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Star Athletica v. Varsity Brands: Supreme Court Issues Landmark Ruling on Fashion and Design Copyright

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Star Athletica L.L.C. v. Varsity Brands, Inc., 580 U.S. ___, 197 L. Ed 2d 354 (2017).

The U.S. Supreme Court, in a 6-2 opinion drafted by Justice Thomas, affirmed a 6th Circuit decision regarding whether features incorporated into the design of a useful article are eligible for copyright protection. The Court clarified the rule by creating a two-part test, holding that a design feature “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 . . . if it were imagined separately from the useful article into which it is incorporated.”

This case started when Varsity Brands filed a copyright infringement action against Star Athletica, claiming that Star Athletica marketed cheerleader uniforms substantially similar to those of Varsity Brands. Star Athletica argued that Varsity’s copyrights were invalid as non-copyrightable useful designs, and in any case, the pictorial, graphic or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms. The U.S. District Court for the Western District of Tennessee granted Star’s Motion for Summary Judgment. On appeal, the U.S. Court of Appeals for the Sixth Circuit reversed the lower court’s decision in part and remanded for additional proceedings. The Sixth Circuit determined that the graphic features in Varsity’s designs were fabric and not dress designs, and therefore copyrightable. Star Athletica filed a writ of certiorari, requesting the Supreme Court resolve the existing conflict among the at least ten different tests applied by Circuit Courts.

In its decision, written by Justice Thomas, the Supreme Court created a two-step eligibility test for whether artistic features embedded in the design of a useful article are eligible for copyright protections. First, courts must inquire whether features embedded in the design of a useful article can be identified as a distinct pictorial, graphic or sculptural work of art. Second, courts must determine whether those features, on their own or applied in a different medium, would qualify as a protectable work of art. In the majority opinion, Justice Thomas relied heavily on Mazer v. Stein, 347 U.S. 201 (1954) hosted by, where the Court decided an electric lamp’s statuettes base was copyrightable, despite being an utilitarian mass-produced item. The Court rejected the distinction between conceptual and physical separability, deciding the Copyright Act supports conceptual separability.

Justice Ginsburg filed a concurring opinion. Justice Breyer dissented, joined by Justice Kennedy, arguing that “the designs cannot be perceived as… two- or three-dimensional works of art separate from the useful article,” since the designs Varsity submitted to the Copyright Office were only pictures of the uniforms, which are useful articles. 197 L. Ed 2d 354, 388 (U.S. Mar. 22, 2017) (J. Breyer, dissenting).

This decision clarifies the test for determining under what circumstances designs can be copyrighted. This two-step test does not focus on the item that is left once the design is conceptually separated from it, but in the usefulness of the design by itself. Therefore, designs now may enjoy copyright protections under §101 of the Copyright Act, 17 U. S. C. §101, including prohibiting reproduction of the designs not only within similar useful articles but also in any other medium of expression (not extended to the useful product). This opens a door for designers to apply for inexpensive copyright protections. In addition, the decision may be especially disruptive for the fashion and apparel industry (and other design industries) that work with fast and not-lasting trends, and where remix is a cornerstone of new artistic production. The nature of those industries might significantly change after this decision.

SCOTUSBlog provides an overview of the case. Gene Quinn, writing for IP Watchdog, catalogs the response from IP industry experts. Jessica Rissman Cohen and Antony J. McShane, writing on the National Law Review, claim that the ruling underscores the competitive benefits of obtaining copyright protection.