U.S. Supreme Court Adopts Test for Determining Whether Designs Are Copyrightable
April 14, 2017
by Jerry Glover
The U.S. Copyright Act protects, among other things, pictorial, graphic and sculptural works. Are designs incorporated into clothing “pictorial, graphic and/or sculptural works?
This issue was recently addressed by the U.S. Supreme Court which was presented with the issue of whether a design incorporated into clothing is copyrightable. In this case, the clothing was a cheerleader uniform. After this decision was released some media outlets stated in headlines that the Supreme Court had ruled that cheerleading uniforms were copyrightable. This is not what the Court ruled. In fact, the Court merely set forth a test for determining whether a clothing design is separable from the clothing and, perhaps, copyrightable,
In this case, Star Athletica, LLC v. Varsity Brands Inc., 137 S. Ct. 1002 (2017), Varsity designed, made and sold cheerleading uniforms and acquired more than 200 U.S. copyright registrations for two-dimensional designs appearing on the surface of those uniforms. See below for an illustration of those designs as incorporated into the uniforms.
Star Athletica is in the same design, marketing and sales business as Varsity. Varsity sued Star Athletica for infringing its copyrights in five uniform designs. The lower court found for Star Athletica holding that the designs did not qualify as protectable pictorial, graphic or sculptural works noting that the designs served a useful or “utilitarian” function of identifying the garments as cheerleading uniforms and could not be physically or conceptually separated from the utilitarian function of the uniform.
The federal appeals court reversed holding that the designs could be identified separately from the uniforms as works of art.
The Supreme Court first set forth a test to determine in future cases whether designs incorporated into clothing or other products were copyrightable. The Court held that
“a feature incorporated into the designs of a useful article is eligible for copyright protection only if 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 pictorial, graphic or s 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 in incorporated.”
Ultimately, the court ruled that the designs in question met this test.
In formulating this test, the Court analyzed several provisions of the Copyright Act. First, the Court noted that the Act defines “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. Sec. 102(a)(5). In order for any design incorporated into a useful article, it must be capable of identification separate from the useful article and capable of existing independently of the utilitarian aspects of the article. This has become known as the separability test.
The Court explained that under the identification separate from the useful article “prong” the trial judge only needs to be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic or sculptural qualities. The capable of existing independently “prong” is satisfied if the separately identified feature has the capacity to exist apart from the utilitarian aspects of the useful article. Finally, the separately identified feature cannot be a useful article itself. The Court added that it does not matter that the design in question was first created as part of a useful article. As long as it can pass the separability test, the design is subject to its own copyright protection.
Finally, the Court noted that it does not matter that the designs on the uniforms would form the outline of those same uniforms when separated from the uniforms. The design still remains a two-dimensional work of art.
Star Athletica had argued that a design feature can exist independently only if it can stand alone as a copyrightable work and if the useful article from which it was extracted would remain equally useful. The Court disagreed noting that the focus of the separability test is on the extracted feature, not on any aspects of the useful article that remain after the imaginary extraction. It ruling this way, the Court noted that it was rejecting a test that some courts and commentators had adopted—the distinction between physical and conceptual separability. According to this test, a feature is physically separable from the useful article if, as the Copyright Office has declared, it can “be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” Conceptual separability applies if the feature physically could not be removed from the useful article. The Court held that the Copyright Act test of separability is a conceptual undertaking only; whether the article from which the design is separated remains useful is irrelevant.
So under the test adopted by the Court, would the designs on either or both of these rain boots be separable from the boot itself? If so, would that design(s) be copyrightable?