United States: Supreme Court Announces Broad Separability Test In Applying Copyright Law To Useful Articles

Last Updated: May 16 2017
Article by Norman J. Leonard and Erica B. E. Rogers

This article continues the discussion in an earlier article addressing the scope of copyright protection as it applies to useful goods under copyright law.  At the time the first article was written, Varsity Brands, Inc. v. Star Athletica, LLC, a case turning on the test for "separability" under copyright law, had recently been decided by the Sixth Circuit Court of Appeals.  Now, Varsity Brands has been appealed to, and decided by, the United States Supreme Court.

Issues in Varsity Brands: The Separability of Artistic Elements From Their Utilitarian Aspects

The main issue in Varsity Brands was whether copyright protection extended to the decorative elements of Varsity Brand's cheerleader uniforms—i.e. the particular combination of chevrons, stripes, colors, and shapes appearing on the uniforms. 

United States copyright law (the "Copyright Act of 1976") protects original, creative expression fixed in a tangible medium, such as sculptures, paintings, and musical recordings.  But, subject to limited exceptions, copyright protection often does not extend to the design of useful articles, such as clothing.  Useful articles are protectable by copyright only to the extent they have artistic elements that are separable from their utilitarian aspects. 

Historically, determining whether a design feature of a useful article was eligible for copyright protection has always required a so-called "separability analysis" to determine whether the feature could be separated from the utilitarian function, before determining whether the feature qualified for copyright protection, as physically or conceptually separated from the useful article.  Over the years, federal courts across the country developed numerous tests to determine separability under copyright law.  The lack of a single, unified framework resulted in legal uncertainty for designers and manufacturers and expensive litigation.

In Varsity Brands, the answer to the question of whether the decorative elements of the cheerleader uniforms were eligible for copyright protection depended on whether they were capable of existing as a "pictorial, graphic, or sculptural work" separate from the garment.

The trial court had determined that the decorative elements were not conceptually separable from the garment's utilitarian aspects because, essentially, a cheerleader uniform without those elements would cease to be a cheerleading uniform. 

On appeal, the United States Court of Appeals for the Sixth Circuit reversed the trial court, ruling that the artistic aspects of the cheerleading uniforms were subject to copyright protection because the graphic features of the cheerleading uniforms were conceptually separable from, and capable of existing independently of, the utilitarian aspects.  In reaching its conclusion, the Sixth Circuit crafted a new five-question inquiry test to determine separability, distinguishing between "fabric design" and "dress design."  The Sixth Circuit held that the "fabric design" (chevrons, stripes, colors, and shapes) was physically or conceptually separable, while the "dress design" (cut, dimensions, style) was not.

Varsity Brands was of particular interest to both designers and their attorneys because fashion designs, including the shape, cut, and dimensions of such designs, have traditionally been excluded from copyright protection as being inseparable from the utilitarian function of the clothing.  Whether the decorative elements appearing on the surface of a functional garment, such as a cheerleading uniform, were similarly inseparable was a matter of debate.  Put another way, on appeal, the Supreme Court was asked to decide the narrow issue of whether the decorative elements were separable from the utilitarian function of the clothing as a cheerleading uniform.  But, Varsity Brands also provided the Supreme Court with an opportunity to determine, once and for all, the unsettled legal question of what standard applies to determine when the design features of a useful article are considered separable and, therefore, subject to copyright protection.

The United States Supreme Court Decision

The Supreme Court, on March 22, 2017, affirmed the Sixth Circuit's conclusion that copyright protection did extend to the decorative elements of the cheerleading uniforms, but the Court's majority based its decision on a straightforward, two-part inquiry derived from the Copyright Act of 1976 itself, rather than the five-question inquiry the Sixth Circuit used. 

The Court determined that the two-part separability analysis is:

  • Whether the feature at issue can be "identified separately from" the utilitarian aspects of the article; and,
  • Whether the feature is "capable of existing independently of" the utilitarian aspects of the article.  

The first requirement, the Court observed, is simple.  It is satisfied if one can identify a two- or three-dimensional element of the feature that has "pictorial, graphic, or sculptural qualities." 

The second requirement, however, requires some imagination.  It is satisfied if the separately identified feature "has the capacity to exist apart from the utilitarian aspects of the article."  In other words, the Court noted, the feature must be able to exist as its own pictorial, graphic, or sculptural work once it is "imagined apart from the useful article."  This inquiry serves to address what the majority of the Court identified as the "ultimate separability question"—whether the feature in question would have been eligible for copyright protection had it originally been fixed in some medium other than a useful article before being applied to a useful article.

Applying this test to the surface decorations, or decorative elements, of a cheerleading uniform was then "straightforward," according to the Court.  First, the Court reasoned that the chevrons, stripes, colors, and shapes of the cheerleader uniforms could be identified as having pictorial, graphic, or sculptural qualities.  Second, once separated from the uniform, it was possible to imagine these decorative elements applied to another medium and qualifying for copyright protection as a work of art themselves.  By way of example, the Court imagined the same decorative elements applied to a painter's canvas.  Thus, the Court reasoned, the separability analysis was satisfied, and therefore the Court affirmed the decision of the Sixth Circuit.

The Court expressed no opinion as to whether the specific cheerleader uniform decorations in question were sufficiently original to actually be protected by copyright, only that they were eligible for copyright protection as a two-dimensional work of art that just happened to be affixed to fabric.


Essentially, the Supreme Court's decision in Varsity Brands only confirms that if a design feature of a useful article can be identified and imagined separately as a pictorial, graphic, or sculptural work, then that feature is eligible for copyright protection even if the article is a functional garment like cheerleading uniforms.  While the Supreme Court's test seems simple enough, its application in more complex cases may require a conceptual undertaking that would benefit from additional guidance.

Some may say that the Supreme Court missed an opportunity in Varsity Brands to engage in a more thorough discussion of copyright infringement in the context of clothing design.  Other than the Court's analysis of the narrow issue of surface decoration, the only additional guidance provided was a clarification that Varsity Brands' ability to prevent the reproduction of its surface decorations did not extend to the shape, cut, and dimensions of the cheerleader uniforms.

Consequently, the issue of when, if ever, these additional aspects of clothing design may be subject to copyright protection, and to what extent, will likely remain a matter of debate.  But the fact that the Supreme Court did rule that some design features of clothing are eligible for copyright protection leaves the door open for the fashion industry to argue for expanded copyright protection of fashion designs.

Manufacturers and designers with questions about protecting and enforcing their design rights in useful goods should consult intellectual property counsel experienced in both copyright law and patent 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.

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.

Similar Articles
Relevancy Powered by MondaqAI
Frankfurt Kurnit Klein & Selz
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Frankfurt Kurnit Klein & Selz
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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.


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.


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