March 22, 2017

Two Bits, Four Bits, Six Bits, a Dollar, Cheer Uniforms are Copyrightable, Stand Up and Holler!

By Bryan K. Wheelock, Principal

In Star Athletica, LLC v. Varsity Brands, Inc., (2017), the Supreme Court affirmed the Sixth Circuit that the two dimensional designs appearing on the surface of Varsity’s cheerleader uniforms were copyrightable.

The Supreme Court granted certiorari to resolve widespread disagreement over the proper test for implementing 17 USC §101’s separate-identification and independent-existence requirements.  The Court held that a feature incorporated into the design of a useful article like an article of clothing 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.

The Supreme Court noted that the Copyright Act establishes a special rule for copyrighting a pictorial, graphic, or sculptural work incorporated into a “useful article,” which 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.”  The design of a useful article is considered a pictorial, graphical, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

The Supreme Court said that this so-called separability test applied to the designs at issue because they were incorporated into the design of a useful article.  Applying the separability test, the Supreme Court said that the first requirement — that the design can be identified separately from the utilitarian article — is not onerous.  One needs only to be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic,or sculptural qualities.

The Court said that second requirement — capable of existing independently of the utilitarian article — is more difficult to satisfy.  The decision maker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.  In other words, the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101 once it is imagined apart from the useful article.  This means the feature cannot itself be a useful article or an article that is normally a part of a useful article.

In the view of the Court, the ultimate separability question, then, 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.

The Court said that applying the separability test to the surface decorations on Varsity’s cheerleading uniforms is 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.

The Court cautioned that the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric.  The Court said that even if Varsity ultimately succeed in establishing a valid copyright in the surface decorations at issue here, it had no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear.  They may prohibit only the reproduction of the surface designs in any tangible medium of expression — a uniform or otherwise.