Star Athletica, L. L. C. v. Varsity Brands, Inc.
|Star Athletica, L. L. C. v. Varsity Brands, Inc.|
|Argued October 31, 2016
Decided March 22, 2017
|Full case name||Star Athletica, L.L.C. v. Varsity Brands, Inc., et al.|
|Citations||580 U.S. ___ (more)|
|Prior history||On Writ of Certiorari to the United States Court of Appeals for the Sixth Circuit|
|Majority||Thomas, joined by Roberts, Alito, Sotomayor, Kagan|
|Dissent||Breyer, joined by Kennedy|
|17 U.S.C. § 101 (part of the Copyright Act of 1976)|
Star Athletica, L. L. C. v. Varsity Brands, Inc., 580 U.S. ___ (2017), was a case in which the Supreme Court of the United States interpreted the Copyright Act of 1976—specifically the portion codified at 17 U.S.C. § 101—to determine when a "pictorial, graphic, or sculptural feature" incorporated into a useful article is eligible for copyright protection. The court established a two-prong test, deciding that such elements are eligible for copyright "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."
In the Copyright Act of 1976, Congress intended to provide less protection for industrial designs than it did for original works of art. As codified at 17 U.S.C. § 101, copyright protection is extended to "pictorial, graphic, or sculptural features" of the "design of a useful article" only if they "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." A 'useful article' is defined as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."
Varsity Brands filed suit against Star Athletica for infringing five of its copyrighted designs for cheerleading uniforms. The United States District Court for the Western District of Tennessee ruled in favor of Star Athletica on the grounds that the designs were not eligible for copyright protection because they "served the useful, or 'utilitarian,' function of identifying the garments as 'cheerleading uniforms' and therefore could not be 'physically or conceptually' separated under § 101 'from the utilitarian function' of the uniforms." The district court's decision was reversed on appeal by the United States Court of Appeals for the Sixth Circuit, which found that "the 'graphic designs' were 'separately identifiable' because the designs 'and a blank cheerleading uniform can appear side-by-side—one as a graphic design, and one as a cheerleading uniform. ... [T]he designs were 'capable of existing independently' because they could be incorporated onto the surface of different types of garments, or hung on the wall as framed art."
On May 2, 2016, the U.S. Supreme Court granted certiorari "to resolve widespread disagreement over the proper test for implementing § 101's separate-identification and independent-existence requirements."
Opinion of the Court
Justice Thomas delivered the majority opinion, which was joined by Chief Justice John Roberts and Justices Alito, Sotomayor, and Kagan. The Court defined its task as "whether the lines, chevrons, and colorful shapes appearing on the surface of [Varsity Brands'] cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms."
"[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."
Applying this test to the cheerleading uniforms was "straightforward":
"First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as 'two-dimensional . . . works of . . . art,' §101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression—different types of clothing—without replicating the uniform. The decorations are therefore separable from the uniforms and eligible for copyright protection."
The court only decided whether the two-dimensional designs on the cheerleading uniforms could receive copyright protection under the terms of 17 U.S.C. § 101, and did not decide whether the five cheerleading uniform designs in the case actually met the threshold of originality to receive copyright protection.
Justice Ginsburg wrote an opinion concurring in judgement—that the cheerleading uniform designs could be protected by copyright—but not joining in the majority's reasoning. For Justice Ginsburg, the court did not need to decide on a separability test "because the designs at issue are not designs of useful articles", but rather "the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles." Because copyright protection provided by the Copyright Act of 1976 "includes the right to reproduce the work in or on any kind of article, whether useful or otherwise", the copyright holder of a pictorial, graphical, or sculptural work "may exclude a would-be infringer from reproducing that work on a useful article", thus obviating the need for the court to reach the separability analysis issue. Justice Ginsburg attached to her decision several pages of applications submitted by Varsity Brands to the U.S. Copyright Office in which the type of work claimed was "2-dimensional artwork".
Justice Breyer, joined by Justice Kennedy, dissented on the ground that the cheerleading uniform designs "cannot 'be perceived as . . . two- or three-dimensional work[s] of art separate from the useful article.'" Justice Breyer summarized his argument by remarking:
Look at the designs that Varsity submitted to the Copyright Office. You will see only pictures of cheerleader uniforms. And cheerleader uniforms are useful articles. 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. Hence the design features that Varsity seeks to protect are not 'capable of existing independently o[f] the utilitarian aspects of the article.'"
