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From Intellectual Property Law Daily, March 22, 2017

Decorative features of cheerleading uniforms were separable from ‘useful article’

By Thomas Long, J.D.

Designs for cheerleading uniforms owned by Varsity Brands, Inc., were copyrightable because the graphic elements of those designs were separable from the utilitarian function of a cheerleading uniform, the U.S. Supreme Court has held. In a split decision, 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. In the Court’s view, the surface decoration features of Varsity’s uniforms—including stripes, chevrons, zigzags, and color blocks—were separable from the uniforms and could qualify as two-dimensional works of art under Section 101 of the Copyright Act. The designs were protectable, even though when they were imagined as separate works, as they essentially consisted of two-dimensional pictures of cheerleading uniforms. The Court affirmed a decision of the U.S. Court of Appeals in Cincinnati holding that the designs were copyrightable and opening the door for Varsity to pursue infringement claims against a competitor (Star Athletica, L.L.C. v. Varsity Brands, Inc., March 22, 2017, Thomas, C.).

Varsity owned more than 200 copyright registrations for two-dimensional designs appearing on the surface of cheerleading uniforms that it designed, made, and sold. Varsity sued competitor Star Athletica, L.L.C., for marketing cheerleading uniforms that allegedly infringed Varsity’s designs. The district court awarded summary judgment to Star Athletica, determining that the registered designs were unprotectable as useful articles. In the district court’s view, the uniforms’ features were necessary for the uniforms to be cheerleading uniforms. On appeal, the Sixth Circuit concluded that the graphic features of Varsity’s designs could be identified separately from, and were capable of existing independently of, the utilitarian aspects of cheerleading uniforms. Accordingly, the appellate court ruled that Varsity’s graphic designs were copyrightable subject matter. Star Athletica filed a petition for Supreme Court review, which the Court granted, with respect to the question, "What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act?".

Section 101 states that "[a] ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a ‘useful article’." Useful articles—or industrial designs—generally are not themselves entitled to copyright protection under the Act. Section 101, however, provides for limited protection for artistic elements of industrial designs. "Pictorial, graphic, or sculptural features" of the "design of a useful article" are eligible for copyright protection if those features "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."

Writing for the majority, Justice Clarence Thomas noted that courts and the Copyright Office had developed a "separability" analysis to determine whether a feature can be identified as an independent work that is distinct from the useful article into which it is incorporated. The task in this case was to determine whether the arrangements of lines, chevrons, and colorful shapes on the surface of Varsity’s uniforms were eligible for protection as separable features.

Separability. Varsity argued that the question of separability was not even implicated here because the surface decorations at issue were two-dimensional graphic designs that appeared on useful articles, but were not themselves designs of useful articles.Therefore, Varsity contended, the decorations were protected two-dimensional works of graphic art without regard to any separability analysis. The Court disagreed, reasoning that this approach was inconsistent with the text of Section 101. The statute required a separability analysis for any such features incorporated into the design of a useful article. The statutory language encompassed two-dimensional "pictorial" and "graphic" features, and the separability question was not limited to three-dimensional "sculptural" features.

Test for copyrightability of design features. The Court next decided when a feature incorporated into a useful article could be "identified separately from" and "capable of existing independently of" the "utilitarian aspects" of the article. In the Court’s view, the first part—separate identification—was not onerous and required the decision maker only to look at the useful article and see whether it was possible to spot a two- or three-dimensional element that seemed to have only pictorial, graphic, or sculptural qualities. The second part of the test—independent existence—was ordinarily more difficult to meet, the Court said. To satisfy this prong, the separately identified feature must be able to exist apart from the utilitarian aspects of the article; that is, it must be able to exist as its own picture, graphic, or sculpture as defined in Section 101 once it is imagined apart from the useful article.

To qualify as a pictorial, graphic, or sculptural work on its own, the feature cannot itself be a useful article or "[a]n article that is normally a part of a useful article" (which is itself considered a useful article). Nor could copyright protection in a useful article by claimed simply by creating a replica of the article in another medium—such as a cardboard model of a car. Although the replica itself could be copyrightable, it would not create any rights in the original useful article, the Court explained.

In support of its interpretation, the Court noted that the Section 113(a) of the Act provided a copyright owner with the exclusive right to reproduce copyrighted works, including works "in or on any kind of article, whether useful or otherwise." In the Court’s view, Sections 101 and 113(a) were mirror images of one another—whereas Section 113(a) protected works of authorship first fixed in a tangible medium other than a useful article and then applied to a useful article, Section 101 protected art first fixed in the medium of a tangible article. Therefore, the ultimate test was whether the feature would have been eligible for protection if it had originally been fixed in a medium other than a useful article. The Court also noted that this interpretation was consistent with the approach taken by decisions construing the 1909 Copyright Act, which led to the promulgation of regulations that were "essentially lifted" by Congress in drafting Section 101 of the 1976 Act.

Application to cheerleading uniforms. "Applying this test to the surface decorations on the cheerleading uniforms is straightforward," the Court said. "First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as ‘two-dimensional ... works of ... art.’" Moreover, removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. The Court pointed out that Varsity itself had applied the designs to other media of expression—specifically, different types of clothing—without replicating the uniform. Therefore, the decorations were separable from the uniforms and were eligible for copyright protection.

Protection was not precluded merely because the features, once separated, would retain the outline of a cheerleading uniform. Two-dimensional art naturally correlated to the contours of the article on which it was applied, such as a painting on a canvas or a fresco on a wall.

The Court cautioned that protection was limited to the two-dimensional art fixed in the uniform fabric. Varsity would have no right to prohibit anyone from making a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations appeared. They were only entitled to prevent the reproduction of the surface designs in any tangible medium, including on a uniform.

The Court rejected an argument by Star Athletica that the designs were not protectable because they themselves were useful in the sense that they identified the wearer as a cheerleader and enhanced the wearer’s appearance. Because the uniforms would not be equally useful without the designs, Star Athletic contended that the designs were inseparable from the utilitarian aspects of the uniforms. It was unnecessary to debate the relative utility of a plain white cheerleading uniform, the Court said. The focus was on the extracted features and not on any aspects of the useful article that remained after the features were extracted.

The majority opinion was joined by Chief Justice John Roberts and Justices Samuel Alito, Sonia Sotomayor, and Elena Kagan.

Concurring opinion. Justice Ruth Bader Ginsburg wrote separately, concurring in the judgment. In Justice Ginsburg’s view, it was not appropriate to undertake the Section 101 separability analysis because the designs at issue were not designs of useful articles, but instead were themselves copyrightable pictorial or graphic works reproduced on useful articles. The designs, Justice Ginsburg opined, were standalone works of art that first appeared as pictorial and graphic works that Varsity’s design team sketched on paper. Varsity registered those works as two-dimensional designs, not as cheerleading uniforms; therefore, the designs themselves were not useful articles, in Justice Ginsburg’s view.

Dissenting opinion. Justice Stephen Breyer dissented, joined by Justice Anthony Kennedy. Justice Breyer opined that Varsity’s designs were not eligible for copyright protection because they could not be perceived as works of art separate from the useful article (the cheerleading uniforms). In Justice Breyer’s opinions, the works registered by Varsity consisted of nothing but pictures of cheerleading uniforms, so the designs could not exist independently of utilitarian features of the underlying useful articles.

The case is No. 15-866.

Attorneys: John J. Bursch (Bursch Law PLLC) for Star Athletica, LLC. William M. Jay (Goodwin Procter LLP) for Varsity Brands, Inc.

Companies: Star Athletica, LLC; Varsity Brands, Inc.

MainStory: TopStory Copyright

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