Author: Delain Law Office

Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., 580 US ___, a newly (22 March 2017) decided copyright case, finds that the design elements of a cheerleading outfit can be covered by copyright.

According to the syllabus of the case, SCOTUS holds: “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. That test is satisfied here.”

This case is interesting because it tells us where lies the line between industrial design, which is not protected by copyright (it may be protected by patent), and artistic design, which is. Courts have disagreed where that line lies.

Here, the District Court held that the designs did not qualify for protection under copyright because the designs served the useful purpose of identifying the outfits as “cheerleading uniforms.” The designs are therefore utilitarian, cannot be separated out to stand on their own, and therefore cannot be protected by copyright (you can read the District Court’s opinion at 2014 WL 819422 (WD Tenn., Mar. 1, 2014)).

The US Court of Appeals for the Sixth Circuit disagreed; they held, with one dissent that upheld the District Court’s opinion, that the graphic designs are indeed “separately identifiable” because a cheerleading costume without design is still identifiable as a cheerleading costume, so the graphics on such a garment can indeed be separated out and separately displayed and are thus protectable under copyright (read the 6th Circuit’s opinion at 799 F. 3d 468, 471 (2015)).

The Supreme Court affirms the 6th Circuit.

So what does this case teach us? We now know that designs on clothing CAN be separated out from the clothing, making the design on the clothing, even if the design relates to the function of the clothing, protectable under copyright.

We know that “The statute … provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” features, and separability analysis applies to those features just as it does to three-dimensional “sculptural” features.”

We know that “…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.”

Copyright remains one of the most case-by-case determinations around. The findings of this case have yet to be tested on utilitarian items other than clothing; we’ll watch this with some interest to see what, if anything, happens.