By Tamar Duvdevani

On March 22, 2017, in a 6-2 decision authored by Justice Thomas, the United States Supreme Court ruled that the designs on Varsity Brands’ cheerleading uniforms are eligible for copyright protection.  The crux of this decision relates to the fact that the United States Copyright Act treats the copyrightability of “useful articles” differently than “pure” works of art.  Specifically, the Act states that: “The design of a useful article, as defined in this section, shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that, such design 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.”  17 U.S.C. § 101.

Here, Varsity Brands had sued Star Athletica for copyright infringement over designs on the parties’ cheerleading uniforms.  The district court ruled in favor of Star Athletica, finding that the geometrical designs on the uniforms (zig-zags, stripes, etc) were not eligible for copyright protection.  The Sixth Circuit reversed, and held that the designs, like any other fabric print, can qualify for protection so long as they meet the originality threshold mandated by copyright law.  However, the appellate dissenting opinion urged for Supreme Court review of the Section 101 “separability test” given the disparity among the various tests used by the United States Circuit Courts.

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In the decision, Justice Thomas held that the proper separability test for useful article protection is as follows:

“[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.”

The dissenting opinion authored by Justice Breyer, while largely in agreement with the majority, expressed disagreement because the specimens deposited with the Copyright Office by Varsity Brands were in fact images of the actual cheerleading uniforms as seen in the accompanying image (not just the fabric designs, which is what is typically submitted to the Copyright Office by print mills and other designers), and, thus, the design features that Varsity Brands sought to protect were not capable of existing independently from the utilitarian aspects of the article.

While the opinion is brand new, retailers are sure to worry that Varsity Brands’ win will increase copyright litigation over fabric print and even garment design.  It remains to be seen, however, whether the separability test as set forth by the Supreme Court will actually create more litigation in the space.

The case is Star Athletica v. Varsity Brands, 15-866, and the decision can be viewed here: