On Wednesday, March 22nd, the U.S. Supreme Court handed down a decision in a copyright case, which clarifies federal copyright law surrounding whether features incorporated into the design of a useful article are eligible for copyright protection. In a 6-2 decision, the Supreme Court held in Star Athletica, LLC v. Varsity Brands, Inc. that such features are eligible for copyright protection if they can be perceived as a work of art separate from the useful article and would qualify as an protectable work if imagined separately from the useful article.
The case stems to a copyright infringement action filed by Varsity Brands against Star Athletica, charging Star with marketing cheerleading uniforms substantially similar to designs copyrighted by Varsity. Star argued that Varsity’s copyrights were invalid because the designs are for non-copyrightable useful articles and the pictorial, graphic or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms. The district court entered a summary judgment in favor of Star but this decision was vacated and remanded by the U.S. Court of Appeals for the Sixth Circuit in August 2015. The opinion handed down by the 6th Cir. entered a summary judgment victory in favor of Varsity, finding that the graphic features of Varsity’s designs are more like fabric designs than dress designs and are thus are protectable subject matter under the Copyright Act. In January 2016, Star Athletica petitioned the Supreme Court for a writ of certiorari to appeal the case, reasoning that SCOTUS must grant an appeal to resolve the conflict between Circuit Courts resulting in 10 different separability tests and further arguing that the test developed by 6th Circuit was inferior to other tests.
In its decision, the Supreme Court determined that Varsity’s subject matter satisfied a two-step eligibility test: the surface decorations on the uniform can be identified as features having pictorial, graphic or sculptural qualities, and those decorations applied in a different medium would qualify as a two-dimensional work of art which didn’t replicate the uniform itself. The majority opinion, authored by Justice Clarence Thomas, applied reasoning from a 1954 Supreme Court case, Mazer v. Stein, in which the Court found that statuette bases for electric lamps were copyrightable even though the lamp itself was a utilitarian mass-produced item. A dissent authored by Justice Stephen Breyer, and to which Justice Anthony Kennedy joined, indicated that while much of the Court’s opinion was agreeable, “the designs cannot ‘be perceived as… two- or three-dimensional work[s] of art separate from the useful article.” Because the designs submitted by Varsity to the U.S. Copyright Office were “only pictures of cheerleader uniforms,” which are useful articles, and thus a picture of the relevant design features is simply a picture of the underlying useful article, whether the image is perceived separately or not.