On March 22, 2017, while millions of viewers were watching U.S. college basketball teams vie for the national championship, the uniforms worn by the cheerleaders became the focus of a U.S. Supreme Court copyright ruling. In Star Athletica, L.L.C. v. Varsity Brands Inc., a majority of the Supreme Court ruled that the two-dimensional designs on cheerleaders uniforms were at least in theory eligible for copyright protection. Slip. Op., Star Athletica, L.L.C. v. Varsity Brands, Inc., 799 F. 3d 468 (6th Cir. 2015).
Varsity Brands designs, manufactures, and sells cheerleading uniforms, and has registered more than 200 U.S. copyrights for the two-dimensional designs appearing on these uniforms. These registered copyrights include combinations and arrangements of lines, curves, chevrons, angles, and shapes. Varsity Brands sued Star Athletica, a competitor, for infringing five of Varsity Brands’ registered copyrights. Complaint, Varsity Brands, Inc. et al v. Star Athletica, LLC, Civil Case No. 2:10-cv-02508 (W.D. Tenn.) (July 9, 2010).
Background on U.S. Copyright Law
In the United States, the federal copyright law extends only to creative works fixed in a tangible medium of expression. The law does not protect “useful articles” as such. Recognizing that useful articles can include copyrightable elements the law provides 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.” 17 U.S.C. § 101 (definition of “Pictorial, graphic, and sculptural works”).
Implementing this “separate identification” and “independent existence” requirement has led U.S. courts to what the majority of the U.S. Supreme Court characterized as “widespread disagreement.”
The Court Opinions
Demonstrating the “widespread disagreement,” this case began with a federal trial court ruling in favor of Star Athletica, on the grounds that the five registered designs did not qualify for copyright protection. That court ruled, on summary judgment, that the designed served the useful function of identifying the garments as cheerleading uniforms. Op., Varsity Brands, Inc. (W.D. Tenn. March 1, 2014).
In contrast, the Sixth Circuit Court of Appeals reversed, holding that the graphic designs were “separately identifiable” and therefore capable of existing independently. Op., Varsity Brands, Inc., et al. v. Star Athletica, LLC, Case No. 14-5237 (6th Cir. Aug. 19, 2015).
A majority of the U.S. Supreme Court agreed with the appeals court that the graphic designs were eligible for copyright protection. Five of the eight Justices agreed that the appropriate test for eligibility for copyright protection has two parts:
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 what it is incorporated.
The majority applied this two-part test in this case:
- First, one can identify the decorations as features having pictorial, graphic or sculptural qualifies.
- 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
- [I]maginitively removing the surface decoration form the uniforms and applying them in another medium would not replicate the uniform itself.
The majority also pointed out what its ruling did NOT affect:
- “We do not today hold that the surface decorations are copyrightable. We express no opinion on whether these works are sufficiently original . . . or on whether any other prerequisite of a valid copyright has been satisfied.” [Recall that the trial court ruled on summary judgment.]
- “Even if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, curt, and dimensions to the ones on which the decorations in this case appear.” Justices Breyer and Kennedy dissented. They found that each of the designs was “not physically separate, nor is it conceptually separate, from the useful article it depicts, namely, a cheerleader’s dress.” Because “It is clear that Congress has not extended broad copyright protection to the fashion design industry, the designs were not eligible for copyright protection.
- Justice Ginsburg concurred in the judgment. She found that the designs were standalone pictorial, graphic, or sculptural works that may be eligible for copyright protection.
The fashion industry now has some guidance on the copyrightability of fashion design elements. In addition, trademark protection may be available for logos or other “signature” features, and design patents may be available.