer, with Justice Anthony Kennedy joining, dissented.

Background

Varsity Brands sued Star Athletica in the US District Court for the Western District of Tennessee, claiming infringement of its copyright designs in its cheerleading uniforms. Star Athletica responded that the uniforms were useful articles and not copyrightable. On summary judgment, the district court held that the claimed designs applied to the uniforms’ function to identify wearers as cheerleaders because the designs reflected the “core of the ideal—of ‘cheerleading-uniform-ness,’” and therefore were useful articles not entitled to protection.[3] The Sixth Circuit reversed, holding that the “graphic features of Varsity’s designs” were conceptually separate from “the utilitarian aspects of [cheerleading uniforms].”[4] Star Athletica appealed. The Supreme Court held that the designs were conceptually separable and therefore affirmed the Sixth Circuit’s decision.

Uniforms

Above: Examples of Varsity Brands’ cheerleader uniform designs.

Copyright Protection for Useful Articles

The Star Athletica ruling resolves a longstanding disagreement among the circuits about how to assess the copyrightability of useful articles. Section 101 of the Copyright Act allows copyright protection for useful articles “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[5] District courts have developed a range of tests to assess whether a design is capable of existing “independently of the utilitarian aspects of the article,” a question that the Fourth Circuit has observed poses a “metaphysical quandary.”[6] In a footnote to her concurrence, Justice Ginsburg noted that “[c]ourts ‘have struggled mightily to formulate a test’ for the separability analysis.”[7]

Applying the Court’s new test to assess separability, Justice Thomas reasoned that the uniforms’ “arrangement of colors, shapes, stripes, and chevrons” was protectable because if that arrangement “were separated from the uniform and applied in another medium—for example, on a painter’s canvas—[it] would qualify” as a protectable work of art under Section 101.[8]

The test dispenses with any assessment of whether the protectable elements of the design were inherent or essential to the useful item. Star Athletica argued that because the uniforms would not be equally useful as cheerleading uniforms without the designs, the uniform designs should not be protectable. Rejecting these arguments, Justice Thomas wrote that “the debate over the relative utility of a plain white cheerleading uniform is unnecessary. The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.”[9] Focusing the inquiry on the copyrightability of the imaginary extraction is likely to expand copyright protection for useful articles significantly. Although the Court did not offer an opinion regarding the originality of the designs, given the low bar to originality, the extracted designs will likely merit copyright protection.

The Court was careful to limit the scope of the ruling, however, emphasizing that “[e]ven if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have 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.” Excluding the shape and cut of the uniforms from protectability preserves the question of whether, and to what extent, clothing design may receive greater protection under the new standard. The dissent was careful to emphasize that because the “fashion industry has thrived against [a] backdrop [in which Congress decided] not to grant full copyright protection to the fashion industry,” it is “important to emphasize those parts of the Court’s opinion that limit the scope of its interpretation.”[10]

Conclusion

Though questions remain about how far this ruling will reach, the new, streamlined standard set forth by the Court in Star Athletica undoubtedly expands the scope of copyrightability for designs incorporated on useful articles. Under the new standard, the artistic aspects of useful articles, from uniforms to furniture, could be easier to protect. Lowering the bar to meet the useful article limitation on copyrightability could shift the focus of copyright litigation toward more traditional factual questions about the scope of the copyright and whether the claimed elements were infringed. As a result, copyright holders may be more aggressive in bringing claims, particularly as the lower courts interpret and apply this important ruling.


[1] Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. ___, No. 15-866, 2017 WL 1066261, at *1 (Mar. 22, 2017).

[2] Id.

[3] Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *1 (W.D. Tenn. Mar. 1, 2014), vacated and remanded, 799 F.3d 468 (6th Cir. 2015).

[4] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

[5] 17 U.S.C. § 101 (1976) (emphasis added).

[6] Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 434 (4th Cir. 2010).

[7] Star Athletica, 2017 WL 1066261, at *14 n.1 (Ginsburg, J., concurring) (citations omitted).

[8] Id. at *9.

[9] Id. at *11.

[10] Id. at *20 (Breyer, J., dissenting).

 

Copyright © 2017 by Morgan, Lewis & Bockius LLP. All Rights Reserved.

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About this Author

Joshua M. Dalton, Intellectual Property Attorney, Morgan Lewis Law Firm
Partner

Joshua M. Dalton is a pre-trial, trial, and appellate lawyer in intellectual property litigation. He represents a wide variety of clients in trademark, patent, copyright, trade dress, false advertising, and trade secret matters. He also provides strategic counseling concerning the development and enforcement of his clients’ intellectual property portfolios. Josh has appeared in courts throughout the United States as well as before the Trademark Office and Trademark Trial and Appeal Board. 

+1.617.951.8284
Sarah Paige, Morgan Lewis, International Arbitration Lawyer, Toxic Tort Attorney
Associate

Sarah Paige is part of a team that counsels clients in a range of litigation matters, including business and corporate disputes, corporate investigations and criminal defense, environmental, international arbitration, patent and trademark, securities, toxic tort, and product liability. While attending Harvard Law School, Sarah served as a teaching assistant for the Negotiation Workshop, the Harvard Negotiation Institute, and the Power and Negotiation course at MIT Sloan School of Business. She also held summer internships with the US Treasury Summer Honors Program and at an international law firm in Boston.

617.341.7518