United States: Supreme Court Expands Copyright Protection Of Pictorial, Graphic, And Sculptural Works Found In Useful Articles

On March 22, 2017, the Supreme Court established a standard for determining whether a design element incorporated into a useful article can be protected as a pictorial, graphic, or sculptural work under the Copyright Act. The Court ruled that a feature is eligible for copyright protection if it "(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." Star Athletica LLC v. Varsity Brands, Inc., No, 15-866 (U.S. March 22, 2017). The decision supersedes varying tests developed by other courts to evaluate the copyrightability of features in useful articles, including tests that focused on concepts of "physical" and "conceptual" separability. The decision is likely to cause many companies producing functional products with significant design features, including those in the fashion industry, to consider copyright protection for their products.

Background:

Varsity Brands, Inc. makes cheerleader uniforms. In addition to the functional aspects of those uniforms, such as the shape, cut, and physical dimensions of the garment itself, the uniforms are embellished with stripes, chevrons, and other shapes. The arrangement of shapes and the colors used in the uniforms indicate that the wearer is affiliated with a particular team. Varsity obtained copyright registrations for several of its uniform designs, including those shown below:

Varsity filed suit against a competitor, Star Athletica LLC ("SA"), alleging that SA's uniforms infringed Varsity's copyrights. SA marketed cheerleader uniforms with stripes, chevrons and other design elements similar to those in Varsity's uniforms. SA argued that Varsity's designs were not protectable under the Copyright Act because the designs were purely functional, and could not be separated from for utilitarian cheerleader uniform. The U.S. District Court for the Western District of Tennessee agreed, ruling that the designs performed the function of identifying the garments as cheerleading uniforms, and were not separable from the garments. The U.S. Court of Appeals for the Sixth Circuit reversed, holding that the designs were separable from the functional garments because they were capable of existing independently, such as if they were applied to other garments or displayed as separate work of art. Varsity Brands, Inc. v. Star Athletica LLC, 799 F.3d 468 (6th Cir. 2015). Star appealed that ruling to the Supreme Court.

Supreme Court Decision:

In a 6-2 decision, the Supreme Court affirmed the court of appeals and ruled that Varsity's designs were protectable under the Copyright Act. Justice Thomas, writing for five justices, based the decision on the text of the Act, 17 U.S.C. § 102(a). Copyright protection extends to "pictorial, graphic, and sculptural works" that are fixed in a tangible medium of expression. 17 U.S.C. § 102(a)(5). If the work is incorporated into a useful article, the design is "considered a pictorial, graphical, 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." Id. (emphasis added).

The Court ruled that, under the Act, a pictorial, graphic, or sculptural feature in an otherwise useful article is eligible for copyright protection only if it both (1) "can be identified separately from," and (2) is "capable of existing independently of, the utilitarian aspects of the article."

As to the first requirement, the Court noted that "separate identification" exists when one is "able to look at the useful article and spot some two- or three- dimensional element that appears to have pictorial, graphic, or sculptural qualities." Slip op. at 7. In order to satisfy the second "independent existence" requirement:

[T]he feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101 once it is imagined apart from the useful article. If the feature is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article, then it was not a pictorial, graphic, or sculptural feature of that article, but rather one of its utilitarian aspects.


Slip op. at 7. Under this test, the feature, when separated, "cannot itself be a useful article or an article that is normally a part of a useful article (which is itself considered a useful article)." Id. In addition, the Court also ruled that the same test applies to pictorial, graphic, or sculptural works that are two-dimensional and three-dimensional. Slip op. at 5.

The court's ruling dispatches tests applied in some circuits, which focused on the concepts of physical and conceptual separability. See, e.g., Brandir Int'l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987).  The Court noted that the Copyright Act:

[M]ake[s] clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles. The ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.


Slip op. at 8.

Applying the test to Varsity's cheerleader designs, the Court ruled that, assuming the designs satisfied all other requirements for copyright protection – which the Court expressly did not consider – they were works protected by copyright:

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.


Slip op. at 10-11.

Justice Ginsburg concurred in the result, but argued that the Court did not need reach the separability issue to decide the case. Since Varsity registered copyrights in its design consisting of two-dimensional shapes, stripes, and chevrons, and SA reproduced those designs on its uniforms, Ginsburg argued that the designs were "standalone" works and SA was potentially liable for infringement.

Justice Breyer, joined by Justice Kennedy, wrote a lengthy dissent. He argued that the designs in the Varsity uniforms was not separable because, if it existed in another medium, it would merely be a depiction of a cheerleader uniform. He expressed concern that, if applied too broadly, the majority opinion's test would roil the fashion industry, as companies sought to protect their designs under copyright, even though Congress repeated has failed to pass fashion design protection legislation.

Practical Significance:

The Court's decision establishes a standard for protecting product design elements as copyrighted works, but lower courts may find the test difficult to apply in future cases. For example, fashion and clothing designs, which generally have not been protected by copyright, commonly contain design elements that may be envisioned as separate works. Thus, although an entire garment may not be copyrightable, copyright may protect the individual features. In addition, the decision suggests that a design feature may be protected by copyright even though it has some useful function. Companies in the fashion industry may consider filing copyright registrations on design elements as two-dimensional works in order to strengthen their positions against competitors.

The decision is likely to affect intellectual property strategies beyond the fashion industry. For example, the decision may to accelerate the trend of "layering" intellectual property protection by applying patent, copyright, and trademark protection to different aspects of the same product. Companies must carefully evaluate the potential benefits of such a strategy.

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