Lewis Roca Blog

On March 22, 2017, the United States Supreme Court issued its decision in the case of Star v. Varsity.  580 U.S.___(2017). The opinion concerned the copyrightability of two-dimensional designs, consisting of various lines and chevrons and colorful shapes, appearing on the surface of cheerleader uniforms.  Justice Thomas, delivering the majority opinion of the Court, opined that Congress has afforded limited protection for these artistic elements by providing that pictorial, graphic or sculptural features of the design of a useful article are eligible for copyright protection as artistic works if those features can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

In the opinion below, the Sixth Circuit stated that the graphic designs in this case are separately identifiable because the designs and a blank cheerleading uniform can appear side-by-side, one as a graphic design and one as a cheerleading uniform.  The Sixth Circuit determined that the designs were capable of existing independently because they could be incorporated onto the surface of different types of garments, or hung on the wall and framed as art.

Justice Thomas writes that the Copyright statute requires a separability analysis for “pictorial, graphic or sculptural features” incorporated into the design of a useful article.  After quoting from the Oxford English Dictionary, the definitions of various words of the statute, Justice Thomas concludes that the statute provides that the design of a useful article can include two-dimensional pictorial and graphic features and the separability analysis applies to those features just as it does to three-dimensional sculptural features.

Thus, the ultimate separability question is, then, whether the feature for which copyright protection is claimed would have been eligible for copyright protection had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.

The Court then relies heavily on the1954 U.S. Supreme Court decision in Mazer v. Stein, 347 U.S. 201, 202 (1954), where the item at issue was a copyright on a statuette depicting a dancer.  The statuette was intended for use as a lamp base with electrical wiring, sockets and lampshades attached.  The Court in Mazer approved the Copyright Office’s regulation extending copyright protection to works of art that might also serve a useful purpose in so far as their form, but not their mechanical or utilitarian aspects, are concerned.  Mazer thus interpreted the 1909 Act consistently with the rule:  If a design would have been copyrightable as a standalone pictorial, graphic or sculptural work, it is copyrightable if created first as part of a useful article.

Justice Thomas then states that this Court thus interprets 17 U.S.C. §§ 101 and 113 in a way that would afford Copyright protection to the statuette in Mazer regardless of whether it was first created as a standalone sculptural work or as the base of a lamp.  In sum, a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic or sculptural work either on its own or when fixed in some tangible medium.

Finally, the Court summarizes its conclusion as: “an artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article.”

This opinion thus clarifies the “separability” rules, and should assist clients in the fashion and other decorative products industries in protecting their designs.