Robert J. Bernstein and Robert W. Clarida
Robert J. Bernstein and Robert W. Clarida ()

Some eminent U.S. Supreme Court watchers have speculated that the court’s temporary 4-4 ideological stalemate in 2016 led it to avoid taking cases involving hot-button issues and instead to fill its calendar with relatively uncontroversial disputes, particularly in the area of intellectual property. See Adam Liptak, “The Right-Wing Supreme Court That Wasn’t,” New York Times, June 28, 2016. One case that arguably lends credence to this theory is Star Athletica v. Varsity Brands, Slip op., No. 15-866 (2017), as to which the court recently affirmed a ruling from the Sixth Circuit on March 22, 2017. Star Athletica raised no contentious political issues, to put it mildly: The case concerned the copyrightability of simple two-dimensional graphic designs that are printed on, or woven into, the fabric of cheerleading uniforms. The case did, however, give the court an opportunity to standardize an uncommonly chaotic body of case law surrounding the application of copyright law’s “conceptual separability doctrine” to useful articles, including garments. The court’s grant of certiorari framed the issue as follows: “What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act?”

Under settled copyright principles, the cheerleader uniforms in Star Athletica certainly qualify as useful articles, but the issue was how to determine when pictorial, graphic and sculptural works—like the stripes and chevrons on the Varsity uniforms—may retain their copyrightability despite having been incorporated into such useful articles. And that in turn hinges on defining what, exactly, is the “utilitarian function” of the useful article in question; it is impossible to know if a design is separable from a function without first being very clear about what the function is.

The Origin of Separability

In the 1976 Copyright Act, 17 U.S.C. 101 et seq., Congress codified the 1954 Supreme Court holding in Mazer v. Stein, 347 U.S. 1201 (1954), by creating two new, interrelated definitions in §101: (1) Congress defined “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”; (2) Congress broadened the previous category “works of art” to the more inclusive “pictorial, graphic and sculptural [PGS]” works, and specified that “ the design of a useful article, as defined in this section, shall be considered a [PGS] 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.”

Until Star Athletica, the Supreme Court had never been called upon to interpret this statutory language. The lower courts frequently had been, however, and virtually all of them decried the doctrinal morass of vague, inconsistent, and unwieldy “approaches” they were forced to apply. One point of general agreement among the courts is that copyright survives if the asserted work of authorship is either physically or “conceptually” separable from the utilitarian aspects of the useful article. But a clear, workable definition of “conceptual separability” proved elusive.

‘Star Athletica’: Rulings Below

Plaintiff Varsity Brands registered the designs at issue as two-dimensional artwork with the Copyright Office, the defendant copied them, and litigation ensued in the Western District of Tennessee. It has long been held that, even though an item of clothing is a “useful article,” because it keeps people warm, dry, and covered up, a design “imprinted on fabric, such as a rose petal” is copyrightable nonetheless. 2014 U.S. Dist. LEXIS 26279 (M.D. Tenn. 2014) at *9, citing NIMMER ON COPYRIGHT §2.08[H][1]-[3]. The rose petal design on a dress or a raincoat does not function, in a copyright-precluding sense, it merely decorates, like the Balinese dancer on the lamp in Mazer. And that decoration is separable from the utilitarian function of the dress or raincoat, which could, obviously, bear any of a million different designs and still function.

On defendant’s motion for summary judgment, the district court acknowledged this principle in theory, but held that the designs were uncopyrightable, because they allegedly “functioned” to “clothe the body in a way that evokes the concept of cheerleading.”Id. at *24.

The Sixth Circuit reversed 2-1, granting partial summary judgment for plaintiff and remanding for further proceedings. 799 F.3d 468 (6th Cir. 2015). Writing for the majority, Judge Karen Nelson Moore concluded that the key question, to be resolved before addressing separability, is simply “what are the utilitarian aspects of the useful article?” With this question, the Sixth Circuit put its finger on the principal error of the district court, namely its focus on the uniforms’ alleged “function” of conveying the information that the wearer is a cheerleader. On this point, the Sixth Circuit majority reversed the District Court and granted summary judgment to plaintiff Varsity, but also remanded to the district court for further proceedings as to the originality of the Varsity designs. Despite this inconclusive procedural posture, the eight-member Supreme Court granted certiorari.

Supreme Court Decision

On March 22, 2017, in a majority opinion by Justice Clarence Thomas, the Supreme Court affirmed the ruling of the Sixth Circuit. Relying on the statutory text, and noting its historical roots in the Mazer decision, the court held that “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.” Slip op., No. 15-866 at 2.

