n an opinion issued last week, the Supreme Court held that a “pictorial, graphic, or sculptural” feature incorporated into the design of a useful article—in this case, a cheerleading uniform—is eligible for copyright protection if it satisfies a two-part test: (1) the element can be perceived as a two- or three-dimensional work of art separate from its underlying useful article; and (2) the element would otherwise be protectable if it were perceived in this manner.
By articulating its own version of the “separability test,” the Court has sought to address and resolve the uncertainty and “widespread disagreement” previously surrounding application of the test by providing a uniform, nationwide standard.
Varsity Brands, Inc. (“Varsity”) designs, creates, and sells cheerleading uniforms, including those at issue in this case (pictured below):
Varsity brought suit against competitor Star Athletica, LLC (“Star”), claiming that Star’s cheerleading uniforms infringed Varsity’s copyright rights in the five designs depicted above. According to the District Court, the designs are not protectable because they serve a useful function—namely, identifying the garments as cheerleading uniforms—and therefore couldn’t be physically or conceptually separated under Section 101 of the Copyright Act (discussed further, below). On appeal, the Sixth Circuit reversed.
The Separability Test
Under the Copyright Act, “useful articles”—defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”—are not eligible for copyright protection. The article’s design may be protectable, however, if it 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. As the Sixth Circuit noted, federal courts have “struggled mightily” to apply this statutory formula; at least nine distinct approaches have been utilized by courts across the country. Accordingly, the Court first sought to clarify, and then apply this statutory “separability” analysis to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of Varsity’s cheerleading uniforms are eligible for copyright protection.
The Court’s Analysis
With respect to the first element of the Copyright Act’s separability test—whether a design “can be identified separately from . . . the utilitarian aspects of the [underlying] article,” the Court indicated that, in order to satisfy this requirement, one need only view a useful article and identify some two- or three-dimensional design element that appears to have pictorial, graphic, or sculptural qualities.
The Court next explained that the second requirement of the statutory separability test—whether a design “is capable of existing independently of the utilitarian aspects of the [underlying] article”— essentially seeks to determine whether the design would otherwise be eligible for copyright protection as a pictorial, graphic, or sculptural work either on its own or when fixed in a medium other than a useful article. Consistent with the Court’s prior decision in Mazer v. Stein, a 1954 copyright case, this portion of the analysis does not focus on whether a design element is intended for use as a useful article, nor whether the design element could also serve a useful purpose. According to the Court, the statutory language setting forth the separability test is focused on how a useful article and its features are perceived, and not the creator’s “design methods, purposes, and reasons.” Similarly, the Court rejected Star Athletica’s argument that a separability analysis should consider whether a design element makes the underlying article more or less marketable, another consideration absent from the statutory test.
In applying the separability test, the Court first determined that the lines, chevrons, and colorful shapes appearing on Varsity’s uniforms “can be identified separately from” the uniforms themselves. Stated differently, the artistic elements can be seen as distinct from the underlying garment.
The Court next considered whether Varsity’s lines, chevrons, and colorful shapes are capable of existing independently of the utilitarian aspects of the uniforms. The Court observed that, if the arrangement of lines, chevrons, and colorful shapes were applied in another medium (such as a painter’s canvas) that arrangement of elements would indeed qualify as a two-dimensional work of art. Moreover, applying the design elements to another medium would not recreate the uniform itself, simply the design appearing on the uniform.
The majority refuted the dissent’s argument that the designs are not separable because removing them from the uniforms and placing them on, for instance, a canvas, would create a picture or outline of a cheerleading uniform. According to the majority, two-dimensional art always correlates to the contours of the article on which it is applied. By way of example, the majority pointed to a hypothetical design painted on a guitar’s surface. If removed from the guitar, the design would still resemble the shape of a guitar, but would not lose copyright protection simply because it tracked the outline of a useful article. Rather, the artwork would still be protectable as a two-dimensional design.
While the Court determined that the decorative elements of the uniforms satisfy the separability test and are therefore eligible for copyright protection despite being incorporated into the design of a useful article, the Court clarified that, under its version of the separability test, the shape, cut, and physical dimensions of cheerleading uniforms remain ineligible for copyright protection. The Court also stated that it made no determination as to whether Varsity’s designs are sufficiently original to qualify for copyright protection; rather, the Court remanded the case to the Western District of Tennessee, which must undertake this assessment.
The Court’s ruling ultimately provides support for copyright protection of fashion design – an area of copyright law that has long resided in a legal gray area – which the fashion and apparel industries will likely see as a significant victory and an important tool in protecting the decorative elements of everything from couture gowns to t-shirt basics. It remains to be seen, however, whether, and to what extent, the Court’s articulation of the separability test in broad, general terms, provides sufficient real-world guidance to lead to consistent application of the test across lower courts.
 CDAS’s previous blog post on this case provides a more in-depth discussion of the Sixth Circuit’s decision.
 Indeed, the dissent argued that, even applying the majority’s test, Varsity’s designs are not eligible for copyright protection because the designs are not capable of existing independently of the utilitarian aspects of the underlying uniforms.
Filed in: Copyright, Legal Blog, Litigation
March 28, 2017