United States: When Is Apparel More Than Just Apparel? When Its Surface Decorations Are Conceptually Separable, Even Two Dimensional Designs Will Do.

The Supreme Court Finally Weighs In On The Boundaries Of Copyrightability For Useful Articles

After decades of uncertainty about the standard for the copyrightability of "useful articles," the Supreme Court has finally provided copyright holders with guidance to resolve this thorny issue. On March 22, 2017, the Court decided Star Athletica v. Varsity Brands and set forth the test for determining whether original expression embodied in an otherwise utilitarian work is entitled to protection under the Copyright Act. On one hand, the Court gave much needed guidance on what constitutes "conceptual separability," but on the other it made clear that its decision was not a blanket message that all fashion designs are copyrightable, only that the "surface decorations" at issue here are.

The Copyright Act protects "original works of authorship fixed in any tangible medium of expression." However, the Act excludes copyright protection for "useful articles," defined as those with "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."

An exception to the Act's "useful article" prohibition is the so-called "conceptual separability" doctrine first articulated by the Court in Mazer v. Stein. There, the Court addressed the copyrightability of a lamp – an admitted utilitarian object – but where the lamp base was comprised of an ornate statue. In holding the lamp base copyrightable, the Mazer Court unleashed a long series of subsequent cases seeking to interpret a working test for determining what is "conceptual separability." The Supreme Court, in an Opinion authored by Justice Thomas, has finally "cut" that "Gordian Knot."

As noted, copyright protection generally does not extend to "useful articles." Deemed useful articles rather than artistic creations, clothes have historically been categorically excluded from copyright protection. However, "pictorial, graphic, or sculptural" features that are separable and can exist apart from the functional aspects of a garment have been afforded copyright protection in limited instances under the doctrine of conceptual separability.

For example, lace and embroidery accents "that were totally irrelevant to the utilitarian functions" of a tunic have been found to be copyrightable. Similarly, costume jewelry and ornamental belt buckles have been afforded protection. As have certain fabric designs, such as the patterns printed on a dress. Up until now, courts have distinguished copyrightable fabric designs from unprotectable dress designs, which have been categorized as useful articles. Consequently, dress components, such as the style, cut, shape or dimensions of a garment, have been foreclosed from copyright protection. Similarly, design details like buttons or pleats have been deprived of protection, regardless of how detailed the expression may be. Bottom line, and despite both legislative and judicial efforts, copyright protection afforded to fashion designs has historically been extremely limited. That is, up until now.

The Court's recent opinion in Star Athletica v. Varsity Brands opens the door for protection of certain fashion designs. The Court held that a decorative feature of a cheerleading uniform was eligible for copyright protection as a "two-dimensional work of art" under the doctrine of conceptual separability. More importantly, the Court set forth a test for determining what "conceptual separability" is.

Noting that lower courts have been divided as to when conceptual separability exists, Justice Clarence Thomas set forth a two-part test to resolve the question. The Court held that a feature incorporated into the design of a useful article is eligible for copyright protection when 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 pictoral, 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, the Court found that two-dimensional designs appearing on the surface of the subject cheerleading uniforms (consisting of lines, chevrons, and colorful shapes) could be identified separately from, and were capable of existing independently of, the utilitarian aspects of the uniforms.

First, the Court found that the uniform decorations could be identified as "features having pictoral, graphic or sculptural qualities." Second, the Court found that if the decorations were separated from the uniforms and applied to another medium, such as a painter's canvas, they would qualify as two-dimensional works of art. Third, and finally, the Court found that separating the decorations from the uniforms and applying them to another media of expression, such as a different type of clothing, "would not replicate the uniform itself." Therefore, the Court concluded that the uniform decorations were "separable from the uniforms and eligible for copyright protection."

As early as 1977, the U.S. Register of Copyright identified the lack of protection for fashion and clothing designs as "one of the most significant and pressing items of unfinished business" in U.S. copyright law. While copying has always occurred in the garment industry, today, counterfeiting poses an unprecedented threat to designers. Especially, as new technology enables copies to be produced and sold at accelerated speeds. The Star Athletica v. Varsity Brands opinion will likely add fuel to designers and copyright owners' attempts to protect and enforce their original expressions. Only time will tell what practical effect this will have.

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.

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.