As a threshold matter, Varsity had argued that no separability analysis was necessary because its designs were not themselves designs of useful articles, as referenced in the statute, but merely designs on useful articles. The majority rejected this argument, reasoning that the Act specifically requires separability analysis for “pictorial” and “graphic” works, defined as two-dimensional works of art. Justice Ruth Bader Ginsburg wrote a separate concurrence in which she disagreed, siding with Varsity to argue that no separability analysis was needed because the works at issue were “not themselves useful articles meet for separability determination” but were instead “standalone PGS works that may gain copyright protection as such.”

The distinction proved moot for the majority, however, because it found the designs could be identified separately from, and could exist independently of, the utilitarian aspects of the uniforms. The separate identification requirement, wrote the court, is “not onerous. The decision maker 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.” As for the independent-existence requirement, “the feature must be able to exist as its own [PGS] work … once it is imagined apart from the useful article.” Id. at 7. The court continued, “the ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a [PGS] work had it originally been fixed in some tangible medium other than a useful article.” Id. at 8.

Responding to a dissent by Justice Steven Breyer, which was joined by Justice Anthony Kennedy, the majority noted that the mere fact that the designs at issue might “retain the outline of a cheerleading uniform” when imaginatively removed from the useful article is no bar to copyright protection. “Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied. A fresco painted on a wall, ceiling panel or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted.” Id. at 11.

Perhaps the court’s most significant departure from existing separability doctrine was its decision to abandon the traditional distinction between “physical” and “conceptual” separability, which originated in the legislative history of the 1976 Act. For the majority, “separability is a conceptual undertaking. Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary.” Id. at 15. The court also rejected two factors that various circuits had considered as part of the separability inquiry, namely (1) whether the creator’s design of the PGS work was influenced by functional considerations and (2) whether the PGS feature would be independently marketable, without its utilitarian function. The first factor is irrelevant, for the majority, because the proper inquiry looks at the way the article and feature are perceived, not the creator’s intent; the second factor has no support in the statutory text, and “threatens to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”

Conclusion

Although Star Athletica carves no new ground in the evolution of the separability doctrine, it has replaced as many as nine competing lower-court “approaches” to the issue with a single binding judicial standard, albeit one whose abstract nature is still susceptible to inconsistent application. Nevertheless, because the Supreme Court also affirmed the Sixth Circuit’s remand for further proceedings on whether the designs met the “originality” requirement for a copyright, Varsity Brands has one more hurdle to overcome.

Some eminent U.S. Supreme Court watchers have speculated that the court’s temporary 4-4 ideological stalemate in 2016 led it to avoid taking cases involving hot-button issues and instead to fill its calendar with relatively uncontroversial disputes, particularly in the area of intellectual property. See Adam Liptak, “The Right-Wing Supreme Court That Wasn’t,” New York Times , June 28, 2016. One case that arguably lends credence to this theory is Star Athletica v. Varsity Brands, Slip op., No. 15-866 (2017), as to which the court recently affirmed a ruling from the Sixth Circuit on March 22, 2017. Star Athletica raised no contentious political issues, to put it mildly: The case concerned the copyrightability of simple two-dimensional graphic designs that are printed on, or woven into, the fabric of cheerleading uniforms. The case did, however, give the court an opportunity to standardize an uncommonly chaotic body of case law surrounding the application of copyright law’s “conceptual separability doctrine” to useful articles, including garments. The court’s grant of certiorari framed the issue as follows: “What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act?”

Under settled copyright principles, the cheerleader uniforms in Star Athletica certainly qualify as useful articles, but the issue was how to determine when pictorial, graphic and sculptural works—like the stripes and chevrons on the Varsity uniforms—may retain their copyrightability despite having been incorporated into such useful articles. And that in turn hinges on defining what, exactly, is the “utilitarian function” of the useful article in question; it is impossible to know if a design is separable from a function without first being very clear about what the function is.

The Origin of Separability

In the 1976 Copyright Act, 17 U.S.C. 101 et seq. , Congress codified the 1954 Supreme Court holding in Mazer v. Stein , 347 U.S. 1201 ( 1954 ) , by creating two new, interrelated definitions in §101: (1) Congress defined “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”; (2) Congress broadened the previous category “works of art” to the more inclusive “pictorial, graphic and sculptural [PGS]” works, and specified that “ the design of a useful article, as defined in this section, shall be considered a [PGS] 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.”

Until Star Athletica, the Supreme Court had never been called upon to interpret this statutory language. The lower courts frequently had been, however, and virtually all of them decried the doctrinal morass of vague, inconsistent, and unwieldy “approaches” they were forced to apply. One point of general agreement among the courts is that copyright survives if the asserted work of authorship is either physically or “conceptually” separable from the utilitarian aspects of the useful article. But a clear, workable definition of “conceptual separability” proved elusive.

