Can a cheerleader uniform containing combinations of elements like chevrons, lines, stripes, and angles be protected by copyright? Well, the Supreme Court addressed this exact issue on March 22, 2017, in the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. And, ta da, the answer is yes where a design feature of a useful article (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 in which it is incorporated. And the five member majority (authored by Justice Thomas) agreed that this test was satisfied in the present case.

To appreciate the fuss, and decision, some context is needed. Useful articles are not subject to copyright protection, with the lone exceptions of boat hulls and semi-conductor chips. Section 101 of the Copyright Act in pertinent part states: “the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, 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.”

Protection of useful articles—and the ornamental features thereof—are squarely protected by design patent laws in the United States unless there is a separate Congress-mandated carve-out (e.g., boat hulls). Most other countries have protection for industrial designs, typically a registration system for a term (e.g., ten years, and often with a short renewal term option). Copyright protection lasts for a very long time, e.g., life of the author + 70 years. Design patents in the US last a straight 15 year term. Further, design patent protection must still meet the requirements of U.S. Patent Laws, most notably novelty and obviousness (or, more aptly, nonobviousness). Costs, procedures, infringement standards, and remedies greatly differ between copyright and design patent protection. Where copyright protection is available, designers like this form of IP protection because it is inexpensive to procure and lasts a long time.

Here, there appears to be no dispute that cheerleader uniforms are useful articles. But Varsity Brands, a maker of cheerleading uniforms, acquired copyright protection on hundreds of designs that are featured on those uniforms. And Varsity Brands brought suit for copyright infringement against competitor Star Athletica. Star Athletica won on Summary Judgment at the District Court on the grounds that the designs at issue did not qualify as protectable “pictorial, graphic, or sculptural works” that could be physically or conceptually separated from the utilitarian function of the uniform. But on appeal to the Sixth Circuit, Star Athletica lost because the Sixth circuit found that the designs were separately identifiable from the useful article (the cheerleading uniform). Star Athletica then appealed to the Supreme Court.

The last time the Supreme Court addressed copyright protection for useful articles was in 1954 in the Mazer v. Stein case. In that case, the design at issue was a dancer that also functioned as the base of a lamp. The lamps and the dancer as a statue were commercialized. In that case, the Supreme Court had determined that since the dancer was separate from the useful article (the lamp), that copyright protection was available for the dancer as a sculptural work. While Mazer v. Stein was decided long before the Copyright Act of 1976, the holding of Mazer v. Stein was codified into the Section 101 exception—that a design of a useful article can still be considered a pictorial, graphic, or sculptural work for the purposes of copyright protection if the 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.

Now on to the present case. Here are the images of the Varsity Brands’s designs alleged to be copyrighted and were asserted infringed by competitor Star Athletica:2017-03-24 15_07_59-IP Team Blog Star Athletica - BTS and BE edits.docx [Read-Only] - Microsoft Wor

The majority determined that the two-dimensional design elements of chevrons, lines, arrows, stripes, and the like, met the test of separability from the utilitarian aspects of the article (cheerleading uniforms). But it is important to note that the majority expressed no opinion whether these combinations of lines, arrows, stripes, and chevrons are sufficiently original to qualify for copyright protection. Also of note, the two dissenting justices (Breyer and Kennedy) expressed that the designs at issue are unoriginal (not meeting copyright subject matter).

We found the concurring opinion of Justice Ginsburg compelling: she agreed with the judgment of the majority, but not in the opinion. Her position is that this is not a useful article case requiring review of Section 101 at all. She points to the fact that all of the Varsity Brands’s copyright registrations at issue were for two-dimensional works for fabric designs and that Varsity Brands happens to use the designs on cheerleading uniforms, but could easily have used the designs on any other fabric (which could then be used to make, e.g., a cushion cover). The use of a design on a cheerleading uniform is of no matter here and thus a test for separating the design from the useful article was not necessary. Justice Ginsburg also expressed no opinion as to whether the designs at issue otherwise meet the requirements for copyright subject matter. However, in responding to the dissent that the designs are unoriginal (and therefore not the subject of copyright protection), Justice Ginsburg notes that the level of creativity to meet copyright subject matter is extremely low and that even a slight amount will do.

This decision raises the bar for asserting a useful article defense, and should result in greater protection for fashion designs, jewelry, and other seemingly “useful articles” so long as a 2-D design can be perceived separate from the article itself (which will be true for most ornamentation). So now, early registration of any ornamentation on a product is even more important, as the ability to sue (and to recover statutory damages and attorney fees) is predicated on such timely registration. If you are producing any product with any type of ornamentation, it is time to undertake a thorough review to determine if there may now be copyright protection available to you. If you have questions about whether you may now have copyright protection, we are here to help.