March 29, 2017
Last week, in Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., the U.S. Supreme Court considered to what extent copyright protection covers artistic elements incorporated into industrial designs. Respondents Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., owned more than 200 U.S. copyright registrations for two-dimensional designs on the surface of cheerleading uniforms and other garments. The designs included various combinations and positions of chevrons, lines, curves, stripes, angles, colors, and shapes. The respondents sued petitioner Star Athletica for copyright infringement of five designs.
The Copyright Act defines “[p]ictorial, graphic, and sculptural works” as including “two-dimensional and three-dimensional works for fine, graphic, and applied art . . .” and states that “[s]uch works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.” The Copyright Act provides copyright protection for “pictorial, graphic, or sculptural features” of the “design of a useful article” if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Star Athletica asserted that Varsity Brands’ designs served the utilitarian function of identifying the garments as cheerleading uniforms and therefore could not be the subject of a valid copyright.
The Court upheld the traditional separability analysis under § 101 for any “pictorial, graphic, or sculptural features” that are incorporated into a “design of a useful article.” The Court stated that “[t]he ultimate separability question, then, is 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.”
The Court divided its task into two prongs: determining whether a feature (1) “can be identified separately from” and (2) is “capable of existing independently of the utilitarian aspects of the article” into which the feature is incorporated.
For the first prong, the Court stated that the “decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” The Court found that the decorations could be identified as features having pictorial, graphic, or sculptural qualities.
For the second prong, and the more difficult of the two to satisfy, the Court stated that “the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in § 101 once it is imagined apart from the useful article.” If not, the feature is a utilitarian aspect. In applying this test, the Court stated that the arrangement of colors, shapes, stripes, and chevrons could be separated from the uniforms and applied in another medium, such as to a painter’s canvas, and would qualify as a two-dimensional work of art. Further, the Court stated that removing the decorations from the surface of the uniforms and applying them in another medium would not result in replicating the uniform or an otherwise useful article. Therefore, the Court found that the decorations were separable from the uniforms.
The Court concluded that the designs on Varsity Brands’ cheerleading uniforms satisfied the two-pronged approach and were eligible for copyright protection, affirming the judgment of the Court of Appeals for the Sixth Circuit.
In doing so, the Court dismissed Star Athletica’s argument—and one that was raised in Justice Breyer’s dissent (joined by Justice Kennedy)—that the uniform decorations were not copyrightable because once extracted from the article, they would retain the outline of a cheerleading uniform. The Court noted that a fresco on a ceiling would not lose copyright eligibility because its design tracked the dimensions of the surface on which it was painted, nor would a design painted on a guitar lose copyright eligibility because the design, once imaginatively removed from the guitar, retained the shape of the guitar’s surface.
The Court also rejected the argument that a useful article must remain after the artistic feature has been imaginatively separated from the article. In other words, separation of the feature (e.g., a sculptural base of a lamp) need not leave the utilitarian function intact (e.g., after removal, the lamp with no base can no longer function as a lamp).
In rendering this decision, the Court has affirmed that protection can be afforded to a wide variety of components for apparel and other useful products so long as they satisfy the separability analysis and the independent existence requirement. Producers of useful articles should consider the risk of copyright infringement in addition to design patent infringement. Similarly, in the creation of such useful articles, producers should recognize that components of their useful products may be entitled to copyright protection.
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