‘Star Athletica’: Rulings Below

Plaintiff Varsity Brands registered the designs at issue as two-dimensional artwork with the Copyright Office, the defendant copied them, and litigation ensued in the Western District of Tennessee. It has long been held that, even though an item of clothing is a “useful article,” because it keeps people warm, dry, and covered up, a design “imprinted on fabric, such as a rose petal” is copyrightable nonetheless. 2014 U.S. Dist. LEXIS 26279 (M.D. Tenn. 2014) at *9, citing NIMMER ON COPYRIGHT §2.08[H][1]-[3]. The rose petal design on a dress or a raincoat does not function, in a copyright-precluding sense, it merely decorates, like the Balinese dancer on the lamp in Mazer. And that decoration is separable from the utilitarian function of the dress or raincoat, which could, obviously, bear any of a million different designs and still function.

On defendant’s motion for summary judgment, the district court acknowledged this principle in theory, but held that the designs were uncopyrightable, because they allegedly “functioned” to “clothe the body in a way that evokes the concept of cheerleading.”Id. at *24.

The Sixth Circuit reversed 2-1, granting partial summary judgment for plaintiff and remanding for further proceedings. 799 F.3d 468 (6th Cir. 2015). Writing for the majority, Judge Karen Nelson Moore concluded that the key question, to be resolved before addressing separability, is simply “what are the utilitarian aspects of the useful article?” With this question, the Sixth Circuit put its finger on the principal error of the district court, namely its focus on the uniforms’ alleged “function” of conveying the information that the wearer is a cheerleader. On this point, the Sixth Circuit majority reversed the District Court and granted summary judgment to plaintiff Varsity, but also remanded to the district court for further proceedings as to the originality of the Varsity designs. Despite this inconclusive procedural posture, the eight-member Supreme Court granted certiorari.

Supreme Court Decision

On March 22, 2017, in a majority opinion by Justice Clarence Thomas , the Supreme Court affirmed the ruling of the Sixth Circuit. Relying on the statutory text, and noting its historical roots in the Mazer decision, the court held that “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.” Slip op., No. 15-866 at 2.

As a threshold matter, Varsity had argued that no separability analysis was necessary because its designs were not themselves designs of useful articles, as referenced in the statute, but merely designs on useful articles. The majority rejected this argument, reasoning that the Act specifically requires separability analysis for “pictorial” and “graphic” works, defined as two-dimensional works of art. Justice Ruth Bader Ginsburg wrote a separate concurrence in which she disagreed, siding with Varsity to argue that no separability analysis was needed because the works at issue were “not themselves useful articles meet for separability determination” but were instead “standalone PGS works that may gain copyright protection as such.”

The distinction proved moot for the majority, however, because it found the designs could be identified separately from, and could exist independently of, the utilitarian aspects of the uniforms. The separate identification requirement, wrote the court, is “not onerous. The decision maker 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.” As for the independent-existence requirement, “the feature must be able to exist as its own [PGS] work … once it is imagined apart from the useful article.” Id. at 7. The court continued, “the ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a [PGS] work had it originally been fixed in some tangible medium other than a useful article.” Id. at 8.

Responding to a dissent by Justice Steven Breyer, which was joined by Justice Anthony Kennedy, the majority noted that the mere fact that the designs at issue might “retain the outline of a cheerleading uniform” when imaginatively removed from the useful article is no bar to copyright protection. “Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied. A fresco painted on a wall, ceiling panel or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted.” Id. at 11.

Perhaps the court’s most significant departure from existing separability doctrine was its decision to abandon the traditional distinction between “physical” and “conceptual” separability, which originated in the legislative history of the 1976 Act. For the majority, “separability is a conceptual undertaking. Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary.” Id. at 15. The court also rejected two factors that various circuits had considered as part of the separability inquiry, namely (1) whether the creator’s design of the PGS work was influenced by functional considerations and (2) whether the PGS feature would be independently marketable, without its utilitarian function. The first factor is irrelevant, for the majority, because the proper inquiry looks at the way the article and feature are perceived, not the creator’s intent; the second factor has no support in the statutory text, and “threatens to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”

Conclusion

Although Star Athletica carves no new ground in the evolution of the separability doctrine, it has replaced as many as nine competing lower-court “approaches” to the issue with a single binding judicial standard, albeit one whose abstract nature is still susceptible to inconsistent application. Nevertheless, because the Supreme Court also affirmed the Sixth Circuit’s remand for further proceedings on whether the designs met the “originality” requirement for a copyright, Varsity Brands has one more hurdle to overcome.