United States Supreme Court held on March 22, 2017 that the “pictorial, graphic or sculptural features” of the “design of a useful article” may be protected by copyright registration.
In Star Athletica, L.L.C. v. Varsity Brands, Inc., the Court ruled in a case brought by Varsity Brands claiming infringement by Star Athletica of five two-dimensional designs consisting of various lines, chevrons, and colorful shapes on cheerleading uniforms. The federal district court granted summary judgment in favor of Star Athletica that the copyrights were invalid, holding that the designs could not be separated from the useful article on which they were applied—the uniforms—and under copyright law, useful articles could not awarded have copyright protection. Varsity Brands appealed to the Sixth Circuit Court of Appeals, which reversed the district court decision, but in doing so acknowledged that U.S. courts did not have a clear, consistent “separability” test to guide them.
Justice Thomas set forth the appropriate “separability” test to be applied to when a pictorial, graphic or sculptural features of the design of a useful article is copyrightable. Under the Court’s announced separability test, 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 which it is incorporated.” Because the designs on the cheerleader uniforms could be imagined separately from the uniforms, the Court held they were protected by copyright.
Thus, the fashion industry will likely maintain greater design infringement claims and advocate that such designs (e.g. patterns, shapes, etc.) can be imagined separately from the useful article (e.g., the dress itself).