Go! Fight! Win! Designers Prevail as Supreme Court Extends Copyright Protection to Cheerleading Uniforms and Beyond

Author: Hazel Mae Pangan

On March 22, 2017, the U.S. Supreme Court issued its decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., Case No.15-866, a dispute over whether cheerleading uniform designs qualified for protection under the Copyright Act of 1976.  In the proceedings below, Varsity Brands, Inc. (“Varsity Brands”) sued Star Athletica, L.L.C. (“Star Athletica”) for copyright infringement of five cheerleading uniform designs for which Varsity Brands held 2-dimensional artwork copyrights. Using cheerleading uniforms as an example for what is arguably an expansion of copyright protection to the design of garments and clothing, the Court ultimately held that the designs were protectable.

Procedural History

Under Section 101 of the Copyright Act of 1976, the “pictorial, graphic, or sculptural features” of the “design of a useful article” may be copyright protected as works of art if the features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” In this case, the district court granted summary judgment in favor of Star Athletica, holding that the designs were not protectable pictorial, graphic, or sculptural works subject to copyright protection. Rather, the designs simply served the “useful” or “‘utilitarian’ function of identifying the garments as cheerleading uniforms” and thus were not physically or conceptually separable from the “utilitarian” function of the uniform as required for copyright protection under Section 101.

On appeal, the Sixth Circuit Court of Appeals reversed, holding that the uniform designs were “‘separately identifiable’” because the designs could “‘appear side by side’” with a blank uniform—“‘one as a graphic design and one as a cheerleading uniform.’” Moreover, in the Sixth Circuit’s view, the “designs were ‘capable of existing independently’ because they could be incorporated onto the surface of different types of garments, or hung on the wall and framed as art.”

The Court’s Holding

The Supreme Court, with Justice Thomas writing for the majority, affirmed the Sixth Circuit’s reversal, and resolved a circuit split over the correct articulation of the separability test for useful articles. Relying on principles of statutory interpretation, the majority clarified that Sections 101 and 113(a) of the Copyright Act “make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as free-standing art or as features of useful articles.” The test is “whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.” In other words, “a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The focus of the test, according to the Court, is “on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.” Accordingly, the Court expressly rejected the “physical” and “conceptual” separability distinction in the articulation of the test used by the lower courts, holding that it does not matter whether a feature is physically separable from the useful article because the separability test is only conceptual.

Under this test, the Supreme Court held that one could identify the decorations on the cheerleading uniform designs at issue in this case as “having pictorial, graphic, or sculptural qualities” and that if the “arrangement of colors, shapes, stripes, and chevrons on” the uniforms’ surface “were separated from the uniform and applied in another medium”—like a painter’s canvas—“they would qualify as ‘two-dimensional . . . works of . . . art’” under Section 101.

Marketplace Implications

Writing as amicus curiae in support of Varsity Brands, the Council of Fashion Designers of America (“CFDA”) urged the Court to affirm the Sixth Circuit’s holding that the uniform designs were copyright protectable because a contrary holding would have a “deleterious effect” on the ever-expanding $370 billion American fashion industry, leaving designers vulnerable to copyists and undermining the creativity and effort required for conceiving original fashion and apparel designs. For years, the CFDA and fashion industry have tried to secure legislation specifically granting increased copyright protection to fashion designs.

Under the Court’s majority holding, fashion and apparel designers now have more copyright protection available to them for their designs. Beyond cheerleading uniforms, the Court’s clarification of the separability test extends copyright protection to garments and apparel (and other useful articles and goods) bearing original designs that can be imagined as works of art separate from the useful article on which the designs are affixed.

For a copy of the Court’s slip opinion, click here.