US Supreme Court Clarifies Section 101 Standard for Copyrighting Design Features | Practical Law

US Supreme Court Clarifies Section 101 Standard for Copyrighting Design Features | Practical Law

In Star Athletica, L.L.C. v. Varsity Brands, Inc., the US Supreme Court held that a feature incorporated into the design of a useful article is eligible for copyright protection if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article into which it is incorporated.

US Supreme Court Clarifies Section 101 Standard for Copyrighting Design Features

Practical Law Legal Update w-007-1173 (Approx. 4 pages)

US Supreme Court Clarifies Section 101 Standard for Copyrighting Design Features

by Practical Law Intellectual Property & Technology
Published on 24 Mar 2017 • USA (National/Federal)
In Star Athletica, L.L.C. v. Varsity Brands, Inc., the US Supreme Court held that a feature incorporated into the design of a useful article is eligible for copyright protection if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article into which it is incorporated.
On March 22, 2017, in Star Athletica, L.L.C. v. Varsity Brands, Inc., the US Supreme Court affirmed the US Court of Appeals for the Sixth Circuit, holding that a feature incorporated into the design of a useful article is eligible for copyright protection if the feature:
  • Can be perceived as a two- or three-dimensional work of art separate from the useful article.
  • 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.
( (Mar. 22, 2017).)
This case arose when Varsity Brands, Inc. and affiliates (collectively Varsity)—companies that design and manufacture cheerleading and other athletic apparel and accessories—sued competitor Star Athletica, LLC, claiming in relevant part that Star infringed five of Varsity's copyrighted designs. The designs, which appear on the surface of cheerleading uniforms and other garments, were mostly arrangements and combinations of lines, colors, shapes, stripes, and chevrons.
The US District Court for the Western District of Tennessee granted Star summary judgment on the copyright infringement claim, holding that Varsity's designs were not copyrightable because the aesthetic features of the cheerleading uniform merged with the functional purpose of the uniform, thereby failing the test for copyrightable design under Section 101 of the Copyright Act (17 U.S.C. § 101). On appeal, the Sixth Circuit disagreed, finding that certain aspects of cheerleading uniforms were copyrightable and holding that:
  • The US Copyright Office is entitled to deference in its determination that the designs were protectable under the Copyright Act.
  • The Copyright Act protects the pictorial, graphic, or sculptural features of a useful article's design even if those features cannot be physically removed from a useful article, if they are conceptually separable from the utilitarian aspects of the article.
For more on the district court and Sixth Circuit decisions, see Legal Update, Go! Fight! Win! Sixth Circuit Hands Varsity Victory in Cheerleading Uniform Copyright Contest.
The Supreme Court granted certiorari to decide the proper test for the scope of a copyrightable design feature under Section 101. Under Section 101, a pictorial, graphic, or sculptural feature incorporated into the design of a useful article is copyrightable if the feature:
  • Can be identified separately from the article (separate identification requirement).
  • Is capable of existing independently of the utilitarian aspects of the article (independent-existence requirement).
The court rejected Varsity's threshold argument—and the US government's related amicus brief argument—that an analysis of these requirements was not necessary because the surface decorations were two-dimensional designs appearing on a useful article and therefore not part of the design of the article itself. The court held that:
  • Section 101 applies to any combinations of details or features that make up a useful article.
  • The statute clearly includes two-dimensional works of art in its scope.
In determining that Varsity's designs did meet the separability requirements, the Supreme Court held that:
  • The separate identification requirement was easily satisfied by spotting a two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. The surface decorations on the cheerleading uniforms are easily identified as features having pictorial, graphic, or sculptural qualities.
  • The independent existence requirement is met if a feature, when identified and imagined apart from the useful article, would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.
  • If the arrangement of colors, shapes, stripes, and chevrons on the cheerleading uniforms were separated from the uniform and applied in another medium:
    • they would qualify as two-dimensional works of art; and
    • they would not replicate the cheerleading uniform itself (as Varsity has applied them to other types of clothing without replicating the uniform).
The court rejected several arguments by Star and amici, finding that:
  • The fact that a work of art corresponds to the shape of the item on which it appears does not negate its copyrightability.
  • The useful article need not be fully functioning without the artistic feature, as the separability analysis focuses on the extracted feature and not the aspects of the useful article that remain.
  • The statute does not require consideration of marketability of the feature or the creator's design methods, purposes, and reasons.
  • Congress's failure to specifically provide for copyright protection of industrial designs (including clothing) while providing protection for certain other useful articles does not negate the copyrightability of industrial designs like Varsity's designs because:
    • Congressional inaction is not persuasive; and
    • any intent on Congress's part to channel design claims into patent protection does not mean design features cannot enjoy copyright protection as well.
The court therefore affirmed the Sixth Circuit's ruling that Varsity's designs satisfied the Section 101 test.
Justice Ginsburg concurred, arguing against applying any separability test because Varsity's designs should not be viewed as features of a useful article, but as separate works of art in their own right, simply reproduced on useful articles.
Justice Breyer issued a dissenting opinion, joined by Justice Kennedy, arguing that Varsity's designs could not be perceived as two- or three-dimensional works of art separate from the useful article because it is not possible to conceptualize the designs without also visualizing the uniforms themselves.