This blog follows important legal developments in the copyright arena, including cases regarding “copyrightability,” i.e., the threshold question of whether a work is entitled to copyright.  Last summer, we wrote about a copyrightability case that had advanced all the way to the Supreme Court.  Last week, the Supreme Court issued its decision in that case, and in the process provided some clarity on an issue of interest to those in the art, fashion, and design arenas.

By way of background, federal law gives copyright protection to original “pictorial, graphic, and sculptural works,” which 17 U.S.C. § 101 defines to include:

works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, 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.

Clothing is considered a useful article.  So, for example, many courts have held that original images printed on fabric are generally copyrightable, but other aspects of clothing design, such as the shape of a garment’s neckline or the cut of a trouser leg, which are inextricably connected with the garment’s utilitarian aspects, are not copyrightable.

The lower federal courts have often struggled with this concept of “separability.”  Some disputes present a case of straightforward “physical separability” (for example, a hood ornament that can be removed from a car without damaging either the car or the ornament), but courts have been less certain as to how handle “conceptual separability” (i.e., “pictorial, graphic, or sculptural features” in the design of a useful article, which are identifiable separate from the article’s utilitarian function, but cannot be removed physically).  This recent Supreme Court opinion seeks to provide some clarity on how courts should analyze separability.

More details on the case’s history are in our previous post, but in short, this ruling originated with a dispute between two competing manufacturers of cheerleading uniforms, Varsity Brands and Star Athletica.  Varsity sued Star for copyright infringement, alleging that Star was selling uniforms with graphic designs (such as stripes, chevrons, zigzags, and color blocks) that were very similar to those on uniforms sold by Varsity.  On summary judgment, Star prevailed, with a federal district court ruling that Varsity’s designs were not copyrightable; it reasoned that the designs served the useful purpose of identifying the garments as cheerleading uniforms, and thus the graphic elements were not physically or conceptually separable from the uniform’s utilitarian function.  See Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 (W.D. Tenn. Mar. 1, 2014).

On appeal, a majority of the Sixth Circuit panel reversed, siding with Varsity and holding that Varsity’s designs were separable; the majority reasoned, among other things, that the arrangement of “stripes, chevrons, color blocks, and zigzags” on the uniforms were “wholly unnecessary” to the uniform’s function as a useful article, and that indeed, a plain white uniform could adequately serve the same functions.  See 799 F.3d 468 (6th Cir. 2015).  The majority also held that the designs could exist independently in that they could be incorporated onto other garments or even hung on the wall as art.  (One member of the panel dissented, opining that there was no conceptual separability of Varsity’s design from its function, because the uniform’s function was not merely to cover the body or to allow the wearer to perform cheerleading moves, but to identify the wearer as a member of a particular team, and the design elements were not just decorative but central to this function.)

The Supreme Court granted certiorari, see 2016 WL 98761, at *1 (U.S. May 2, 2016), and oral arguments were heard this past fall.  Now, the Court has issued its opinion.  A five-member majority of the Court put forward a test for lower courts to use in examining separability, explaining:

A feature incorporated into the design 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 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.

The Court noted that the first prong is usually more easily satisfied; one “need only 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 second and more challenging prong asks whether “the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article,” i.e., could the feature “exist as its own pictorial, graphic, or sculptural work . . . once it is imagined apart from the useful article”?  Put another way, would the feature have been eligible for copyright protection as a pictorial, graphic, or sculptural work if it had originally been fixed in some tangible medium other than a useful article?

Applying that analysis to the designs on the uniforms at issue, the majority concluded that Varsity’s designs were separable.  First, the decorations were features with pictorial, graphic, or sculptural qualities.  And second, if the designs “were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as” two-dimensional artworks.  Indeed, the court noted that the designs have been applied to other media; Varsity has placed the same designs onto other types of clothing besides dresses.

The majority disagreed with Star’s argument that the designs were not separable because placing them on a canvas would create the picture or outline of a cheerleading uniform.  The Court noted that any two-dimensional artwork corresponds to the shape of the canvas on which it’s applied, giving the hypothetical example of a design etched or painted on the surface of a guitar:

If that entire design is imaginatively removed from the guitar’s surface and placed on an album cover, it would still resemble the shape of a guitar. But the image on the cover does not ‘replicate’ the guitar as a useful article. Rather, the design is a two-dimensional work of art that corresponds to the shape of the useful article to which it was applied.

The law protects that design whether it first appeared on the guitar or the album cover.  (Conversely, the Court explained, Varsity has no power to prevent a competitor from making uniforms with the exact same shape, cut, and dimensions as Varsity’s; it can only prevent the copying of the surface designs.)

The majority further rejected arguments that “focus[ed] on the relative utility of the plain white uniform that would remain if the designs were physically removed from the uniform.”  In the Court’s view, “the separability inquiry focuses on the extracted feature and not on any aspects of the useful article remaining after the imaginary extraction.  The statute does not require the imagined remainder to be a fully functioning useful article at all.”  (It’s also worth noting that, in holding that separability does not require the useful article to remain intact, the Court opined that the distinction some lower courts have made between “physical separability” and “conceptual separability” is not necessary; rather, “separability is a conceptual undertaking.”)

Justice Ginsburg filed a concurring opinion, stating that she would hold the designs are copyrightable simply because they are standalone copyrightable graphic works that happen to be reproduced on a useful article, akin to a fabric design or artwork printed on a tee-shirt; in her view, no separability analysis was required.  She particularly noted that Varsity’s copyright registrations in the designs were for “2-Dimensional artwork” and “fabric design (artwork),” not for a garment or useful article at all.

Justices Breyer and Kennedy dissented.  In their view, even applying the majority’s test, the designs could not “be perceived as” two- or three-dimensional works of art separate from the uniforms; the design features essentially form a picture of the underlying useful article and cannot exist independently of the utilitarian aspects of the article.  They argued that, to be separable, a design feature must be capable of existing as a separate artistic work that is not itself the useful article; “if extracting the claimed features would necessarily bring along the underlying useful article, the design is not separable from the useful article.”  Here, the dissenters say, “As the majority sees it, Varsity’s copyright claim would be the same had it submitted a plain rectangular space depicting chevrons and stripes, like swaths from a bolt of fabric. But considered on their own, the simple stripes are plainly unoriginal. Varsity, then, seeks to do indirectly what it cannot do directly: bring along the design and cut of the dresses by seeking to protect surface decorations whose ‘treatment and arrangement’ are coextensive with that design and cut.”

Reactions to the Court’s decision have been mixed.  Some have argued that it will change little for designers, other than to allow them to hold onto copyright protections they already have (indeed, several entities from the fashion design world submitted amicus briefs in support of Varsity), allowing them some means of combating rampant design piracy in the fashion world.  (See here, here, and here for some of our previous posts about artists seeking redress from brands whom they believe ripped off their work.)   Others have said that the ruling actually represents a broader view of copyright in fashion designs than in the past, with one writer opining that the majority did not adequately consider what the decision would do in terms of allowing designers to squelch competition.  Another report predicts that the decision may lead to more designers seeking copyright protection for designs associated with useful items such as clothing and housewares, which in turn could ultimately result in higher prices and less consumer choice.

We’ll continue to watch as lower courts begin to apply the Supreme Court’s new test, to see how it might impact the legal landscape—and economics—of those industries.