North Shore Law Intellectual Property attorney, Adrienne Naumann writes, in Varsity Brands LLC et al. v. Star Athletica, LLC, 580 U.S. (2016) the U.S. Supreme Court (hereinafter “the Court,” “Varsity Brands” and “Star Athletica”) held that graphic designs attached to cheerleader uniforms are eligible for U.S. copyright protection. In doing so the Court provided copyright protection eligibility criteria for visual art applied to any utilitarian article, such as clothing. These criteria are generally designated as a separability analysis, because the focus is whether the applied visual art could exist separately from the useful article to which it is applied.
Varsity Brands owns U.S. copyright registrations for two-dimensional graphic designs that are applied to cheerleader uniforms in registration specimens. However, these registrations do not include the actual cheerleader uniforms combined with these graphic designs. Varsity filed a lawsuit against Star Athletica for copyright infringement of these registered graphic designs which Star Athletica placed upon its own uniforms. The court granted summary judgment to Star Athletica, because the designs were (i) not separable from the uniforms, and (ii) too closely associated with the concept of a cheerleading uniform as a useful article to be copyright eligible. The Sixth Circuit Court of Appeals reversed this summary judgement, because the graphic designs were (i) separately identifiable from the cheerleader uniforms, and (ii) exist independently upon Varsity’s other products.
Star Athletica requested that the Court to provide a separability test for U.S. copyright protection of visual art applied to useful articles. It then turned to Varsity Brands’ designs and asserted in relevant part that: because Varsity Brand’s designs convey cheerleader status of a useful uniform, the designs are utilitarian features, and by law utilitarian features are not copyright protection eligible, and separability requires evidence of physical separability (i.e., actual removal of the visual art from the useful article), design processes and marketability.
Varsity Brands’ position before the Court was (i) two-dimensional graphic designs have always been U.S. copyright registration eligible, and (ii) the cheerleader uniforms are merely the surfaces on which the graphics attach. Varsity Brands also asserted that its registered graphic designs are physically and conceptually separable from cheerleader uniforms, because they (i) already actually appear upon other non-cheerleader uniform items, (ii) that qualify as surfaces for attachment of visual art under the U.S. copyright statute.
In holding that the designs attached to cheerleader uniforms are eligible for copyright protection. the Court provided a separability test by which a feature of a useful article is eligible if that feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and would qualify as protectable pictorial, graphic sculptural work — either on its own or fixed in another tangible medium of expression— if perceived separately from the useful article into which it is incorporated.
The Court noted that its separability criteria are supported by statutory requirements for copyright protection eligibility of applied visual art, because there is a separability requirement for two-dimensional graphic designs as features of useful articles, 17 U.S.C. section 101; original works of authorship fixed in any tangible medium are eligible for copyright protection,17 U.S.C. section 102(a); and 17 U.S.C. section 113(a) explicitly protects art as copies fixed in any medium, and that medium may be a useful article.
The Court made further observations in support of its holding and separability criteria. First it observed that removing the designs from Varsity Brands’ uniforms and attaching them to another tangible surface does not replicate the uniform itself. It also concluded that separability analysis does not require evaluation of the article’s remaining utility after removal of a graphic design.
Furthermore, features of a useful article that exclusively convey information or appearance are not utilitarian features. 17 U.S.C. section101. Therefore, even if the designs convey the appearance of a cheerleader uniform, they remain copyright protection eligible
The Court also addressed other issues raised by Star Athletica. For example, an artistic feature eligible for copyright protection does not lose this protection simply because (i) it was initially created as a design upon a useful article, and (ii) even if this design causes the article to become more useful. Mentally perceiving the separation, and not physical separation of the useful article from the visual art, is all that is required. Finally, separability does not require analysis of marketing, design processes commercial success or other economic factors.
After this decision, copyright eligibility outcomes within and between federal jurisdictions should become significantly more consistent based upon the Court’s uniformly implemented separability analysis. Hopefully this consistency will a prevent forum shopping for cases addressing copyright protection for visual art applied to useful articles in general, and clothing in particular.