Lewis Roca Blog

On March 22, 2017, the United States Supreme Court issued a much-anticipated opinion in Star Athletica, LLC v. Varsity Brands, Inc. At issue was whether the surface decorations on cheerleading uniforms are copyright eligible, even though the shape of the uniforms are useful articles, and not copyright eligible.

This legal issue has particular significance to many in the fashion industry. The Council of Fashion Designers of America, Inc., whose membership includes fashion and accessory designers, had urged the Court in its amicus brief to reaffirm that copyright protection exists for two-dimensional designs on clothing, and warned that failure to do so could leave them "defenseless against copyists."

In its decision in Star Athletica, the Supreme Court held that a feature incorporated into the design of a useful article is eligible for copyright protection 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. [Slip. Op. at 1.]

Applying this two-part test to the surface decorations on cheerleading uniforms, the Court held they are "separable from the uniforms and eligible for copyright protection." [Id. at 10-11.]

The Court reasoned that, as to the first step, "one can identify the decorations as features having pictorial, graphic, or sculptural qualities." [Id. at 10.] As to the second step, the Court stated that "if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter's canvas—they would qualify as 'two-dimensional . . . works of . . . art.'" [Id.]

The Court explained that even where surface decorations, if removed from the useful article, resemble the shape of the useful article, the design is copyright eligible. Thus, even though the surface decorations on the cheerleading uniforms were configured in the shape of the uniform, those designs are still copyright eligible. "If a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article." [Id. at 9.] The Court provided the following example, if a design painted on the surface of a guitar was removed and placed on an album cover, it "would still resemble the shape of a guitar." However, the image shown on an album cover does not "replicate" the "guitar as a useful article." Copyright law "protects that work of art whether it is first drawn on the album cover and then applied to the guitar's surface, or vice versa." [Id. at 11.]

The Court also explained that application of the second step does not require the decisionmaker to consider what aspects of the useful article remain after the "imaginary extraction" of the design. Copyright law "does not require the decisionmaker to imagine a fully functioning useful article without the artistic feature. Instead, it requires that the separated feature qualify as a nonuseful pictorial, graphic, or sculptural work on its own." [Id. at 13.] "An artistic feature that would be eligible for copyright protection on its own cannot lose that protection simply because it was first created as a feature of the design of a useful article, even it if makes that article more useful." [Id. at 14.]

This decision should provide additional guidance and protection to those in the fashion industry who have an interest in protecting surface decorations on clothing and other items. On the flip side, those in the fashion industry that market more affordable versions of high-end designs will need to consider that many aspects of those designs may be copyright eligible.

The opinion is Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. ___ (2017).

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