In March 2017, the United States Supreme Court resolved a copyright dispute between two manufacturers of cheerleading uniforms. The case, Star Athletica, L.L.C. v. Varsity Brands, Inc., focused on an unresolved question: to what extent, if any, does the utility of an article on which pictorial, graphic, and sculptural works are placed affect whether such works are copyrightable?

The Court’s answer: utility does not matter. Whether the graphic designs incorporated into cheerleading uniforms are copyrightable has nothing to do with the fact that they help to identify the uniform as a cheerleading uniform, and nothing to do with the fact that without the designs, the cheerleading uniform would be blank.

In his usual style, Justice Clarence Thomas, who issued the Court’s opinion, treated the copyright issue as one of statutory interpretation, with the star of the show being the plain text of 17 U.S.C. § 101, which defines “pictorial, graphic and sculptural works.” The statute establishes a separability analysis, which requires that, in order to be copyrightable, the design of a useful article that incorporates pictorial, graphic, or sculptural features must (1) be separately identifiable from and (2) capable of existing independently of the utilitarian aspects of the article.

In light of the statute’s text on separability, the Court said that the important question to consider 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, the relevant statutory question is whether a design is copyrightable regardless of whether it was first created as a standalone or as part of a useful article. Applying this question to the designs attached to the cheerleading uniforms, the Court found that the designs are eligible for copyright protection.

The Court limited its opinion in a couple of ways. First, although the Court decided that the designs attached to the uniform are in and of themselves eligible for copyright protection, it did not decide whether the designs should receive this protection. Second, the Court noted that its ruling “does not render the shape, cut, and physical dimensions of the cheerleading uniforms eligible for copyright protections.” The Court’s ruling expands copyright protections for the designs attached to a uniform if the designs meet the separability test, but it does not expand protection to cover the uniform itself.

Star Athletica’s impact on the fashion industry is yet unclear, as it is difficult to predict how lower courts will apply the Supreme Court’s refined separability test. Questions remain as to whether certain aspects of clothing, such as pockets, buttons, and ties, are designs worthy of protection or parts of a useful article not worthy of protection. Despite the need for more case law interpreting this decision, one thing is clear: Star Athletica will allow fashion designers to receive broader protections for their designs. Now, designers who have registered their pictorial, graphic, or sculptural designs can use that protection to curtail infringement, portending problems for the knock-off industry.

For more information about this decision or other intellectual property matters, contact Tori Kluess or another member of the Intellectual Property Team at the Law Firm of Conway, Olejniczak & Jerry, S.C.

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Written By:
Attorney Tori L. Kluess

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