UPDATE to our September 2015 post
On March 22, 2017, a 6-2 Supreme Court found Varsity Brands’ designs on cheerleading uniforms to be copyrightable, holding that “an artistic feature of the design of a useful article is eligible for copyright protection 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.” See Star Athletica, LLC. v. Varsity Brands, Inc., 580 U.S. __ (2017) (No. 15-866), Op. at 1-2. In doing so, the Court affirmed the Sixth’s Circuit decision below.
For the majority, Justice Thomas focused on separability, relying on Mazer v. Stein, 347 U. S. 201, 214 (1954). He found that in Mazer, the Court had endorsed “the Copyright Office’s regulation extending copyright protection to works of art that might also serve a useful purpose” and had deemed “irrelevant to the copyright inquiry whether” the art was initially created as a freestanding work or as part of a useful object—a lamp shade, in the case of Mazer. Op. at 8-9. Thomas’ analysis focused on the separability of the “extracted feature”—here, Varsity’s chevron and stripes designs—for copyright protection.
Justice Ginsberg concurred with the judgment, but wrote that separability was not the key issue here. She encouraged an examination of whether “the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.” Concurring Op. at 1. In particular, Ginsberg noted that the statements on Varsity’s copyright registrations sought protection for “2 Dimensional artwork,” and therefore whether one could separate the artwork from the underlying garment was irrelevant to the inquiry here. Id. at
In their dissent, Justices Breyer and Kennedy declined to see how Varsity’s copyright could be severed from the underlying cheerleading dress: “But the necklines, the sleeves, and the cut of the skirt suggest that they too are pictures of dresses. Looking at all five of Varsity’s pictures [in the copyright registrations], I do not see how one could conceptualize the design features in a way that does not picture, not just artistic designs, but dresses as well.” Dissenting Op. at 10. They found Varsity’s designs to constitute “inextricable parts” of the dresses, and therefore neither separable nor copyrightable. Id. at 11.
This decision is seen as a win for the fashion industry in the United States, where designers and artists alike often complain of too few IP protections. The Court did not address the originality of Varsity’s designs here, an issue still to be determined at the district court level. However, for those with original designs on clothing that may be argued to be separable from the underlying pieces of clothing, this decision could have far-reaching implications.