Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. ___ (2017), was a Supreme Court of the United States case in which the Court decided under what circumstances clothing designs and other "useful articles" can be protected by copyright law. The Court applied a two-prong "separability" test, granting copyrightability to designs if their features could be imagined as art if separated from the utility of the article and if those artistic features would otherwise qualify as copyrightable pictorial, graphic, or sculptural works.
The case concerned a dispute between two clothing manufacturers, Star Athletica and Varsity Brands. Star Athletica began creating cheerleading uniforms with chevron designs created by a rival firm, at a far lower price point than the Varsity version. Varsity accused Star Athletica of copyright infringement after Star Athletica began making cheerleading uniforms with chevron insignia. Star Athletica claimed the clothing designs were uncopyrightable.
Video Star Athletica, LLC v. Varsity Brands, Inc.
Background
At one time, clothing designs were considered uncopyrightable in the United States. In 1941, the Court heard Fashion Originators' Guild of America v. FTC, which considered the fashion industry's practice of boycotting sale of their "high fashion" works at places that would sell knock-offs made by other companies for lower prices, so-called "style piracy". The court ruled against the Guild, saying that this practice of attempting to create a monopoly outside of the copyright system suppressed free competition and violated the Sherman Antitrust Act. Another common barrier to copyrightability in the United States is a certain vague threshold of originality that must be met to be eligible for an intellectual property monopoly like a copyright and patent. In 1964's Sears, Roebuck & Co. v. Stiffel Co., the Court agreed with a lower court's ruling that Stiffel's popular lamp design was not original enough to warrant a patent preventing the lamp's sale by Sears, rescinding that restriction and passing the design to the public domain. The Court's opinion indicated that the same logic would apply to an inappropriate copyright.
In the Copyright Act of 1976, Congress intended to provide less protection for industrial designs than it did for original works of art. As codified at 17 U.S.C. § 101, copyright protection is extended to "pictorial, graphic, or sculptural features" of the "design of a useful article" only if they "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." A 'useful article' is defined as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."
Varsity Brands filed suit against Star Athletica for infringing five of its copyrighted designs for cheerleading uniforms. The United States District Court for the Western District of Tennessee ruled in favor of Star Athletica on the grounds that the designs were not eligible for copyright protection because they "served the useful, or 'utilitarian,' function of identifying the garments as 'cheerleading uniforms' and therefore could not be 'physically or conceptually' separated under § 101 'from the utilitarian function' of the uniforms." The district court's decision was reversed on appeal by the United States Court of Appeals for the Sixth Circuit, which found that "the 'graphic designs' were 'separately identifiable' because the designs 'and a blank cheerleading uniform can appear side-by-side--one as a graphic design, and one as a cheerleading uniform. ... [T]he designs were 'capable of existing independently' because they could be incorporated onto the surface of different types of garments, or hung on the wall as framed art."
On May 2, 2016, the U.S. Supreme Court granted certiorari "to resolve widespread disagreement over the proper test for implementing § 101's separate-identification and independent-existence requirements."
Maps Star Athletica, LLC v. Varsity Brands, Inc.
Opinion of the Court
Majority opinion
Justice Thomas delivered the majority opinion, which was joined by Chief Justice John Roberts and Justices Alito, Sotomayor, and Kagan. The Court defined its task as "whether the lines, chevrons, and colorful shapes appearing on the surface of [Varsity Brands'] cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms."
The opinion relied in part on the court's 1954 decision in Mazer v. Stein, which interpreted a similar provision in the Copyright Act of 1909. The majority set forth the following two-prong test:
[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.
Applying this test to the cheerleading uniforms was "straightforward":
First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, 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," §101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression--different types of clothing--without replicating the uniform. The decorations are therefore separable from the uniforms and eligible for copyright protection.
The court only decided whether the two-dimensional designs on the cheerleading uniforms could receive copyright protection under the terms of 17 U.S.C. § 101, and did not decide whether the five cheerleading uniform designs in the case actually met the threshold of originality to receive copyright protection.
