On 22 March 22 2017, in the case of Star Athletica LLC v. Varsity Brands, Inc., et al, No. 15-866, the Supreme Court of the United States ruled, in a 6-2 decision, that design elements of a cheerleading uniform may be protected under copyright law, even though the uniform has a utilitarian function.
It is a well-known tenet under United States copyright law that apparel is outside the scope of the Copyright Act of 1976, which bars protection for works of authorship that possess utilitarian functions. However, §101 of the Copyright Act carves out a limited exception, namely that “pictorial, graphic or sculptural features” of the design of a useful article are entitled to copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”
Star Athletica v. Varsity Brands involves copyright infringement of cheerleading uniforms designed by Varsity Brands, considered to be the leader in the market, copied by its rival, Star Athletica. The majority opinion, written by Justice Thomas, sided with Varsity Brands, and ruled that the two-dimensional pictorial design, consisting of chevron, zigzags, stripes and colorful shapes, applied to Varsity Brands’ uniforms was deserving of copyright protection under §101 of the Copyright Act.
This case has elicited microscopic scrutiny by the fashion industry.
This case was heard by the Supreme Court on writ of certiorari to the United States Court of Appeals for the 6th Circuit. The District Court had granted summary judgment to Star Athletica, holding that Varsity Brands’ designs were not eligible for copyright protection because they served the function of identifying the garments as cheerleading uniforms. The 6th Circuit reversed, holding that the graphic designs applied to the uniforms, in accordance with §101 of the Copyright Act, were eligible for copyright protection because the graphics could be “identified separately” and were “capable of existing independently” of the uniforms. The Supreme Court granted certiorari to resolve the long-standing discord between the lower courts over statutory interpretation, namely: What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act.?
In deciding this case, the Court set forth a simplified two part test, “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.” Looking to the facts of the case at hand, the Court held that the designs on the surface of the Varsity Brands uniforms satisfy the foregoing requirements.
The Conundrum of the Separability Doctrine
For decades, there has been disagreement between the circuits, which have struggled with articulating a consistent test to determine the extent to which designs applied to useful objects might be protected by copyright. While the statutory language of the separability doctrine is consistently invoked, the determination of when a design element is separable has lead to a plethora of standards and tests. Indeed, the 6th Circuit’s decision used 9 factors to determine that Varsity Brands’ graphic designs as applied to cheerleader uniforms were conceptually separable from the utilitarian aspects of the garment, and judicial analysis of separability have included such things as the design intention of the author and the marketability of the functional object if the applied art were to be removed.
Impact upon the Fashion Industry
The fashion industry anxiously awaited the decision in Star Athletica v. Varsity Brands – design companies expressing concern that the decision might undermine the already extremely limited protection afforded to fashion designs, while retailers were concerned that the decision might enhance copyright protection in a way that would expose them to new liabilities. Although, as noted in the dissenting opinion by Justice Breyer, designers often look to trademark law, and occasionally patent law, as a means of protection, these laws do not readily apply to graphic designs applied to apparel. Although the Court’s decision provides some clarity and guidance with regard to statutory interpretation, it unequivocally adhered to what has been the status quo for fashion items, characteristically denied protection under the Copyright Act. As the majority wrote, “the only feature of [Varsity Brands’] cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms” and the company “has no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut or dimensions to the uniforms at issue here”.
The result in Star Athletica v. Varsity Brands will in all likelihood have little impact on the fashion industry, as it breaks no new ground. What it does is eliminate the myriad of tests and issues that have plagued and distracted lawyers for both plaintiffs and defendants in proving and arguing many factual issues that the opinion now makes clear are irrelevant.
Accordingly, the protection of designs applied to apparel has neither been eroded nor enhanced; they are protected by copyright to the extent they would have been protected had they been fixed in a medium of expression other than a garment. Similarly, retailers and designers of “knock-offs” do not appear to face any new risk of liability that wasn’t present prior to the Supreme Court’s opinion.
We have yet to see how the Supreme Court’s new separability test will be applied, but its application may significantly simplify and harmonize the analysis in the lower courts. Congress, despite years of lobbying efforts by the fashion industry, has consistently failed to adopt the sort of “design right” that many European countries apply to apparel, and the debate continues as to whether fashion design is under-protected or, as some argue, the current “light” protection of fashion design is actually part of the engine that drives the industry.
There is no doubt that the Varsity Brands opinion vividly confirms that the Copyright Act today affords no protection at all to the overall design (e.g., the combined shape, cut, fit, color, drape, neckline, etc.) of an item of apparel. On the other hand, it makes equally clear that the copyright protection afforded to any pictorial, graphic or sculptural work is in no way undermined when it is first fixed in, or later applied to, an item of apparel. Varsity achieved what it set out to do, but the ruling in this case has not significantly changed the landscape.