Supreme Court Expands Copyright Protection of Pictorial, Graphic, and Sculptural Works Found in Useful Articles

Friday, March 24, 2017

On March 22, 2017, the Supreme Court established a standard for determining whether a design element incorporated into a useful article can be protected as a pictorial, graphic, or sculptural work under the Copyright Act. The Court ruled that a feature is eligible for copyright protection if it “(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.” Star Athletica LLC v. Varsity Brands, Inc., No, 15-866 (U.S. March 22, 2017). The decision supersedes varying tests developed by other courts to evaluate the copyrightability of features in useful articles, including tests that focused on concepts of “physical” and “conceptual” separability. The decision is likely to cause many companies producing functional products with significant design features, including those in the fashion industry, to consider copyright protection for their products.

Background:

Varsity Brands, Inc. makes cheerleader uniforms. In addition to the functional aspects of those uniforms, such as the shape, cut, and physical dimensions of the garment itself, the uniforms are embellished with stripes, chevrons, and other shapes. The arrangement of shapes and the colors used in the uniforms indicate that the wearer is affiliated with a particular team. Varsity obtained copyright registrations for several of its uniform designs, including those shown below:

Varsity filed suit against a competitor, Star Athletica LLC (“SA”), alleging that SA’s uniforms infringed Varsity’s copyrights. SA marketed cheerleader uniforms with stripes, chevrons and other design elements similar to those in Varsity’s uniforms. SA argued that Varsity’s designs were not protectable under the Copyright Act because the designs were purely functional, and could not be separated from for utilitarian cheerleader uniform. The U.S. District Court for the Western District of Tennessee agreed, ruling that the designs performed the function of identifying the garments as cheerleading uniforms, and were not separable from the garments. The U.S. Court of Appeals for the Sixth Circuit reversed, holding that the designs were separable from the functional garments because they were capable of existing independently, such as if they were applied to other garments or displayed as separate work of art. Varsity Brands, Inc. v. Star Athletica LLC, 799 F.3d 468 (6th Cir. 2015). Star appealed that ruling to the Supreme Court.

Supreme Court Decision:

In a 6-2 decision, the Supreme Court affirmed the court of appeals and ruled that Varsity’s designs were protectable under the Copyright Act. Justice Thomas, writing for five justices, based the decision on the text of the Act, 17 U.S.C. § 102(a). Copyright protection extends to “pictorial, graphic, and sculptural works” that are fixed in a tangible medium of expression. 17 U.S.C. § 102(a)(5). If the work is incorporated into a useful article, the design 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.” Id. (emphasis added).

The Court ruled that, under the Act, a pictorial, graphic, or sculptural feature in an otherwise useful article is eligible for copyright protection only if it both (1) “can be identified separately from,” and (2) is “capable of existing independently of, the utilitarian aspects of the article.”

As to the first requirement, the Court noted that “separate identification” exists when one is “able to look at the useful article and spot some two- or three- dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Slip op. at 7. In order to satisfy the second “independent existence” requirement:

[T]he 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. If the feature is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article, then it was not a pictorial, graphic, or sculptural feature of that article, but rather one of its utilitarian aspects.

Slip op. at 7. Under this test, the feature, when separated, “cannot itself be a useful article or an article that is normally a part of a useful article (which is itself considered a useful article).” Id. In addition, the Court also ruled that the same test applies to pictorial, graphic, or sculptural works that are two-dimensional and three-dimensional. Slip op. at 5.

The court’s ruling dispatches tests applied in some circuits, which focused on the concepts of physical and conceptual separability. See, e.g., Brandir Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987).  The Court noted that the Copyright Act:

[M]ake[s] clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles. 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.

Slip op. at 8.

Applying the test to Varsity’s cheerleader designs, the Court ruled that, assuming the designs satisfied all other requirements for copyright protection – which the Court expressly did not consider – they were works protected by copyright:

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.

Slip op. at 10-11.

Justice Ginsburg concurred in the result, but argued that the Court did not need reach the separability issue to decide the case. Since Varsity registered copyrights in its design consisting of two-dimensional shapes, stripes, and chevrons, and SA reproduced those designs on its uniforms, Ginsburg argued that the designs were “standalone” works and SA was potentially liable for infringement.

Justice Breyer, joined by Justice Kennedy, wrote a lengthy dissent. He argued that the designs in the Varsity uniforms was not separable because, if it existed in another medium, it would merely be a depiction of a cheerleader uniform. He expressed concern that, if applied too broadly, the majority opinion’s test would roil the fashion industry, as companies sought to protect their designs under copyright, even though Congress repeated has failed to pass fashion design protection legislation.

Practical Significance:

The Court’s decision establishes a standard for protecting product design elements as copyrighted works, but lower courts may find the test difficult to apply in future cases. For example, fashion and clothing designs, which generally have not been protected by copyright, commonly contain design elements that may be envisioned as separate works. Thus, although an entire garment may not be copyrightable, copyright may protect the individual features. In addition, the decision suggests that a design feature may be protected by copyright even though it has some useful function. Companies in the fashion industry may consider filing copyright registrations on design elements as two-dimensional works in order to strengthen their positions against competitors.

The decision is likely to affect intellectual property strategies beyond the fashion industry. For example, the decision may to accelerate the trend of “layering” intellectual property protection by applying patent, copyright, and trademark protection to different aspects of the same product. Companies must carefully evaluate the potential benefits of such a strategy.