United States: Give Me A ©!: U.S. Supreme Court Set To Determine The Proper Test For The Separability Of Design Features From Useful Articles Under §101 Of The Copyright Act

For nearly a century, U.S. federal courts have struggled with the "metaphysical quandary" involved in determining whether and when certain design features associated with otherwise useful articles are conceptually separable, and thus protectable, under §101 of the Copyright Act.  17 U.S.C. § 101.  Next term, in Star Athletica, L.L.C. v. Varsity Brands, Inc. et. al. ("Star Athletica"), the U.S. Supreme Court will finally take up this important issue, weighing in on the proper test to be applied by the lower courts in answering what is arguably one of "the single most vexing, unresolved question[s] in all of copyright":  What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?  No. 15-866 (6th Cir., 799 F.3d 468; 578 U.S. ___, cert. granted May 2, 2016).      

Such a test will affect the protection of copyrighted designs in the fashion, footwear, costume, furniture, 3-D printing and many other industries.  As a result, Star Athletica  has captured the attention of the mainstream media and more than a dozen academic, industry, intellectual property and public interest groups and associations.  Seven Amici Curiae Briefs were recently filed with the Court – each discussing different implications of the Court's holding as well as the sufficiency of the test for conceptual separability applied by the Sixth Circuit.

Are the designs that appear on cheerleading uniforms conceptually separable or inherently functional?

Star Athletica and Varsity Brands each manufacture and sell cheerleading uniforms and warmup suits.  After an initial rejection, Varsity Brands successfully registered numerous copyrights with the U.S. Copyright Office for several of its designs including the color combinations, chevrons, stripes and other ornamentation appearing on the apparel it manufactures and sells.  In 2010, Varsity filed suit against its competitor, Star Athletica, alleging copyright infringement of its designs.  The district court found for Star, holding that "the colors-and-designs component of a cheerleading uniform cannot be conceptually separated from the utilitarian object itself."  Varsity Brands, Inc. et. al. v. Star Athletica, LLC, Case No. 10-2508, 2014 WL 819422 (M.D. Tenn. 2010).  In short, the court reasoned that "a cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas."  Id

On appeal, the Sixth Circuit fashioned a tenth version of the separability analysis taking into account five factors distilled from the case law and tests for conceptual separability used by other federal Circuit Courts of Appeals.  Star Athletica, LLC v. Varsity Brands, Inc., et al., 799 F.3d 468 (6th Cir.  2015).  Under its analysis, in a split decision, the Sixth Circuit reversed, finding that Varsity's designs were, in fact, separable from the apparel on which they appeared and thus subject to copyright protection.  Star moved for a rehearing en banc which was denied pending its Petition for Writ of Certiorari to the U.S. Supreme Court – now granted.

The Doctrine of Conceptual Separability

It is well established that "useful articles" such as chairs, machinery and garments are generally not eligible for protection under the U.S. Copyright Act.  However, in the 1976 revision of the Copyright Act, section 101 added what is now known as the doctrine of conceptual separability.  See Mazer v. Stein, 347 U.S. 201 (1954); see also 17 U.S.C. §§ 101, 113.  That is, copyright protection may extend to a component part or feature of a useful article where it is a "pictorial, graphic, or sculptural work" that can be "identified separately from, and . . . exist[] independently of, the utilitarian aspects of the article."  Id.  To use the petitioner's example, think "The Spirit of Ecstasy" hood ornament on a Rolls-Royce automobile.  The iconic Rolls-Royce ornament – a sculpture – is clearly conceptually separable and able to exist independently from the utility of the automobile on which it is fastened.

The separability analysis, however, becomes far more difficult and abstract when a court is called upon to determine whether and to what extent a component feature of a useful article is separable where the feature could fairly be considered utilitarian, ornamental or both – depending upon the specific analysis applied.  And therein lies the problem at issue in Star Athletica – there has been no consensus among the federal Circuit Courts of Appeals as to the proper test to be applied in making such determinations.  Instead, as the Third Circuit has commented, courts "have twisted themselves into knots trying to create [various] test[s] to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article's utilitarian function"  Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir. 1990). 

Courts remain confounded by the abstractions and nuance inherent in such analyses – having fashioned no less than ten widely divergent tests for determining conceptual separability across the federal Circuit Courts of Appeals.  In sum, as Judge McKeague noted in his dissent, without much-needed clarification in this area "courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law."  Star Athletica, LLC, 799 F.3d at 496-497 citing Fashion Originators Guild of Am. v. Fed. Trade Comm'n, 114 F.2d 80, 81 (2d Cir.1940) (Hand, J.).  Having granted Star Athletica's petition, the Supreme Court is now poised to hear argument and, hopefully, provide clarity in the form of a controlling standard by which the separability of features from useful articles will be tested in the courts below.

The Potential Implications And Likely Outcome In Star Athletica

Given that the test for conceptual separability applies equally to any pictorial, graphic, or sculptural work that is a conceptually separable feature or component of a useful article, the legal and practical implications of the Supreme Court's holding in Star Athletica could be extensive.  The petitioner and various amici have advanced a plethora of potential implications should the Court affirm the Sixth Circuit's holding.  These potential repercussions range from constitutional concerns to the chilling effect such a holding could have on creativity, innovation and competition in a diversity of marketplaces including the fashion, costuming, 3-D printing and furniture design industries. 

While the Court's holding could alter the balance between copyright and patent protections and affect a sea change, such an extreme outcome is not likely.  While it is, of course, impossible to predict the Court's treatment of this issue, the Court has historically taken a more tempered approach grounded in statutory construction and Congressional intent.  If the same holds true here, the Court is more likely to craft an objective, fact-based, test for conceptual separability that provides for narrow protection under section 101 of the Copyright Act – and only then for clearly separable nonfunctional features of useful articles that can be identified and isolated without resort to the metaphysical analyses courts have engaged in for decades. 

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.