United States: SCOTUS Determines That Decorations on Cheerleading Uniforms Are Conceptually Separable From Uniforms And Eligible For Copyright Protection

On March 22, 2017, the Supreme Court of the United States issued a 6-2 ruling in Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., holding the decorative elements on Varsity Brands' cheerleading uniforms were conceptually separable two-dimensional graphic works, and therefore eligible for copyright protection.

In so holding, the Court affirmed the Court of Appeals for the Sixth Circuit's finding that the decorations could be "identified separately" and were "capable of existing independently" of the cheerleading uniforms, and thus protectable under Section 101 of the Copyright Act.

By way of background, Varsity Brands, Inc., et al., design, manufacture, and sell cheerleading uniforms, and own over 200 U.S. copyright registrations for various two-dimensional decorations that appear on the surface of their uniforms (e.g. "chevrons...curves, stripes...coloring, and shapes").  Varsity Brands sued Star Athletica, L.L.C., a rival cheerleading uniform manufacturer and retailer, for infringing five of their registered copyrights.  Star Athletica relied on the commonly held proposition that apparel is usually outside the scope of the Copyright Act, which bars protection for "useful articles", and argued that the Varsity Brands design patterns were useful as applied to cheerleading uniforms. While the District Court granted Star Athletica summary judgment, the Sixth Circuit reversed in favor of Varsity Brands, and the Supreme Court affirmed.

The Supreme Court majority found the holdings in Mazer v. Stein, 347 U.S. 201 (1954)1 and the "mirror image" protections offered under the Copyright Act's Sections 101 and 113(a) 2 instructive in its application of a separability analysis to Varsity Brands' uniforms' decorative elements.  The Supreme Court reasoned if "a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as part of a useful article."  As a result, the Court held that a feature of the design of a useful article is eligible for copyright if: (1) when identified and imagined apart from the useful article (2) it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.

The Court's application of this test led it to conclude that: (1) Varsity Brands' decorations were identifiable as features having pictorial, graphic, or sculptural qualities; and (2) the ability to separate Varsity Brands' decorations from the surface of its uniforms and apply them to another medium (e.g. a painter's canvas) qualify the decorations as a "two dimensional work of art," as defined by Section 101.  The Court determined further that "imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself."  The Court thus concluded "the decorations [were] therefore separable from the uniforms and eligible for copyright protection."  Justice Breyer, in dissent, expressed his views to the contrary, arguing the decorations were "not separable because imaginatively removing them from the uniforms and placing them in some other medium...would create 'pictures of cheerleader uniforms.'"3

The Court's holding summarily rejected the notion that "a useful article must remain after [an] artistic feature has been imaginatively separated from the article," effectively abandoning the distinction between "physical" and "conceptual" separability previously adopted by some courts.  The Court also rejected consideration of additional factors, such as the marketability of the decorative element or the author's intent in creating the decoration. 

The Court's ruling in Star Athletica clarified the boundaries of copyright protection for decorative elements applied to utilitarian articles.

Footnotes

1 Mazer v. Stein, in which a statuette intended as a lamp base was found copyrightable, held that (1) respondents held a copyright in the statuette despite its use as a lamp base, and (2) whether the statuette was initially created as a freestanding sculpture or as a lamp base was irrelevant to the copyright inquiry. 201 U.S. at 214; 218-19.

2 The Court found Section 101 of the Copyright Act to be "in essence, the mirror image of Section 113(a)," reasoning "whereas Section 113(a) protects a work...first fixed in some tangible medium other than a useful article and subsequently applied to a useful article, Section 101 protects art first fixed in the medium of a useful article."

3 Justice Ginsberg, in concurrence with the judgment, disagreed with the majority's opinion, stating the majority's separability test under Section 101 was "unwarranted" because the decorations at issue are not, themselves, useful articles, but are instead "copyrightable pictorial or graphic works reproduced on useful articles."

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.

Authors
 
In association with
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
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.

Disclaimer

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.

Registration

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.

Cookies

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.

Links

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.

Mail-A-Friend

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.

Security

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.