Supreme Court Issues Decision on Copyrightability of Apparel Design Features

The U.S. Supreme Court affirmed (6-2) a Sixth Circuit ruling in favor of Varsity Brands, Inc., which accused a competitor, Star Athletica, LLC, of copyright infringement in certain decorative design features of Varsity Brands’ cheerleading uniforms. In particular, Varsity Brands claimed that Star Athletica copied certain stripes, chevrons, coloring, shapes, and other graphic elements of its cheerleader uniforms. Star Athletica responded by arguing that the designs were not protectable because they were utilitarian aspects of the uniform and thus not subject to copyright protection. The Supreme Court held that because the decorative elements on Varsity Brands’ cheerleading uniforms were “separable” from the underlying garment, those elements were protectable by copyright.

The U.S. District Court for the Western District of Tennessee had held that the design elements at issue served the “utilitarian” function of identifying the uniforms as “cheerleading uniforms” and could not be conceptually or physically separated from the uniforms and thus they were ineligible for copyright protection. The Sixth Circuit reversed, concluding that the surface design elements could be identified separately and were capable of existing independently of the uniforms. The question on appeal before the Supreme Court was how courts should decide whether conceptual separability exists such that certain design elements of useful articles can be protected under copyright law.

The Supreme Court, noting that there has been widespread disagreement over the proper test for implementing separate-identification and independent-existence requirements under copyright law, set forth a two-part 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-dimensional 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.”

The Supreme Court found that this test had been satisfied by Varsity Brands and that therefore the design elements of the cheerleading uniforms were eligible for copyright protection. However, the Supreme Court limited its ruling by noting that Varsity Brands can assert its copyright to stop reproductions “only of the surface designs on a uniform or in any other medium of expression.” Justice Stephen Breyer and Justice Anthony Kennedy dissented, concluding that “even applying the majority’s [separability] test, the designs cannot ‘be perceived as . . . two- or three-dimensional work[s] of art separate from the useful article.’”