United States: Separating Art from Function: Supreme Court Creates Copyright Test for Designs

Stacey H. Wang is a Partner in Holland & Knight's Los Angeles office
Jacqueline Win is an Associate in Holland & Knight's San Francisco office
Jane Marie Russell is an Associate in Holland & Knight's Miami office


  • A landmark Supreme Court decision, holding that artistic elements incorporated into useful article – such as clothing – may be entitled to copyright protection, opens the door to copyright protection for designs traditionally limited to other avenues of protection, such as trade dress or design patents.
  • The Supreme Court set forth a two-part "separability" test to determine whether artistic elements in a functional article can be copyright protected: 1) the artistic elements must be separately identifiable, i.e., it has a "two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities"; and 2) the artistic elements can be "identified and imagined" apart from the useful article, such as on a piece of paper or on a painter's canvas.
  • Future litigation is expected around the tension between the exclusive right to reproduce protected designs, even on useful articles, and the principle that the useful articles themselves can never be copyright protected.

In a landmark 6-2 decision, the U.S. Supreme Court resolved "widespread disagreement" among lower courts and held that the artistic elements in a functional article ­– such as the cheerleading uniform at issue in this case – can be copyright protected if those artistic elements meet a two-part "separability" test from the article's function.

In Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, 2017 WL 1066261, Varsity Brands sued Star Athletica for copyright infringement of five two-dimensional cheerleading uniform designs, including designs made up of combinations of shapes, chevrons and stripes. Both companies market and sell cheerleading uniforms.

As an initial matter, the Copyright Act of 1976 protects original works of art, but does not protect industrial designs. Copyrightable subjects are limited to "original works of authorship" – such as "pictorial, graphic, or sculptural works" – that are "fixed in any tangible medium of expression." 17 U.S.C. §102(a). The design of a useful article is protectable "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. Through these statutory provisions, Congress intended to provide some protection to the artistic elements of industrial designs. However, lower courts and scholars alike have had difficulty determining when artistic features would be categorized merely as functional or, instead, as protectable art, under these "separate-identification" and "independent-existence" requirements.

Case Background

In granting summary judgment in favor of Star Athletica, the U.S. District Court for the Western District of Tennessee found that the designs were not protectable because they served the useful function of identifying the clothing as cheerleading uniforms and, thus, were not "physically or conceptually" separated "from the utilitarian function" of the uniform. The U.S. Court of Appeals for the Sixth Circuit reversed, holding that the artistic features were protectable because the designs could exist as a stand-alone graphic design "side by side" with a blank cheerleading uniform, and could be incorporated into other garments or "hung on the wall and framed as art."

The Supreme Court affirmed, and definitively held that "pictorial, graphic or sculptural" works of art, either two-dimensional or three-dimensional, that are incorporated in a useful article, are eligible for copyright protection if they pass a two-part "separability" test. First, the artistic feature of the useful article must be separately identifiable, which means a "two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities." This is usually satisfied easily since the court need only look at the useful article and "spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities." Second, the artistic feature must have the "capacity to exist apart from the utilitarian aspects of the article," which means the artistic features can be "identified and imagined" apart from the useful article. The "ultimate question" is whether the feature would have been protectable "had it originally been fixed in some tangible medium" – such as a piece of paper or a "painter's canvas" ­– "before being applied to a useful article."

Notably, the Court emphasized that the utility of design to the useful article was irrelevant in determining whether the artistic features themselves could be eligible for copyright protection. Essentially, if the feature could be "imagined" on a blank canvas instead of on the useful article, then the feature is separable regardless of whether the article is more or less useful without the feature. Rejecting the dissent's view that separability requires a useful article to remain equally useful after extracting the design from it, the Court explained that "[a]n artistic feature that would be eligible for copyright protection on its own cannot lose that protection simply because it was first created as a feature of the design of a useful article, even if it makes that article more useful."


Not only does this ruling hold open a new door for clothing designers in protecting against knockoffs, that door may be held open for a number of industries which traditionally were limited to other avenues of protection such as trade dress or design patents. The examples used by the Court in the decision – from lamps to furniture – demonstrate that the implications are far broader than the fashion industry. The decision is significant because copyright law affords much longer protection than the 15-year protection of design patents, and does not require a showing that the design achieved distinctiveness through secondary meaning as would be required for trade dress protection.

The implications beyond this, however significant, are uncertain. Future cases applying this decision will face the tension described by Justice Stephen Breyer in dissent ­– that is, the Court acknowledged that meeting the two-part test does not afford copyright protection in the useful article itself. As an example, the Court explained that although a cardboard model of a car might be copyrightable, "it would not give rise to any rights in the useful article that inspired it." To Justice Breyer, that limiting principle cannot be reconciled; simply putting the design of a useful article on canvas is not enough to separate art from function because, as in the case before the Court, "there is nothing to separate out but for the dress-shaped lines that replicate the cut and style of the uniforms." To have copyright protection in the artistic elements, "including the exclusive right to reproduce the designs on useful articles," yet not have any rights in the useful article itself, will lead to litigation as disputes between copyright holders and producers of useful articles continue to delineate the law.

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.

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