Friday, March 24, 2017

Supreme Court Finds Cheerleader Uniform Designs Copyrightable

Last fall, we examined the case of Star Athletica, L.L.C.  v. Varsity Brands, Inc., then pending before the Supreme Court on the question of whether the design of a cheerleader uniform is copyrightable subject matter, or if it is a useful article.  In a 6-2 decision, the majority laid out a new test for analyzing the separability of designs applied to useful articles, and further found that the cheerleader uniform designs at issue in this case were protectable works under that test.  This decision grants expansive rights to authors who apply designs to utilitarian objects, but as we will see below, the new test is far from free of ambiguity.

First, let us briefly recap the dispute before the Court. Varsity Brands is the owner of several copyright registrations for "two-dimensional artwork," such as the one shown above, related to cheerleader uniforms.  Varsity brought suit against Star Athletica when it realized that Star was selling uniforms with a striking similarity to five of its registered designs.

Star defended on the basis that the designs for cheerleader uniforms are useful articles and therefore not copyrightable subject matter.  Under Section 101 of the Copyright Act, the design of a useful article is copyrightable "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."  Star contended that the arrangement of stripes, colored panels and chevrons were essentially functional, identifying the wearer as a cheerleader, and in at least some cases helped make the wearer's waist appear narrower or their torso longer.  Additionally, while sometimes the designs were merely printed on the fabric of the uniform, in other cases colored fabric panels were cut into shape and physically stitched together to create the uniform.  Thus, the design of the uniform was inseparable from the uniform itself.

The district court found in favor of Star. But the Court of Appeals for the Sixth Circuit reversed, holding that the designs of the uniforms were copyrightable because they were conceptually separable from the useful articles to which they were applied.

The case highlighted an increasing problem in the application of the Copyright Act's separability doctrine.  The appellate court identified nine distinct separability tests used by various courts and the copyright office.  What's more, case law tended to suggest that courts could pick and choose any number of tests to reach essentially any conclusion they wanted, even if several other tests would have reached a different result.  So, rather than pick a winner from among the bunch, the Sixth Circuit created a tenth test, and applied that.  That brought the case to the attention of the Supreme Court, who took it up to decide which test, if any, was meant to carry the day.

The Supreme Court concluded that the Copyright Act prescribed a two-part test.  A design of a useful article is eligible for copyright protection if it:
(1) can be identified separately from, and (2) is capable of existing independently of the utilitarian aspects of the article.
The first part only requires the decision maker to spot some two or three dimensional element that has pictographic or sculptural qualities.  The focus of the inquiry is therefore on the second part, and that is whether the identified features are able to exist as their own pictorial, graphic or sculptural work once they are removed from the article.  In other words, would the claimed features have been eligible for copyright protection had they been fixed in some other tangible medium before being applied to the useful article?  

Under its newly articulated test, the Court found the claimed designs were copyright-eligible.  The court identified the chevrons, color panels and decorations on the cheerleader uniforms as having pictorial, graphic or sculptural qualities, and it found that the identified features could applied to another medium, say a painter's canvas, without replicating the uniform itself.  Here, for example, Star had provided evidence of the registered designs applied to other articles of clothing, such as windbreakers.

The majority also explained what the test does not require.  Star and some of the amici had argued that the uniforms should remain similarly or identically useful in the absence of the claimed design.  But the Copyright Act expressly protects "applied art," which necessarily includes art that has some practical use.  There is no requirement that the useful article must remain once the artistic features have been removed.  Star also argued that test should consider whether the design elements reflected the designer's artistic judgement, or whether the separable features would still be marketable without their utilitarian function.  But the majority found these considerations had no basis in the statute.  Finally, Star argued that Congress intended to exclude industrial designs from copyright protection in favor of design patents.  But the majority held that copyright and design patents need not be mutually exclusive.  

The majority's test is simple, broad, and appears to mostly restate the statutory language in slightly different terms.  But that is not to say it is necessarily clear.  And even if it is clear, what matter would it actually exclude from copyright protection?

That question was taken up by Justices Breyer and Kennedy in dissent.  While they did not disagree with the majority's test, they would have applied it to reach the opposite result.  The registered designs are pictures of cheerleader uniforms, and cheerleader uniforms are useful articles.  Thus, Justice Breyer quotes the majority:
A picture of the relevant design features, whether separately "perceived" on paper or in the imagination, is a picture of, and thereby "replicate[s]", the underlying useful article of which they are a part.
The dissent's problem with the majority's separability test is that there is not much in the world that could not be "imaginatively reproduced on a painter's canvas."  Copyright protection was never meant to extend to any object you can put a frame around and hang in a gallery.  Court's have, for example, denied protection to measuring spoons shaped like heart-tipped arrows and candle holders shaped like sailboats.  And while these objects likely had artistic aspects that could be identified separately from the utilitarian object and reproduced pictorially, "one could not easily imagine or otherwise conceptualize the design of the shoes or the candleholders . . . without that picture, or image, or replica being a picture of spoons or candleholders. . . ."

The problem with the dissent's approach is that the copyrightability of a design applied to a useful article would all too often depend on the form in which the design reached the Copyright Office.  If an applicant sought to register a sketch of a cheerleader wearing a uniform bearing certain design, that sketch would not extend protection to a real-life uniform because it would be too difficult to separately conceptualize the design without the uniform.  But, if perhaps an applicant sought to register a rectangular canvas on which they had drawn colored panels, stripes and chevrons, then that design would be copyright-eligible even when it is silk-screened onto a cheerleader uniform.  The fact that a design appeared first in the form of a cheerleader uniform should not alter the copyright-eligibility of the design itself.

Ultimately, while the majority has resolved ten separability tests into one, it does not appear to have addressed the reason why the problem arose in the first place.  The majority's test closely reflects the statutory language.  But the very reason that court created ten separability tests is that the statute was not clear.  It did not provide enough guidance to allow courts to draw bright lines between what is eligible for copyright protection, and what is not.  The best evidence of that may be the fact that both the majority and dissent purport to apply the same statutory test, but reach opposite conclusions.

However, for design patent owners, this opinion provides powerful tools.  The Court made it clear that design patents and copyrights on designs applied to useful articles are not mutually exclusive.  To the extent any patented design could be imagined separately from the useful article to which it is applied, it may be eligible for copyright protection.  

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