United States: Supreme Court Finds Cheerleading Uniform Designs Copyrightable

On March 22, 2017, the Supreme Court held in Star Athletica, LLC v. Varsity Brands, Inc. that designs on cheerleading uniforms may be protectable under the Copyright Act.  The Court's 6-2 decision, clarifying the protectability of fashion designs under copyright law, and, more broadly, designs on useful articles, holds that a feature incorporated into the design of a useful article is eligible for copyright protection if it is conceptually separable from the article, and sets forth a two-part test for assessing separability.

The Respondents, Varsity Brands, Inc. and its affiliates, design and make cheerleading uniforms and own more than 200 U.S. copyright registrations for designs covering the surface of their uniforms and other garments. Respondents sued Petitioner Star Athletica LLC, which also manufactures and markets cheerleading uniforms, for infringing their copyrights in five designs on cheerleading uniforms. The designs in question were primarily "combinations, positions, and arrangements of elements" that included stripes, chevrons, zigzags, and colorblocks. 

In March 2014, the District Court for the Western District of Tennessee entered summary judgment on the ground that Respondents' designs were not copyrightable because they were not "physically or conceptually" separable from the utilitarian function of a cheerleading uniform. In October 2015, the U.S. Court of Appeals for the Sixth Circuit reversed and held that the "graphic designs" on the uniforms were "separately identifiable," and thus copyrightable, because the designs were "capable of existing independently." The Sixth Circuit's decision acknowledged that courts had struggled to formulate a test for whether a design is separable from a useful article.  Indeed, the various federal circuit courts applied a number of different tests to determine separability.

The Supreme Court's decision has put this issue to rest, holding that "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."  The Court noted that the first prong of the test typically is straightforward; in most cases, it is the second prong that is more difficult to satisfy.1

With respect to the cheerleading uniforms at issue in the case, the Court first found that the decorations on the uniform had pictorial, graphic or sculptural qualities. Next, the Court found that if the arrangements of colors, shapes, stripes and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied to another medium, such as a painter's canvas, they would qualify as two-dimensional works of art.  In fact, the Respondents had applied the designs to other media of expression, such as different types of clothing, without replicating the uniform.  Thus, the decorations were separable from the uniforms and eligible for copyright protection. The Court, however, expressed no opinion on whether the surface decorations on the uniforms were sufficiently original to qualify for copyright protection. It further clarified that the only copyrightable feature of the cheerleading uniform is the two-dimensional art on the uniform fabric, and not the shape, cut or dimensions of the uniform itself.

The Court rejected the Government's argument that copyright extends only to useful articles that are equally useful without their artistic design features. Instead, the Court stated that the focus of the separability analysis should be on the copyrightability of the "extracted feature" and not on aspects of the useful article that remain. The Court also rejected incorporating certain "objective" components into its analysis. The Petitioner advocated for a test that would consider (1) whether the design elements showed artistic judgment independent of functional influence and (2) whether the design elements would still be marketable without their utilitarian functions. But the Court held that such a test would be inconsistent with the text of the Copyright Act because the statute limits courts' inquiry to how the article and feature are perceived, not how they are designed, and says nothing about copyrightability depending on marketability. Finally, the Court reiterated that there is no presumptive hostility towards copyright protection for industrial designs, even if Congress has not expressly provided protection for designs on articles of clothing.

Justice Ginsberg's concurrence argued that applying the separability test under the Copyright Act was unwarranted because the designs at issue were not designs of useful articles, such as clothing. Instead, she contended, the designs were copyrightable pictorial or graphic works that Respondents reproduced on useful articles. A dissent authored by Justice Breyer, while not disagreeing with the majority's test for separability, argued that the designs at issue on the cheerleading uniforms could not be perceived as works of art separable from the uniform itself, perhaps suggesting difficulty lower courts may have in applying the Court's separability test.

The impact of yesterday's decision will resonate within the fashion industry, as it upholds protections for pictorial, graphic or sculptural designs that are considered conceptually separable on clothing, and clarifies the standard for conceptual separability under the Copyright Act. While designs themselves must separately consist of copyrightable subject matter, as long as they can be perceived as separable from the utilitarian purposes of the useful articles they reside on, they are eligible for copyright protection.

The decision also is noteworthy for the sports industry, as it could arm teams and leagues with another weapon to protect original and distinctive team uniform designs. Protecting uniforms under trademark law would require a showing of a likelihood of consumer confusion, whereas protecting original and distinctive uniforms under copyright law requires only a showing of copying of protectable expression.

Footnote

1 Section 101 of the Copyright Act, from which the Court's separability test is derived, provides:

'Pictorial, graphic, and sculptural works' include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work 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. 

17 U.S.C. § 101.

Supreme Court Finds Cheerleading Uniform Designs Copyrightable

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Vedder, Price P.C.
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Vedder, Price P.C.
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions