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).