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U.S. Supreme Court Rules Cheerleader Uniform Elements May be Eligible for Copyright Protection

Yesterday, in a decision that will be welcomed by the fashion industry, the United States Supreme Court ruled that certain design elements of cheerleader uniforms may be eligible for copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc.  The Court held that, “a feature incorporated into the design of a useful article is eligible for copyright protection only 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 fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”  Justice Clarence Thomas authored the 6-2 majority opinion, addressing disagreement among lower courts as to the proper test for determining if certain design elements could ever qualify for copyright protection.

This case involved lines, chevrons, and colorful shapes on cheerleader uniforms. In finding that these elements could be covered by copyright, the appeals court below had identified nine different approaches that various courts and the Copyright Office had employed over the years to address “separability.” The appeals court fashioned its own test and found that the design features of Varsity Brands’ cheerleader uniform played no role in the overall function of the article as a cheerleading uniform, and the elements were separable from the utilitarian aspects of the uniform and thus eligible for copyright protection.

The Supreme Court affirmed.  Applying § 101 of the Copyright Act, the Court found that the decorations on the uniforms at issue could be identified as having pictorial, graphic, or sculptural qualities, and the arrangement of the decorations could be placed in another medium (e.g. placed on a painter’s canvas) without replicating the uniforms themselves.  Thus, the two-dimensional work of art fixed in the uniform fabric met both the separate-identification and independent-existence requirements of the statute. Importantly, the Court held only that the uniform elements are eligible for protection in concept; now the trial court must determine whether Varsity Brands’ specific lines, chevrons, and shapes are original enough to merit copyright protection.

Justice Ruth Bader Ginsburg concurred in the result, pointing out that the Court did not have to discuss the separability test at all because the designs at issue were not themselves useful articles, but rather standalone, two-dimensional pictorial and graphic works reproduced on a useful article.  Justice Stephen Breyer, joined by Justice Anthony Kennedy, dissented, arguing that even under the majority’s test, the designs cannot be perceived as separate from the cheerleading uniform.

Thus, although the majority offers some clarity about the proper approach to separability, the dissent demonstrates that analysis may yield divergent results.  The decision is likely to be embraced by fashion industry leaders and other garment design stakeholders for its recognition that certain garment design elements may be protectable under the Copyright Act. 

A link to the opinion can be found here.

Copyright 2019 K & L Gates

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About this Author

David J. Byer, KL Gates, cyberlaw trademark lawyer, licensing attorney
Partner

Mr. Byer is a partner in the Intellectual Property practice group. Mr. Byer concentrates on intellectual property counseling and litigation, particularly on issues relating to copyright, trademark, cyberlaw and licensing. He assists companies involved in the technology, biotechnology, publishing, manufacturing, medical devices, entertainment and electronics industries to develop and exploit robust intellectual property assets in the United States and around the world. Mr. Byer represents both licensors and licensees of world-famous brands and content across a range of...

617-261-3115
John J. Cotter, KL Gates, Patent Litigation Lawyer, complex intellectual property trials attorney
Partner

Mr. Cotter concentrates his practice in patent and complex intellectual property trials and appeals.  He has tried patent cases, argued Markman hearings, and handled appeals throughout the U.S., and litigated U.S. and overseas arbitrations and court cases. His patent cases have involved technologies including HIV drugs; polymers; electronic and optical switching technology; wireless and mobile communications; medical devices and instruments; food products; software for databases, security, manufacturing and digital music systems; surgical devices; and flat panel displays.   He regularly advises clients on Hatch-Waxman related patent litigation, including ANDA infringement suits and exemptions from infringement for FDA-related activities, and counsels clients on international patent litigation strategies.

Mr. Cotter’s trademark litigation experience spans from internationally famous to regional and niche brands, and includes obtaining injunctions and seizures across the country.  In the copyright area, Mr. Cotter was trial counsel in the leading case on internet trespass, in an artists and musicians rights case which resulted in the City of Boston rescinding unconstitutional regulations, and in software copyright cases including under the Digital Millennium Copyright Act.

617-261-3178
Shamus J. Hyland, KL Gates, consumer finance litigation matters attorney, defense of banking lawyer
Associate

Shamus Hyland is an associate in the litigation department of the firm’s Boston office. Mr. Hyland has experience in a variety of consumer finance litigation matters, including the defense of banking, mortgage lending, and consumer financing services companies in state and federal courts. Mr. Hyland also has experience counseling clients regarding their intellectual property portfolio development through the creation and development of copyrights and trademarks. In addition, he has represented clients in state and immigration courts with Kids in Need of Defense.

617-951-9122
Eric Lee, KLGates Law Firm, Commercial Litigation Attorney
Associate

Eric Lee concentrates his practice on general civil and commercial litigation matters, with an emphasis on patent, trademark, copyright, and other complex intellectual property litigation. He also counsels clients regarding their intellectual property portfolio development through the creation, development, and leveraging of copyrights and trademarks. In addition, Mr. Lee has experience in class action litigation and consumer finance litigation, including the defense of banking, mortgage lending, and consumer financing services companies in state and federal class...

617-951-9240