Concurrence
Justice Ginsburg wrote an opinion concurring in judgement--that the cheerleading uniform designs could be protected by copyright--but not joining in the majority's reasoning. For Justice Ginsburg, the court did not need to decide on a separability test "because the designs at issue are not designs of useful articles", but rather "the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles." Because copyright protection provided by the Copyright Act of 1976 "includes the right to reproduce the work in or on any kind of article, whether useful or otherwise", the copyright holder of a pictorial, graphical, or sculptural work "may exclude a would-be infringer from reproducing that work on a useful article", thus obviating the need for the court to reach the separability analysis issue. Justice Ginsburg attached to her decision several pages of applications submitted by Varsity Brands to the U.S. Copyright Office in which the type of work claimed was "2-dimensional artwork".
Dissent
Justice Breyer, joined by Justice Kennedy, dissented on the ground that the cheerleading uniform designs "cannot 'be perceived as . . . two- or three-dimensional work[s] of art separate from the useful article.'" Justice Breyer summarized his argument by remarking:
Look at the designs that Varsity submitted to the Copyright Office. You will see only pictures of cheerleader uniforms. And cheerleader uniforms are useful articles. A picture of the relevant design features, whether separately "perceived" on paper or in the imagination, is a picture of, and thereby "replicate[s]," the underlying useful article of which they are a part. Hence the design features that Varsity seeks to protect are not "capable of existing independently o[f] the utilitarian aspects of the article."
The majority opinion believed Breyer's concerns were not a bar to a design's copyrightability. They analogized the uniform's design to a mural on a curved dome, saying that the contour of the dome would not prevent the mural from being copyrightable. They also thought that Breyer's traditional view that a preexisting two-dimensional artwork applied to the clothing could be copyrighted was contradictory because then the statute would provide copyright restriction to designs that covered part of the clothing surface, but not designs that covered all of it.
Reactions
Columbia Law School professor Ronald Mann provided an analysis of the opinion for SCOTUSblog, remarking:
What the court does not state expressly in that part of its opinion is that the standard for determining whether a graphic work (for example) is copyrightable is minimal. ... So once the court has said that any design can gain copyright protection if it would be protectable if placed first on a piece of paper, it really has ensured that all but the subtlest graphic designs will be able to gain copyright protection. ... To put [the Court's application of its test to the uniforms (quoted in the "majority opinion" section above)] more bluntly, once we determine that the designs 'hav[e] ... graphic ... qualities ... [and could be] applied ... on a painter's canvas,' the test for copyrightability is met. ... I am sure that my colleagues who study intellectual property will write at length for years to come about the doctrinal nuances of the court's discussion of the separability requirement, which seems to me a marked shift from most of the prior treatments.
Intellectual Property attorneys have noted that Star Athletica was an important case for the fashion industry because it overturned the prevailing wisdom that fashion designs were generally uncopyrightable. Graphics on clothing designs could be copyrighted, but not the designs themselves. The effects of this shift in thought remains to be seen as more designers apply for copyrights, and awareness of this change grows. Particularly, there is speculation regarding negative effect on fashion trends, which involve some degree of copying basic styles among designers throughout the industry. Generic or "knock-off" clothing could cease to exist entirely due to the restriction of the designer brands' designs.
Sara Benson, a lawyer who agreed with the decision, has wondered if the court's explicit rejection of a copyrightability test that valued artistic effort on the designer's part may harm perception of designers' value to the clients they work for. She mentioned that that test had allowed designers to leverage their creativity for respect and credibility during corporate design processes, and that its removal may have removed some of their negotiating power.
David Kluft of Foley Hoag has noted that this new ability to copyright design elements comes paired with criminal penalties if it comes to light that the elements have any utility. If the entity applying for copyright on the design knew about that utility, that would be considered false representation of a material fact in the copyright registration.
References
External links
- Text of Star Athletica, LLC v. Varsity Brands, Inc. (section), 580 U.S. ___ (2017) is available from: Cornell Justia
- SCOTUSblog case page
Source of article : Wikipedia
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