Chevrons, Stripes, Cheerleaders, and Copyright: The Supreme Court Issues Opinion in Star Athletica v. Varsity Brands

| Jonathan Hyman

Edited by Catherine Holland

The U.S. Supreme Court issued their opinion on Star Athletica v. Varsity Brands on Wednesday, March 22. Should fashion designers rejoice or be fearful? That depends. Designers who repeatedly have original fashion designs copied by others should start rejoicing. On the other hand, those designers that make their bread and butter by copying others fashion designs may need to revamp their business plan.

If you need a brief recap of what this case is about, we discussed it in a previous post here. The case concerns whether the cheerleader uniforms designed and sold by Varsity Brands contain two-dimensional copyrightable works of art and whether those copyrights are being infringed by Star’s cheerleading uniforms.

To qualify for copyright protection, the creative elements of a garment must be “conceptually separable” from the functional or “useful” elements. Also at issue in the case was which test to use to decide the issue of “conceptual separability.” The courts have struggled with this issue for decades, and at least nine different tests have been applied by different districts and the Copyright Office.

Today, the Supreme Court ended the widespread debate over the right test to use to decide the issue of “conceptual separability,” with Justice Thomas issuing the decision joined by Chief Justice Roberts and Justices Alito, Sotomayor, Kagan, and Ginsburg. Justice Ginsburg added her own concurring opinion, while Justices Breyer and Kennedy dissented. The 6-2 Court ruled 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.

Regarding the first prong of the test, the Court explained that separate identification “is not onerous” and merely requires that the article have two- or three-dimensional element(s) that appear to have pictorial, graphic, or sculptural qualities.

The Court noted that the second prong regarding “independent existence” may be more difficult to satisfy. Specifically, the separately identified feature must have the “capacity to exist apart from the utilitarian aspects of the article.” The feature must be able to exist as its own work of art and cannot itself be a useful article. The Court used an example of a cardboard model of a car, which would not qualify for this independent existence prong. The replica itself could be copyrightable, but it would not confer any rights in the useful article, the car, that inspired it.

In establishing this test, the Court abandoned the distinction between “physical” and “conceptual” separability adopted by some courts and commentators. The Court noted that separability is a conceptual undertaking limited by the perception of the feature in which copyright is claimed, and the article to which it is affixed. Copyrightability does not depend on whether the identified feature can be physically separated from the useful article; nor does it depend on how or why the article or feature was designed, or on the marketability of the article or its features. Finding Section 101 of the Copyright Act to be the mirror image of Section 113(a) of the Copyright Act, the Court held that the “two provisions make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as free­standing art or as features of useful articles.”

The Court ruled that Varsity Brand’s cheerleader uniforms shown below meet this test and are eligible for copyright protection.

The Court explained that the lines, chevrons, and colorful shapes appearing on the surface of Varsity’s cheerleading uniforms can be identified as decorations having pictorial, graphic, or sculptural qualities, meeting the first prong of the test. Additionally, the colors, shapes, stripes, and chevrons of the Varsity uniforms would qualify as two-dimensional works of art if they were separated from the cheerleader uniforms and applied to another medium, such as a painter’s canvas or different types of clothing. Thus, the second prong of the test is also met.

The Court expanded on this, noting that just because Varsity’s two-dimensional artwork may retain the outline of a cheerleading uniform does not bar it from being eligible for copyright protection. Similarly, two-dimensional fine art matches the shape of the canvas it is painted on and two-dimensional applied art corresponds to the contours of the article to which it is applied. Accordingly, the surface designs on the Varsity uniforms are eligible for copyright protection.

Justice Ginsburg agreed with the judgment, but disagreed with the majority’s analysis of the “conceptual separability” test. Justice Ginsburg asserted that the designs at issue were “themselves copyrightable pictorial or graphic works reproduced on useful articles” reasoning that the designs first appeared as pictorial and graphic works sketched on paper by Varsity’s design team and were later reproduced on garments. As such, she contends that it was not necessary to consider the separability of the designs.

Justice Breyer and Justice Kennedy disagreed with the majority, asserting that the designs are not eligible for copyright protection because they are pictures of cheerleader uniforms, which are useful articles, and the design features that Varsity seeks to protect are not “capable of existing independently of the utilitarian aspects of the article.” The dissent argued that placing the designs on another medium would result only in pictures of cheerleading uniforms. The majority opinion addressed Breyer’s criticism, distinguishing the design as “a two-dimensional work of art that corresponds to the shape of the useful article to which it was applied.”

This has been a closely watched and long awaited decision in the fashion industry. Hopefully, the clarification of the appropriate test and application of it by the Supreme Court will provide some “uniformity” to this area of law.

However, this case is far from over. The Supreme Court's decision was based on an appeal of Star Athletica's Motion for Summary Judgment that the designs were not copyrightable. The District Court granted the motion, and the 6th Circuit reversed. The affirmance by the Supreme Court sends the case back down to the District Court for a decision on the merits. At issue, and foreshadowed by the Supreme Court’s Footnote 1 on page 11 of the decision, is whether Star Athletica can defeat Varsity’s copyrights on other grounds. Footnote 1 makes it clear that the decision does not “hold that the surface decorations are copyrightable,” only that the surface decorations are eligible for copyright protection based on their “conceptual separability.” The Court, citing Feist, expressed “no opinion on whether these works are sufficiently original to qualify for copyright protection” or “on whether any other prerequisite of a valid copyright has been satisfied”. Can Star Athletica show that such designs lack originality? Can Star Athletica establish that the designs include colors that are dictated by the schools, and shapes that are dictated by the uniform, and thus they cannot satisfy the low threshold of originality? Are such designs ubiquitous in the industry and do they predate Varsity, such that they are unprotectable scenes-a-faire?

The fashion industry and legal professionals will “cheer” when these remaining issues are decided.