"What the court does not state expressly in that part of its opinion is that the standard for determining whether a graphic work (for example) is copyrightable is minimal. ... So once the court has said that any design can gain copyright protection if it would be protectable if placed first on a piece of paper, it really has ensured that all but the subtlest graphic designs will be able to gain copyright protection. ... To put [the Court's application of its test to the uniforms (quoted in the "majority opinion" section above)] more bluntly, once we determine that the designs 'hav[e] … graphic … qualities … [and could be] applied … on a painter’s canvas,' the test for copyrightability is met. ... I am sure that my colleagues who study intellectual property will write at length for years to come about the doctrinal nuances of the court’s discussion of the separability requirement, which seems to me a marked shift from most of the prior treatments."
Many IP attorneys have noted that Star Athletica was an important case for the fashion industry and that its effect remains to be seen as more designers apply for copyright protection, which may particularly have a negative effect on fashion trends, which involve some degree of copying basic styles among designers throughout the industry.
- Star Athletica, L. L. C. v. Varsity Brands, Inc., No. 15-866, 580 U.S. ___ (2017), slip op. at 1-2 (quoting 17 U.S.C. § 101).
- Star Athletica, slip op. at 1.
- 17 U.S.C. § 101; see also Star Athletica, slip op. at 1.
- Star Athletica, slip op. at 4 (quoting 17 U.S.C. § 101).
- Star Athletica, slip op. at 2 (quoting 2014 WL 819422, *8-*9 (WD Tenn., Mar. 1, 2014)).
- Star Athletica, slip op. at 2-3 (quoting 799 F. 3d 468, 471, 491-492 (6th Cir. 2015)(some internal citations omitted).
- Star Athletica, slip op. at 1; see also No. 15-866 (docket), United States Supreme Court, http://www.supremecourt.gov/Search.aspx?FileName=/docketfiles/15-866.htm (last visited April 15, 2017)("May 2 2016 Petition GRANTED limited to Question 1 presented by the petition.").
- The Supreme Court, 2016 Term — Leading Cases, 131 Harv. L. Rev. 363 (2017).
- Star Athletica, slip op. at 4.
- See Star Athletica, slip op. at 8-10.
- Star Athletica, slip op. at 1, 10.
- Star Athletica, slip op. at 10.
- Star Athletica, slip op. at 10 (some internal citations removed).
- Gene Quinn & Steve Brachmann, Copyrights at the Supreme Court: Star Athletica v. Varsity Brands, IPWatchdog (March 22, 2017), http://www.ipwatchdog.com/2017/03/22/copyrights-supreme-court-star-athletica-v-varsity-brands/id=79767/ ("The Court did not decide whether the chevron stripes were themselves original and thus subject to copyright protection once removed from the cheerleading uniform.").
- Star Athletica, L. L. C. v. Varsity Brands, Inc., No. 15-866, 580 U.S. ___ (2017), slip op. at 1 (Ginsburg, J., concurring in judgment)(emphasis in original)
- 17 U.S.C. § 113(a).
- Star Athletica, slip op. at 2 (Ginsburg, J., concurring in judgment).
- See Star Athletica, slip op. at 4-14 (Ginsburg, J., concurring in judgment).
- Star Athletica, L. L. C. v. Varsity Brands, Inc., No. 15-866, 580 U.S. ___ (2017), slip op. at 1 (Breyer, J., dissenting)(emphasis in original)
- Star Athletica, slip op. at 1 (Breyer, J., dissenting)(quoting 17 U.S.C. § 101)(some internal citations omitted).
- Ronald Mann, Opinion analysis: Court uses cheerleader uniform case to validate broad copyright in industrial designs, SCOTUSblog (March 22, 2017), http://www.scotusblog.com/2017/03/opinion-analysis-court-uses-cheerleader-uniform-case-validate-broad-copyright-industrial-designs/; see also Ronald Mann: Contributor, SCOTUSblog, http://www.scotusblog.com/author/ronald-mann/ (last accessed April 16, 2017).
- See Quinn & Brockmann, supra; Apart at the Seams – Copyright Protection for Apparel: Star Athletica, LLC v. Varsity Brands, Inc., Marshall, Gerstein & Borun LLP (March 28, 2017), http://www.marshallip.com/publications/apart-at-the-seams-copyright-protection-for-apparel-star-athletica-llc-v-varsity-brands-inc/; Judy Greenwald, High court fashion statement could lead to more lawsuits, Business Insurance (March 28, 2017), http://www.businessinsurance.com/article/20170327/NEWS06/912312586/Supreme-Court-makes-fashion-statement-cheerleader-uniforms-ruling-Varsity-Athlet; Chris Morran, Supreme Court’s Ruling In Cheerleader Uniform Case Could Lead To Higher Prices For Clothing, Furniture, Consumerist (March 22, 2017), http://consumerist.com/2017/03/22/supreme-courts-ruling-in-cheerleader-uniform-case-could-lead-to-higher-prices-for-clothing-furniture/.